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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 defendants 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 defendants 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 Courts full decision may be viewed here; however, of particular interest is Mr Justice Arnolds 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 companys 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 persons 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 Courts reasoning as summarised above must be correct; to interpret the defence as applying to a companys 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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The content on this page is provided for the purposes of general interest and information. It contains only brief summaries of aspects of the subject matter and does not provide comprehensive statements of the law. It does not constitute legal advice and does not provide a substitute for it.

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