This export business was brought to an end when the Singapore government imposed import duty on toothbrushes. Attention is to be focussed on the position at the time of the application for registration, and the intention and state of mind of the applicant at that time, although they are subjective factors, are to be determined by reference to the objective circumstances of the particular case. They also criticised the judge’s reference to the likelihood that the proprietor would object as being relevant, on the basis that the objection may be unjustified or too broad. 9. It is the benefit and advantage of the good name, reputation, and connection of a business. 42 The Hotel Villa Cipriani has had an international reputation for many years, including in the UK, though its reputation is smaller than that of Hotel Cipriani and of Harry’s Bar. As noted above, Lord Lindley said that there may be several businesses in different countries, each with its own goodwill. 40 The position was much the same in respect of Locanda Cipriani, though its reputation was less extensive and its clientele smaller than Harry’s Bar and the Hotel Cipriani: paras.34 and 35. Once the Hong Kong Company had abandoned that part of its former business that consisted in manufacturing toothbrushes for export to and sale in Singapore it ceased to have any proprietary right in Singapore which was entitled to protection in any action for passing-off brought in the courts of that country.”. As regards prior use of the Cipriani mark in Europe (use in New York being irrelevant to a CTM), there had only been the limited use in connection with Harry’s Bar and its associated businesses, including putting the word on the windows, and the exclusive restaurant, in effect private and to all intents and purposes unknown in the UK, in Sardinia. Others may necessarily be supplied at the premises of the customer. In 1975 the Guinness family sold it to the CIGA hotel group, and later it was sold to the Starwood hotel group who now run it as part of the Sheraton chain. [61] above) amount to a decision that a company can only rely on the defence in respect of its correct corporate name. My reasons are that when the registration was applied for there was no other significant use of the word Cipriani (other than by Hotel Villa Cipriani and Locanda Cipriani, which are special cases and irrelevant) as a trade mark in relation to hotels or restaurants in Europe, and the Cipriani group did not have any right to use that word in that way which would have been entitled to any degree of local legal protection. Further, as the judge also pointed out, because a company can choose to adopt any trading name, there could be an own name defence in almost every case if Mr Bloch were right. Neither made a misrepresentation by marketing its product under the name Budweiser. The first claimant seeks to restrain the use of both Cipriani and Cipriani London, so the question is whether the first defendant can only rely on the defence in relation to its corporate name, Cipriani Grosvenor Street, or whether it can rely on it as regards a trading name, and if the latter, whether this applies both to Cipriani London and to Cipriani by itself. For many years, this hotel had enjoyed an international reputation, including in the United Kingdom. The Cipriani at the Copacabana Palace epitomizes the evolution of the legendary hotel, opened in 1923, since its purchase by the Orient-Express in 1989. One of the founders of HC was AC’s father, also called Giuseppe Cipriani (“GC Senior”). For the same reason a trade name, other than its own name, newly adopted by a company, cannot avail it. The only evidence adduced in this respect was evidence of the exposure of the New York restaurants in the media – in the Financial Times columns as to where to go in New York, and otherwise in celebrity publications, mostly dating from after the date which is relevant for these proceedings. 91 Arnold J. held that the use of the name Cipriani by the Restaurant was likely to mislead in that way (para.225). The Cipriani family had agreed in 1967 not to use the name Cipriani for hotels or restaurants, and in 1996 they were still abiding by that agreement in Europe. No question arose in that case of the use of a name other than that of the trader in question (omitting the suffix SA). Fifthly, it is sufficient for goodwill to exist in the United Kingdom that the claimant has customers or ultimate consumers for his goods here, and for this purpose it is immaterial whether the claimant (a) has some branch here or (b) trades directly with customers here without having any physical presence in the jurisdiction (for example, by mail order) or (c) trades through intermediaries such as importers and distributors (provided that the circumstances are not such that the goodwill is owned by the intermediary) …, 217. GC senior had a 40% shareholding and managed the hotel until 1959 when he became chairman of AC. That too, therefore, was inadequate to show that the name Cipriani brought in any worthwhile English custom to the Cipriani restaurants in New York. As regards Locanda Cipriani, the right to use the name was recognised in terms in the 1967 agreement. The other members of the court agreed with Chadwick L.J. By 2007 HC’s turnover and profits were €20,140,000 and €7,921,000 respectively. The plaintiffs tried to stop them using the name Budweiser in their marketing by a passing-off action. Since, on the basis of the judge’s factual findings and inferences which I accept, and on the legal basis on which he proceeded, there was no concurrent goodwill, I need not go further into the submissions made by Mr Thorley on the footing that there was concurrent goodwill. ([86]), H41 (14) The judge had been correct to find that the claimants’ CIPRIANI mark was a well-known mark entitled to the protection of s.56 of the Trade Marks Act 1994. The overall circumstances of the case seem to me inconsistent with a finding of honest use. He described the issue as being whether the English courts will protect the trade connection with the UK customers of non-UK traders (page 50), and he said that the problem was particularly acute with service industries. He also agreed to a five-year restrictive covenant against starting new businesses with the name “Cipriani”. [47] above, was very limited and indirect, and I am not surprised that the judge found it of little assistance or persuasive weight. The second claimant (second respondent), Hotelapa Investimento Hoteleiro SA, owned and operated the Ristorante Hotel Cipriani at the Lapa Palace Hotel in Lisbon. 