The owner of the Crazy Horse Saloon in Paris tried to stop a business in London under the same name. The plaintiff advertised in the UK but carried on no other activities here.
Held: An injunction was refused. The plaintiff had reputation but not goodwill. It could not acquire goodwill without some business activities here beyond merely placing or distributing advertising material. Sheraton was distinguished on the basis of the office in this country and the direct bookings, for which there was no equivalent in his case. Pennycuick J said: ‘It may well be that the owner of a foreign hotel or restaurant acquires in this country a reputation for the name of his hotel or restaurant in the wide sense, that the travel agents or other persons to whom he sends advertisements know of his establishment. Again he may acquire a reputation in a wide sense in the sense of returning travellers speaking highly of that establishment, but it seems to me that those matters, although they may represent reputation in some wide sense, fall far short of user in this country and are not sufficient to establish reputation in the sense material for the purpose of a passing off action. It is very clear that in such circumstances the foreign trader has not acquired anything which in law could be described as goodwill in this country.’
Judges:
Pennycuick J
Citations:
[1967] RPC 581
Jurisdiction:
England and Wales
Cited by:
Cited – Hotel Cipriani Srl and Others v Cipriani (Grosvenor Street) Ltd and Others CA 24-Feb-2010
The claimants owned Community and UK trade marks in the name ‘Cipriani’. The defendants operated a restaurant in London using, under the licence of another defendant, the same name. The claimant sought an injunction to prevent further use of the . .
Not Followed – Maxim’s Ltd v Dye ChD 1977
The Parisian restaurant had an extensive fame and goodwill, was extensively patronised by persons resident in England and had received direct bookings from England to reserve a table there. It sought to stop a restaurant in Norwich from trading as . .
Cited – Starbucks (HK) Ltd and Another v British Sky Broadcasting Group Plc and Others SC 13-May-2015
The court was asked whether, as the appellants contended, a claimant who is seeking to maintain an action in passing off need only establish a reputation among a significant section of the public within the jurisdiction, or whether, as the courts . .
Cited – Globelegance BV v Sarkissian ChD 1974
The plaintiff claimed in passing off, seeking an intelocutory injunction. Mr Valentino Garavani, a fashion designer opened a salon in Rome in 1960, and built up a reputation in ladies’ high fashion under the name ‘Valentino’. His fashion shows in . .
Disapproved – C and A Modes v C and A (Waterford) Ltd 1978
(Supreme Court of Ireland) The plaintiff’s C and A department store in Belfast was entitled to mount a claim in passing off in the Irish Republic.
Henchy J was unhappy about the decision in Alain Bernardin, and said that there were in the Irish . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 12 April 2022; Ref: scu.401814