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 name. The defendants said that they came within the ‘own name’ exception.
Held: The appeal failed. Lloyd LJ said: ‘the article 12(a) defence may be available in respect of a trading name, as well as the corporate name of a company, but it will depend on (a) what the trading name is that has been adopted, (b) in what circumstances it has been adopted and (c), depending on the relevant circumstances, whether the use is in accordance with honest practices.’ However there was iinsufficient reason to disturb the judge’s finding that the adoption of the name was not in accord with honest practice.
The court considerd the ‘direct bookings’ test, and said: ‘especially in the circumstances of the present day, with many establishments worldwide featuring on their own or shared websites, through which their services and facilities can be booked directly (or their goods can be ordered directly) from anywhere in the world, the test of direct bookings may be increasingly outmoded.’
Jacob, Lloyd, Stanley Burnton LJJ
[2010] EWCA Civ 110
Bailii
Trade Marks Act 1994 56
England and Wales
Citing:
CitedCommissioners of Inland Revenue v Muller and Co Margarine HL 1901
The House considered the liability, or not, to stamp duty of an agreement made in the UK. Under the Stamp Act 1891 an agreement made in the UK for the sale of any estate or interest in any property except lands or property locally situate out of the . .
CitedChocoladefabriken Lindt and Sprungli AG v Franz Hauswirth GmbH (Intellectual Property) ECJ 12-Mar-2009
Europa The registered mark consisted of the shape of a commonplace product, an Easter bunny, of a kind which many producers had made and sold in Germany and Austria for years. Though Lindt had proceeded under . .
Appeal fromHotel Cipriani Srl and others v Cipriani (Grosvenor Street) Ltd and others ChD 9-Dec-2008
. .
CitedAnheuser-Busch Inc v Budejovicky Budvar CA 1984
The plaintiff sold the well-known ‘Budweiser’ beer in the US, but it was not generally available in the UK, being sold in American military bases and in a few duty-free shops. However, the beer was widely known throughout the UK because of the . .
CitedReed Executive Plc, Reed Solutions Plc v Reed Business Information Ltd, Reed Elsevier (Uk) Ltd, Totaljobs Com Ltd CA 3-Mar-2004
The claimant alleged trade mark infringement by the respondents by the use of a mark in a pop-up advert.
Held: The own-name defence to trade mark infringement is limited. Some confusion may be allowed if overall the competition was not unfair . .
CitedAsprey and Garrard Ltd v WRA (Guns) Ltd and Another CA 11-Oct-2001
The Asprey family had been in business for many years. Their business was incorporated, and later sold to the claimants. A member of the Asprey family sought to carry on new businesses through limited companies using the family name. Upon request, . .
CitedPremier Luggage and Bags Ltd v The Premier Company (UK) Ltd and Another CA 26-Mar-2002
The owner of a registered trade mark ‘Premier’ sued for swing tags which carried the defendant’s full name ‘The Premier Company (UK) Ltd.’.
Held: A trade mark use can fall within the scope of the Art 6.1 defence. There there was no passing off . .
CitedCeline SARL v Celine SA (Approximation Of Laws) ECJ 18-Jan-2007
Celine SA, set up before 1945, traded in Paris creating and marketing clothes and accessories, and had a French registered trade mark Celine for clothes and shoes. Celine Sarl was set up in 1992 as successor to a business selling clothing and . .
CitedGerolsteiner Brunnen v Putsch ECJ 7-Jan-2004
There was a conflict between the registered mark Gerri (for inter alia mineral water) and an alleged infringement ‘Kerry Spring’ for Irish mineral water from the Kerry Spring sold by a company called Kerry Spring Water. The referring court held . .
CitedThe Athletes’ Foot Marketing Associates Inc v Cobra Sports Ltd ChD 1980
The plaintiff, which carried on a retail shoe franchising business mainly in the United States, had prospective franchisee in England but had not commenced trading there. There was an awareness in England of the plaintiff’s trade name and activities . .
CitedStar Industrial Company Limited v Yap Kwee Kor trading as New Star Industrial Company PC 26-Jan-1976
(Singapore) The plaintiff Hong Kong company had manufactured toothbrushes and exported them to Singapore, for re-export to Malaysia and Indonesia, but with some local sales as well. Their characteristic get-up included the words ‘ACE BRAND’ and a . .
CitedSheraton Corporation of America v Sheraton Motels Ltd ChD 1964
The plaintiff owned, ran and promoted a chain of hotels in the USA and elsewhere, but not including any hotel in the UK. Bookings for rooms in their hotels were frequently made from the UK, through an office which the plaintiff maintained in London . .
CitedAlain Bernardin and Cie v Pavilion Properties Ltd ChD 1967
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 . .
CitedMaxim’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 . .
CitedPete Waterman Ltd v CBS UK Ltd ChD 1993
The plaintiff practised in the pop music industry and claimed to be entitled to the exclusive use in this country of the name or description ‘The Hit Factory’. The defendant proposed a similarly named recording studio in London in a joint venture . .

These lists may be incomplete.
Updated: 22 February 2021; Ref: scu.401792