27, Ch.D. Partez pour un royaume de glamour vintage sans limites. 100 It seems to me that the decision in Star Industrial is entirely understandable on the facts because there was no indication of any relevant continuing business which could be entitled to protection. said about “own name” at paras.42 to 43 was in the context of passing-off rather than of trade marks, and he did not in terms refer back at para.49 to what he had said about the “own name” defence earlier in his judgment. On that basis he held that the first claimant had proved that it had not merely a substantial reputation but also a valuable goodwill in this jurisdiction in respect of the name Cipriani. 364, Ch.D. This in turn depended on whether the first claimant could have restrained the defendants from using the word in England by virtue of its own prior rights. 98 In the Privy Council Lord Diplock said this, which has been much quoted since then: “A passing-off action is a remedy for the invasion of a right of property not in the mark, name or get-up improperly used, but in the business or goodwill likely to be injured by the misrepresentation made by passing-off one person’s goods as the goods of another. An observer with more information would be aware that there was or had also been a connection between Harry’s Bar and the other entities through the Cipriani family. Céline SA brought proceedings against Céline Sarl, including for trade mark infringement. For my part I agree with him that the application was not made in bad faith and that the registration is therefore valid. Offrant une vue imprenable sur la lagune de Venise et le palais des Doges, le Belmond Hotel Cipriani propose des hébergements sur l'île de la Giudecca. It brings me to the question as to what is needed to prove that a business based abroad which has a reputation in England also has goodwill here. It is probable that direct bookings were being made from the UK by April 1996 and more so by April 2004 (paras.49-50). You also agree to refrain, and to see to it that every member of your family refrains, for a period of five years from today, from starting new businesses with the name ‘Cipriani’, or new businesses that are apt to divert customers from the Company or Hotel Villa Cipriani, except with our consent. It would be salutary for the test to be reviewed in an appropriate case. I-691, [2004] R.P.C. 54 Mr Thorley’s essential case on bad faith was that the first claimant knew in April 1996, at the time of the application to register the Cipriani CTM, that the Cipriani mark had a shared reputation extending to the Cipriani family and group, the latter being itself entitled to some degree of legal protection, and that the effect of the registration would be to impede the ability of the concurrent user to exploit his share of the reputation. The court considered an “own name” defence to passing-off and rejected it, and later rejected the same defence to trade mark infringement for the same reasons. Sheraton Corp of America v Sheraton Motels Ltd [1964] R.P.C. ([52],[53]). James Mellor, Q.C. By contrast, as regards Harry’s Bar and as regards the Cipriani restaurants in New York, there was no actual evidence of direct bookings by telephone or otherwise from abroad at either relevant date, and as it seems to me no particular reason to infer that there would have been such bookings. H34 (7) In the present case, the defendants had to justify the use of the word Cipriani by itself, as well as that of Cipriani London. It specialises in simple, traditional Italian food. I will call it the Restaurant. At page 469 he said, “Now Mr. Kentridge has, throughout his clear and helpful address to the court, repeatedly referred to goodwill in the words of Lord Macnaghten in the Muller’s Margarine case as “the attractive force which brings in custom.” But one asks oneself “what custom in this country in 1973 was brought in by the knowledge of members of the indigenous British public of the plaintiffs’ Budweiser beer?” And the answer must be that there was none, because however attractive they may have found the idea of drinking the plaintiffs’ beer, they could not get it. Thus, even assuming that the first defendant is to be taken to have adopted Cipriani London as a trading name which might qualify as its “own name” for this purpose, that does not entitle it to treat the abbreviation Cipriani, by itself, as its “own name”, any more than Premier Co (UK) Ltd had adopted Premier, by itself, as a trading name. ([79]). The New York restaurants had some reputation in the UK but no substantial goodwill had been proved in respect of them. 106 It seems to me that, given the agreement between Oliver and Dillon L.J.J., the case is authority for the proposition that an undertaking which seeks to establish goodwill in relation to a mark for goods cannot do so, however great may be the reputation of his mark in the UK, unless