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Recent Cipriani judgment - food for thought?
10 March 2009
Recent Cipriani judgment provides food for thought in respect of
the 'own name defence' and the concept of bad faith under the
Community Trade Mark Regulation.
On 9 December 2008, Mr Justice Arnold (the newest appointee as a
specialist Patents Court Judge for England and Wales) gave judgment
in Hotel Cipriani SRL and others v Cipriani (Grosvenor Street)
Ltd (2) Giuseppe Cipriani (3) Cipriani International SA [2008] EWHC
3032 (Ch). Although, in many respects, a straightforward trade
mark infringement and passing off dispute, Arnold J.’s decision
provides useful guidance on the scope of the ‘own name’ defence to
trade mark infringement, as well as a timely reminder as to what
constitutes bad faith in the context of absolute bars to trade mark
registration.
The claim
The factual background to the Cipriani dispute is fairly
complicated. In summary, the claimants, who were all members of the
Orient Express Hotels Group of companies, alleged that the first
defendant’s use of the name CIPRIANI to designate its London
restaurant both infringed their registered trade mark rights for
the word CIPRIANI (registered in respect of inter alia hotels and
restaurants) and amounted to passing off under UK law. Moreover,
they alleged that the second defendant (the sole director of the
first defendant) and the third defendant (the majority shareholder
of the first defendant) were both similarly liable as joint
tortfeasors.
Whilst admitting that there was a prima facie case of
infringement, the defendants argued that they had a defence to the
claimants’ allegations on grounds that: the first defendant’s use
of the name CIPRIANI was use of its (and its co-defendants’) own
name, such use being in accordance with honest practices in
industrial or commercial matters; and the claimants’ Community
Trade Mark for the name CIPRIANI had been invalidly registered, it
having been bad faith for the first claimant to seek to take for
itself a name which it knew it shared with others (interestingly,
they did not object to the validity of the said mark on relative
grounds). The defendants further asserted that use of the name
CIPRIANI in the manner complained of did not give rise to a
likelihood of confusion on the part of the relevant public.
The decision
In giving judgment in the above proceedings, Arnold J. came down
firmly in favour of the claimants, finding that the defendants’
conduct had, indeed, infringed their registered trade mark rights
as well as amounting to passing off. The Court’s
full decision may be viewed here; however, of particular
interest is Mr Justice Arnold’s analysis of the ‘own name defence’
and concept of bad faith as set out at paragraphs 128-164 and
164-202 of his judgment respectively.
The ‘own name defence’
Whilst recognising that the defence afforded by Article 12(a) of
the Community Trade Mark Regulation was available to legal persons
(e.g. limited companies) as well as natural persons, the defendants
were not able to rely on the defence in this instance because:
In respect of the first defendant, the defence did not apply to
a company’s trading name (as opposed to its registered name)
In respect of the second and third defendants, the defence was
not applicable, in any event, because neither were trading under or
making use of the name complained of (Article 12(a) protects a
third party using “his own name”, not another person’s name)
Moreover, even if the defendants had been able to show that
their use of the word CIPRIANI was use of their own name, such use
would not have been in accordance with honest practices, thereby
essentially precluding them from being able them to rely on the
defence in any event.
Invalidity and bad faith
In reaching his decision on the issue of bad faith, Arnold J.
restated the, now generally accepted, principle that bad faith
includes not only dishonesty but also “some dealings which fall
short of the standards of acceptable commercial behaviour observed
by reasonable and experienced men in the particular area being
examined”. In applying to register the name CIPRIANI as a
trade mark, the claimants had not acted in bad faith,
notwithstanding their knowledge that other parties were using trade
marks in relation to hotel and restaurant services in Europe which
included the word CIPRIANI. In essence, the Community Trade Mark
system operates on a first-to-file principle and bad faith in this
context has no application to situations involving a genuine
conflict between the trade mark rights (or perceived rights) of
different traders.
Commentary
As well as containing a thorough analysis of the jurisprudence
in respect of a number of elements of trade mark law, the Cipriani
decision provides useful guidance as to the scope of the ‘own name’
defence. It is submitted that the Court’s reasoning as summarised
above must be correct; to interpret the defence as applying to a
company’s trading name, as opposed to its registered name, would
have constituted a substantial inroad into the rights conferred on
trade mark proprietors. The case is also a useful reminder that an
allegation of bad faith is a serious one which requires cogent
evidence to be proved. A person is presumed to have acted in good
faith unless the contrary is shown.
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