Factual and Procedural Background
The Plaintiff ("HC") owns Community Trade Mark No. 115824 ("the CTM") for the sign "Cipriani" in relation to restaurant services. The First Defendant ("Company A", formerly "CGS") operated a restaurant called Cipriani London at 23/25 Davies Street, London. The court found that Company A infringed the CTM through use of the sign "Cipriani" and "Cipriani London" without a valid defense. The Defendants' counterclaims challenging the validity of the CTM were dismissed. Company A was also liable for passing off, and the Second Defendant ("Defendant B") and Third Defendant ("Company B") were held jointly liable with Company A.
An injunction ("the Injunction") was ordered on 16 January 2009, restraining the Defendants from infringing the CTM, passing off any restaurant business not connected with the Plaintiff by use of the names CIPRIANI or CIPRIANI LONDON or confusingly similar names, and from using confusingly similar trade marks in relation to restaurant services within the UK. The Injunction was stayed pending appeal.
The Court of Appeal dismissed the Defendants' appeal on 24 February 2010, and the Injunction came into force on 24 April 2010. Following this, Company A changed its name to "Fred 250 Ltd" ("Fred") and renamed the restaurant to "C London". Another company within the Cipriani Group, "Downtown Mayfair Ltd" ("DM"), opened a restaurant called Downtown Mayfair in London in November 2011.
Disputes arose regarding compliance with the Injunction, leading to two applications before the court. The Plaintiff applied for declarations that certain acts constituted breaches of the Injunction, specifically the use of the words "by G. Cipriani" on the windows and menus of C London and Downtown Mayfair, and the advertising of restaurant services on the Cipriani Group's website ("the Website"). The Defendant B applied for declarations that proposed use of logos including "Managed by Giuseppe Cipriani" would not breach the Injunction.
Legal Issues Presented
- Whether the use of the signs "by G. Cipriani" and "Managed by Giuseppe Cipriani" in the logos of C London and Downtown Mayfair infringed the CTM and/or constituted passing off or use of confusingly similar trade marks contrary to the Injunction.
- Whether the use and proposed use of the Cipriani Group's Website to advertise restaurant services targeted at UK consumers breached the Injunction.
- The proper construction and application of the Injunction in light of prior findings and issue estoppel.
- Whether Defendant B's control over Fred and DM renders him liable for breaches of the Injunction.
Arguments of the Parties
Plaintiff's Arguments
- The use of "by G. Cipriani" on logos constituted a breach of the Injunction as it infringed the CTM and amounted to passing off.
- The historic Website, including the London page advertising C London and Downtown Mayfair, was targeted at UK consumers and thus breached the Injunction.
- The signs used are confusingly similar to the CTM and likely to cause confusion among the average consumer.
- Defendant B controls Fred and DM and the Website, so he is the appropriate respondent for enforcement.
Defendant B's Arguments
- The signs "G. Cipriani" and "Giuseppe Cipriani" are part of logos and should be considered as whole, with the signs qualifying the surname.
- The use of the signs is truthful and descriptive of Defendant B's role as manager or proprietor, not intended to distinguish services in a way that infringes the CTM.
- The Website, although accessible in the UK, is not targeted at UK consumers and therefore does not breach the Injunction.
- Defendant B is not the appropriate respondent for the Website-related claims.
- Use of the signs falls within exceptions under Article 12(a) or (b) of the Regulation.
Table of Precedents Cited
| Precedent |
Rule or Principle Cited For |
Application by the Court |
| Nokia Corp v InterDigital Corp [2006] EWCA Civ 1618 |
Court's inherent jurisdiction to grant declarations where there is a real commercial reason |
Confirmed jurisdiction to grant declarations in current applications |
| Chelsea Man plc v Chelsea Girl Ltd [1988] FSR 217 |
Interpretation of issue estoppel in trade mark cases |
Rejected differing interpretation, upheld issue estoppel binding on Defendants |
| Red Bull GmbH v Sun Mark Ltd [2012] EWHC 1929 (Ch) |
Application of Article 9(1)(b) of the Regulation regarding likelihood of confusion |
Applied principles to assess infringement of CTM by use of signs |
| Samuel Smith Old Brewery (Tadcaster) v Lee [2011] EWHC 1879 (Ch) |
Assessment of use in accordance with honest practices and passing off |
Applied factors to conclude use was not honest and amounted to unfair competition |
| Euromarket Designs Inc v Peters [2001] FSR 20 |
Criteria for determining whether website use targets UK consumers |
Applied to determine whether Website infringed CTM in UK |
| 1-800 Flowers v Phonenames [2001] EWCA Civ 721 |
Guidance on targeting of advertising to UK consumers via internet |
Applied to assess Website targeting UK consumers |
| L'Oréal SA v eBay International AG [2011] ETMR 52 |
Interpretation of EU trade mark law on internet advertising and infringement |
Used to support approach to Website targeting and infringement |
Court's Reasoning and Analysis
The court began by affirming that the prior findings from the First Instance Judgment and the Court of Appeal Judgment were binding on the Defendants due to issue estoppel, including the validity and distinctiveness of the CTM, and the goodwill owned by the Plaintiff in the UK. The court emphasized that the Injunction prohibits acts amounting to infringement, passing off, or use of confusingly similar trade marks.
The court analyzed the signs "by G. Cipriani" and "Managed by Giuseppe Cipriani" in the context of their use in logos for C London and Downtown Mayfair. It found that the average consumer would perceive these signs as indicating the origin of the restaurant services, associating them with a person responsible for the restaurant (chef, proprietor, or manager). The court rejected the Defendant's argument that the signs were merely descriptive or truthful statements not intended to distinguish services.
Regarding likelihood of confusion, the court found that the signs were confusingly similar to the CTM "Cipriani" because they incorporated the whole trade mark with the addition of a first name or initial. The court noted that the restaurant names were not sufficiently distinctive to prevent confusion, and evidence showed that consumers and media referred to the restaurants with the Cipriani name included, confirming the likelihood of confusion.
The court rejected the application of Article 12(a) and (b) defenses, holding that Defendant B was not trading or making the complained use personally, and that the signs did not indicate quality or characteristics but rather origin. The use was not in accordance with honest practices, constituting unfair competition and passing off.
On the Website issue, the court found that the historic Website, which prominently featured Cipriani branding and promoted the London restaurants, was targeted at UK consumers and breached the Injunction. The current Website, lacking a London page and appearing to target a global or mainly US audience, was not targeted at UK consumers and did not breach the Injunction.
Defendant B's control over Fred, DM, and the Website was accepted, making him the appropriate respondent for enforcement of the Injunction.
Holding and Implications
Holding:
- The use of the sign "by G. Cipriani" on the logos of C London and Downtown Mayfair from May 2010 to December 2011 constituted a breach of the Injunction.
- The proposed use of the sign "Giuseppe Cipriani" in the logos of these restaurants would also breach the Injunction.
- The use of the sign "CIPRIANI" on the historic Website was a breach of the Injunction.
- The use of the sign "CIPRIANI" on the current Website does not breach the Injunction.
Implications: The court’s decision confirms and enforces the scope of the Injunction against the Defendants, particularly Defendant B, preventing use of trade marks and signs confusingly similar to the Plaintiff’s CTM in the UK restaurant market and related advertising. The decision does not establish new precedents but applies established principles of trade mark infringement, passing off, and issue estoppel to ensure compliance with the Injunction. The ruling emphasizes the importance of controlling use of trade marks and associated signs in branding and advertising to avoid consumer confusion and protect trade mark rights.