it has customers among the general public in the UK for those products. Cipriani Punta del Este, Uruguay The new complex, designed by Uruguayan architect Rafael Viñoly, will include the faithful reconstruction of the emblematic San Rafael hotel, preserving the original design and complementing it with beautiful residences, restaurants, spa, pools, casino, theatre, commercial retail and a serviced beach club. I have yet to deal with his point as to the correct legal test. Arrival-Departure. C-100/02 Gerolsteiner Brunnen GmbH & Co v Putsch GmbH [2004] E.C.R. He also set up a food production business under the name Cipriani in the mid 1980’s, making a variety of products, above all pasta and pasta sauces. ([86]), H42 (15) The proposition that an undertaking which sought to establish goodwill in relation to a mark for goods could not do so, however great might be the reputation of the mark in the United Kingdom, unless it had customers among the general public in the United Kingdom for those products was binding on the Court of Appeal. Passing off is a common law tort or civil wrong. The Restaurant was listed in at least some guidebooks as “Cipriani”, for example in the 2005, 2006, 2007 and 2008 editions of the Good Food Guide. You agree that the Company may retain its current name and that the Hotel Villa Cipriani di Asolo may retain its current logo and, in general, that the Company and the Hotel Villa Cipriani will have the right to use the name ‘Cipriani’ on an exclusive basis, even after any participation by you or your family in the capital of the Company has come to an end, and even in the event that you or your son cease to be on the Company’s board of management. He planned to open a hotel there and, some time later, he mentioned this plan to Lord Iveagh, who was dining at Harry’s Bar. The Cipriani Group was ultimately owned and controlled by AC, GC and GC’s two sisters. Since 1988 it has been operated by Cipriani Industria Srl. In a number of places the word CIPRIANI appeared without the word LONDON, for example on the doormat, menu cover and wine list cover. Appeal from – Hotel Cipriani Srl and others v Cipriani (Grosvenor Street) Ltd and others ChD (Bailii, [2008] EWHC 3032 (Ch)) . 90 For the purposes of passing-off, the question is whether, immediately before the Restaurant opened in April 2004, the first claimant had goodwill in this country in the name Cipriani, and if so whether, as at that time, the use of the word Cipriani for a restaurant in London such as the actual Restaurant was likely to mislead a substantial number of members of the public into believing that the Restaurant was run by, or was connected in the course of trade with, the Hotel Cipriani. After the war it was developed into a hotel with six rooms and a restaurant with a garden. In practice it would only be important if the first claimant were to lose its registrations, though in theory it could be relevant if there were a defence to the injunction claim under the Cipriani CTM, such as the own name defence. The judge made findings as at that date and also as at April 1996, when the Cipriani CTM was registered. For the most part I will do so in historical sequence. He referred to the decision of Walton J. in The Athletes’ Foot Marketing Associates Inc v Cobra Sports Ltd [1980] R.P.C. However he also went on to consider what he called the Crazy Horse issue, on the premise that (a) the plaintiff had established a distinctive goodwill in the name The Hit Factory, but (b) that the Hit Factory Inc also had a trade reputation under that name in this country. 85 For these reasons, although I differ from the judge in regarding a trading name as potentially protectable under Art.12(a), I conclude that the judge was right to hold that the defence under Art.12(a) was not made out by the defendants, and that the Cipriani CTM was therefore infringed. ([55]), H31 (4) The judge’s treatment of the issue of bad faith had been comprehensive and thorough, providing for a number of possible outcomes on the facts. The 5-star Belmond Hotel Cipriani offers elegant interior design and plenty of outdoor areas where you are invited to relax and enjoy the view. By April 2004 the hotel and its restaurants were receiving reservations directly from the UK and it is probable that this was already the case by April 1996. I-691, [2004] R.P.C. The defendants’ product had not been sold in the UK before 1973. Nor was it available to the second defendant because he was not trading at all. Set on Giudecca Island, Belmond Hotel Cipriani offers stunning views of Venice Lagoon and the Doge's Palace. 343, Ch.D. 256. Before I discuss that decision, by Sir Nicolas Browne-Wilkinson VC, I will mention three older cases. It makes perfect sense that Belmond Hotel Cipriani was dreamed up in the era of such classic, romantic Italian films as Roman Holiday, Three Coins in the Fountain and Summertime. H37 (10) The judge had been entitled to conclude on the basis of the various cumulative factors which he had enumerated that the use by the first defendant of the sign Cipriani amounted to unfair competition with the first claimant. 8 On the appeal, Mr Thorley Q.C. The claimants contended they had a goodwill in the United Kingdom because the Hotel Cipriani had customers there and in particular customers who dealt with it directly from the United Kingdom. Arrigo was a director from 1958 to 1967. The defendants’ interpretation is inconsistent with the fact that it is the name ‘Cipriani’ which the Company and Hotel Villa Cipriani can use on an exclusive basis, not their respective full names. ] RPC 16 -foreign business and English goodwill in the UK before 1973 and phrase and infringement... 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