Overview

In this edition of Intellectual Property Bulletin, we review the Court of Appeal decision in Hotel Cipriani v Cipriani (Grosvenor Street), concerning the dispute between the operators of the world-famous Venetian hotel, Hotel Cipriani, and the operators of Cipriani London, a top-end restaurant in Mayfair.

The Court of Appeal agreed with Arnold J that the Defendants had infringed the Community Trade Mark (CTM) for CIPRIANI and that they had passed off their services as those of Hotel Cipriani. The Defendants have been ordered to change the name of the restaurant by 24 April 2010 and have also been ordered to publicise the judgment on their menus and website.

The Defendants are expected to seek permission to appeal to the Supreme Court (permission was refused by the Court of Appeal and so they will have to obtain permission from the Supreme Court itself).

In a separate development, a High Court judge has ordered that, as a result of the infringement and acts of passing off, the Defendants must account to the Claimants for approximately £7.5million of profits, which he held were attributable to the infringement and passing off. Again, it is likely that the Defendants will appeal this finding.

Aside from the interest generated by the parties involved in the case and its outcome, the decision is particularly interesting for providing clarification on a number of important issues, including bad faith attacks on trade marks; the use of the own name defence by corporate defendants; and the issue of whether an overseas company providing services overseas has goodwill in this country.

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