In the Media

Trademarks and the ?own name? defence

PUBLISHED February 21, 2013

Monday 25 February 2013 by Jim McDonnell

In 2008, the High Court granted an injunction prohibiting the use of the name 'Cipriani' for a restaurant in London ([2008] EWHC 3032 (Ch)). This was subsequently upheld by the Court of Appeal ([2010] EWCA Civ 110). The parties have recently returned to court to address claims for breach of that injunction ([2013] EWHC 70 (Ch)). This judgment provides another useful insight into the 'own name' defence and the enforcement of injunctions.

Original judgment

The Hotel Cipriani was opened by Signor Giuseppe Cipriani and the Guinness family in Italy in the 1950s. The hotel is an exclusive and world-renowned destination, frequented by royalty and celebrities. The hotel later became part of the Orient Express Hotels Group and, while Signor Cipriani remained involved for some time, there is no longer any formal connection between the Hotel Cipriani and the Cipriani family. The sale to Orient Express included the exclusive use of the 'Cipriani' name, save in respect of the other venues already owned by the Cipriani family. The company later registered a community trademark for the name 'Hotel Cipriani'.

Before opening the hotel, Signor Cipriani had opened 'Harry's Bar', a bar and restaurant in Venice. This has also become well-known around the world as an exclusive venue. The restaurant remains within the Cipriani family and they have subsequently opened other restaurants around the world. In 2004, the Cipriani family business opened a restaurant in London under the name 'Cipriani London'. The restaurant was operated through an English company, Cipriani (Grosvenor Street) Ltd, of which the sole director was Signor Cipriani's grandson, Giuseppe junior.

Hotel Cipriani claimed against the company and personally against Cipriani junior for infringement of its community trademark. In spite of an attempt to defend the claim on the basis that the company and Giuseppe junior were using their own name, Hotel Cipriani successfully obtained an injunction restraining use of 'Cipriani' in relation to restaurants. The company's name is not 'Cipriani' or 'Cipriani London'; it is 'Cipriani (Grosvenor Street)', and so it fell at the first hurdle. Although 'Cipriani' is Giuseppe junior's name, it is the company and not he who is operating the restaurant, and so the defence was not available to him at all. The Court of Appeal agreed.

Breach of the injunction

After the injunction came into force, the company changed its name to Fred 250 Ltd, and the restaurant was renamed 'C London'. Another group company, Downtown Mayfair Ltd, later opened a second London restaurant called 'Downtown Mayfair'. However, this was not the end of the story. The branding for Downtown Mayfair included the words 'by G. Cipriani', and it was intended that the branding for C London would include the words 'Managed by Giuseppe Cipriani'.

A dispute arose as to whether this branding would breach the earlier injunction. Pending resolution of that dispute, Downtown Mayfair removed reference to those words, and the proposed change to C London's branding was put on hold. Hotel Cipriani applied to the court for a declaration that the use of 'downtown Mayfair by G. Cipriani' breached the injunction, and Giuseppe junior applied for a declaration that the proposed use of 'C London managed by Giuseppe Cipriani' would not breach the injunction.

The applications came before Arnold J again. He held that, in both instances, the references to 'G. Cipriani' and 'Giuseppe Cipriani' formed part of the branding for the restaurants and therefore fell within the type of use which might be prohibited by the injunction. Giuseppe junior argued that he was entitled to use his own name and/or that it merely indicated the quality or other characteristics of the restaurants.

As to the 'own name' defence, Arnold J reiterated his original finding, based on Asprey & Garrard Ltd v WRA (Guns) Ltd [2001] EWCA Civ 1499. The defence was not available to Giuseppe junior because it was not he who was trading; it was Fred 250 or Downtown Mayfair. Neither 'G. Cipriani' nor 'Giuseppe Cipriani' was the legal or trading name of Fred 250 or Downtown Mayfair. The judge also rejected the argument that the use did no more than indicate the quality or characteristics of the services because the average consumer would recognise the references to 'G./Giuseppe Cipriani' as indicating the owner or manager of the restaurants, and therefore the origin of the services. Arnold J suggested that there may be cases where an owner/manager was known for a particular system of management, in which case the answer might be different, but not here.

Finally, Arnold J also decided that, even if Giuseppe junior had managed to overcome those hurdles, the use of the name failed the final proviso. For similar reasons to those in the original judgment, the use of the name was not in accordance with honest practices in industrial or commercial matters.

A harder line?

This judgment is of course dependent on its particular facts. There is a history between the parties stretching back long before either of them came to court. However, it serves as a useful reminder that the courts will construe the 'own name' defence narrowly, especially where there is a historical or family connection between the parties, just as they did in Asprey & Garrard, and as far back as Rodgers (Joseph) & Sons Ltd v W N Rodgers & Co [1924] 41 RPC 277.

One can imagine a situation where a related party sets up a new business and, in doing so, wishes to promote the fact that they, personally, are involved. In that situation, it would be difficult to do so without referring to their own name. However, there is an important boundary between doing that, on the one hand, and going so far as using the name as part of the branding, on the other. In this case, it seems that the defendants crossed that boundary. Also, perhaps, the court was not inclined to weaken the message it had given by granting the injunction in the first place.

Nevertheless, it seems that, at least in the months leading up to the hearing, the parties had taken a sensible approach to the matter, and this was recognised by the court. Although the Downtown Mayfair restaurant's branding had included 'by G. Cipriani', this was removed at the end of 2011, presumably on legal advice. The C London restaurant had not yet made any use of 'Managed by Giuseppe Cipriani', presumably pending the outcome of the hearing.

The parties were also commended for their sensible approach to the evidence by foregoing any cross-examination of witnesses. With the issue of court costs currently at the forefront of any litigator's mind, this is no doubt a good example to follow if the circumstances allow.

Jim McDonnell is an associate at DLA Piper