February 2009
Trade Marks
The Own Name Defence
The European Trade Mark Directive which is incorporated into the laws of each member of the
European Union provides for a so-called ‘own name defence’ to trade mark infringement actions.
What is the defence designed to protect?
Hotel Cipriani
In the United Kingdom, the Trade Marks Act 1994 provides
under Section 11(2)(a) that:-
The history of this dispute starts in 1931, when Giuseppe
Cipriani Senior opened ‘Harry’s Bar’ in Venice, an
establishment which was patronised by the likes of Noel
Coward, Orson Welles, Lauren Bacall and Ernest
Hemmingway.
‘A registered trade mark is not infringed by the use by a
person of his own name or address, provided the use is in
accordance with honest practices in industrial or
commercial matters.’
Section 11(2)(a) was designed to stop the proprietors of
trade mark registrations from preventing a person or persons
from using their own name and address to identify
themselves, providing such use was in accordance with
honest practices. The Act did not allow for a person to
change their name to Mr Coca Cola for example and benefit
from the ‘own name defence’, as this would obviously not be
in accordance with honest practices.
There was for some time a debate over whether this defence
extended to ‘legal entities’ as opposed to simply natural
persons. However, two decisions of the European Court of
Justice, Case C-245/02 Anheuser-Busch Inc vs. Budejovicky
Budvar NP and Case C-17/06 Celine Sarl vs. Celine SA clearly
established that the defence could apply to legal entities, as
well as to natural persons. Further, it is now accepted that in
order for a legal person to be able to rely on the defence, it
is not necessary for it to use elements of its name such as
’Ltd’, ’plc’, ’Sarl’ or ’SA’ which merely indicate a particular
form of legal personality. However, how far can the
defendant stray from his full legal name to benefit from the
defence?
In March 1958, Giuseppe Cipriani Senior opened the Hotel
Cipriani to an extent funded by Lord Iveagh who was a
patron of Harry‘s Bar. If you are a member of glitterati and
have ever stayed in Venice you will be aware of the name
Hotel Cipriani. The Hotel Cipriani is one of the most
exclusive hotels in Venice. Two other hotels, Locanda Cipriani
and Hotel Villa Cipriani, were connected or managed by
Giuseppe Cipriani over the years, although they are not
central to this dispute.
By 1967 Giuseppe Cipriani had sold any interests in the
company which owned the Hotel Cipriani. As part of the
sale, an agreement was signed, referred to throughout the
litigation as ’the 1967 agreement’. Although the agreement
provided for the continued use of the mark Cipriani within
the hotel names, Locanda Cipriani and Hotel Villa Cipriani,
Giuseppe Cipriani Senior together with any members of the
Cipriani family were barred from using any names in relation
to businesses incorporating the Cipriani name for five years
after the execution of the 1967 Agreement. Crucially to this
case after the Community Trade Mark system came into
place in 1996, the owners of Hotel Cipriani in Venice
registered ‘Hotel Cipriani’ as a Community trade mark.
More hotels and restaurants Cipriani
On the 9th December 2008, Mr Justice Arnold in the High
Court of Justice laid down a judgement in Hotel Cipriani SRL
and others vs. Cipriani (Grosvenor Street) Limited and others,
which would suggest that a defendant can not stray too far
from his full legal name to benefit from the ‘own name
defence’ and that where an allegation of bad faith also
comes into play, a court is likely to apply the defence
narrowly.
Over the years, further hotels and restaurants were opened
incorporating the Cipriani name across the globe by
members of the Cipriani family, most notably Arrigo Cipriani,
Giuseppe Senior’s son. In 2004, Cipriani (Grosvenor Street)
Limited, a entity ultimately owned by a Luxembourg
corporation whose directors included Arrigo Cipriani and
Giuseppe Cipriani opened a restaurant in London called
‘Capriani London’ and this restaurant opening prompted the
present proceedings under discussion.
continued overleaf
In November 2006, the claimants, Hotel Cipriani SRL and
others, sued the defendants, Cipriani (Grosvenor Street)
Limited and others for infringement of their Community trade
mark rights in the name ’Hotel Cipriani’ and passing off based
on the goodwill in the name ’Hotel Cipriani’ in the United
Kingdom. The defendants counter claimed that the
Community trade mark rights of the claimants were invalid,
as they had been filed in bad faith and that they could
benefit from the ’own name defence’.
The invalidity claim was rejected, but the key point of the
judgement comes from the width that Justice Arnold placed
on the ‘own name defence’.
The width of the ‘own name defence’
The court held that although the European Court of Justice
had held in Celine Sarl vs. Celine SA that the own name
defence could apply to trading names, the ECJ had
interpreted that case narrowly as the legal and trading names
had been identical in the Celine case, a situation which did
not apply to the case at hand.
defendants could not benefit from the ‘own name defence’.
Ciprinani (Grosvenor Street) Limited was not the same as
‘Cipriani London’, the trade mark which was the subject of
the litigation, and further it was argued that the defendants
had been aware of the plantiffs rights to the Cipriani trade
mark. Furthermore, the claimants actions for passing off also
succeeded.
Lessons to be learned
It seems that the Cipriani London case shows that the courts
will interpret the ‘own name defence’ relatively narrowly.
Although the defence undoubtedly does apply to corporate
entities, as well as personal names, any defendant will need
to utilise a name which could not be interpreted as being
contrary to honest principles in industrial or commercial
matters.
The court held that a carte blanche application of the ‘own
name defence’ to all trading names would result in a
significant inroad into the rights conferred on the owner of a
trade mark registration, a situation which the creators of the
Trade Mark Directive could not have intended. Further, as
‘Cipriani’ and ‘Cipriani London’ were not the corporate or
personal names of the defendants, then in this case the
© Pinsent Masons LLP 2009
Should you have any questions please contact Lindsey Wrenn (lindsey.wrenn@pinsentmasons.com) or Lee Curtis (lee.curtis@pinsentmasons.com)
your usual Pinsent Masons adviser who will be able to assist you further.
This note does not constitute legal advice. Specific legal advice should be taken before acting on any of the topics covered.
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