The High Court revisited the principles underlying the ‘own name’ defence to trademark infringement in the recent decision of Hotel Cipriani Srl vs. Fred 250 Ltd [2013]. Following this case anyone thinking of using their own name as a defence to trademark infringement should be aware that the courts will construe it very narrowly if there is a historical or family connection between the parties.
Background to the Hotel Cipriani Trademark Infringement
Hotel Cipriani was started by Giuseppe Cipriani’s grandfather in Venice in the 1950s and later sold to the Orient Express Group which registered it as a trademark. In 2008 an injunction was granted by the high Court against Giuseppe Cipriani and his company Cipriani (Grosvenor Street) Ltd to prevent the use of the Cipriani name in relation to restaurants they had opened in London; the injunction was upheld on appeal in 2010. At the heart of the judgement was the fact that the restaurants were operated by the company and not Giuseppe Cipriani and the history between the parties.
Breach of the Injunction ‘by Giuseppe Cipriani’
In the latest turn of this legal saga, Giuseppe Cipriani, the company now renamed Fred 250 Ltd (“Fred”), and another group company, were held to be in infringement of the trademark for displaying the words ‘Managed by Giuseppe Cipriani’ and ‘by G Cipriani’ in logos on the windows and menus of the London restaurants.
In his defence, Giuseppe Cipriani, submitted that he was a popular restaurant proprietor and manager in London and that the name of his restaurant was clearly identified as distinct from the name of Hotel Cipriani. Furthermore, he also contended that even if the use amounted to an infringement, he was entitled to protection under Article 12 of the Community Trade Mark Regulation because he has simply used his own name in order to pursue a bona fide commercial business.
High Court Affirms Injunction
Rejecting the contentions of Giuseppe Cipriani, the Court categorically ruled that the use of ‘Cipriani’ and the display of words ‘Managed by Cipriani’ amounted to passing off. Generally in respect of the proceedings, it also commented that the ‘own name’ defence was not available because the use of the trademark would be contrary to honest practices in everyday business.
Conclusion
The importance of the case lies in the Court’s reasoning behind claiming ‘own name defence’ in cases of trademark infringement. The law as it stands today might be stringent but it sends a strong message to those who disregard trademarks in public domain. The ‘own name defence’ is unlikely to be reliable where a business is operated by a company rather than the person or there has been a historical or family connection between the parties.
Rollingsons has experienced lawyers who can advise you on choosing company names and help you manage potential issues with Trademarks. For more information please contact James Crichton via e-mail jcrichton@rollingsons.co.uk or by telephone on 0207 611 4848.
