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Cipriani vs. Cipriani: A Case of "Double Identity" Infringement?

 
 

A UK High Court judge has ruled in favor of the owners of Venice-based Hotel Cipriani in its trademark infringement lawsuit against famed London restaurant 'Cipriani" – and has ordered the latter to change its name or face damages and legal costs.


The world may be too small for more than one Cipriani.

According to an article by Corinne Day for lawdit reading room, the trendy Mayfair restaurant that has hosted the likes of Naomi Campbell, the Beckhams and other celebrities may have to give up its legendary name. The reason: Hotel Cipriani, the world famous Venice hotel (and part of Orient-Express Hotels Ltd.), has recently won its trademark infringement lawsuit against the operators of Cipriani London - the father and son team, Arrigo and Giuseppe Cipriani. They have now been ordered by His Honor Mr. Justice Arnold to stop trading unless they change the restaurant's name. But how did this come to be?

Once upon a time in 1958, Lord Iveagh of the Guinness family and the senior Giuseppe Cipriani (a restaurateur and owner of the famous Harry's Bar in Venice) built the Hotel Cipriani. Then in 1967, Cipriani senior sold his entire interest in the company (Hotel Cipriani SRL) which owned the hotel, agreeing that the company would have the exclusive right to use the name "Cipriani". The hotel later became part of Orient-Express Hotels and an award-winning destination hosting celebrities, royalty, and political leaders long before it filed the trademark suit.

In a succinct analysis of the case, a posting by Jeremy in ipkat stated the Cipriani claimants sued Cipriani (Grosvenor Street) Ltd, Cipriani International SA of Luxembourg (all controlled by the Cipriani family including Arrigo and Giuseppe Cipriani) for Community trade mark infringement and passing off. They argued that: CGSs use of the sign CIPRIANI in its restaurant was a classic case of "double identity" infringement of same mark, same services. Also, the use of the sign CIPRIANI LONDON infringed under the principle of "same service, similar mark, likelihood of confusion".

While the defendants admitted that their use constituted infringement, they argued that they were entitled to rely on the "own name" defense and that the marks were in any event invalid as having been registered in bad faith.

Three questions arose out of the own-name defense: Did the use of the signs CIPRIANI and CIPRIANI LONDON constitute use by CGS of its own name? If not, could CGS rely on the names of the second and third defendants? If the answer to the first or second question was "yes", was such use "in accordance with honest practices in industrial or commercial matters"?

According to a Cipriani Hotel press statement, the Court found that the defendants were all liable for breach of Hotel Cipriani's Community Trade Mark under Community and English Law and were also liable for passing off. The judge further found that the Defendants' use of the name "Cipriani" 'was not in accordance with honest practices in industrial and commercial matters' and that the Hotel's UK and Community Trade Marks were valid. Hotel Cipriani is now entitled to an injunction preventing the father and son carrying on a restaurant business in the UK using the name Cipriani or anything similar to that name.

Commenting on the judgment, Paul White, President and Chief Executive Officer of Orient-Express Hotels, said, "This company has worked long and hard over many years to build a worldwide reputation for Hotel Cipriani, substantiated by the many awards and accolades the hotel and its restaurants win each year. We are entitled to protect this famous name in Europe and it was important to us to do so. 'Cipriani' is one of the many valuable brands owned by the Company and it is our intention to maintain such value by taking the appropriate action in any part of the world when others seek to encroach upon them."

What was the senior Giuseppe Cipriani thinking when he agreed to let Hotel Cipriani SRL have the exclusive right to use the name "Cipriani"? Surely, not this important trademark infringement ruling.

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