The Determinator strikes Fred -- and bans the C-word

The smooth operation of an intellectual property weblog owes as much to chance as to good organisation.  How often does it happen that there's no exciting news to report at all, and all the Kats are checking their emails and Twitter accounts at sixty-second intervals in the hope of being first to the next bloggable item.  Conversely, how often does it happen that there's a juicy item sitting there, waiting to be blogged, and the Kats are all either exhausted or playing possum.  This post comes towards the end of an exhausting week for many members of the IPKat's blogging team and, while there are several of us who would have wanted to tackle it, the lot has fallen to the last man awake .... The item in question is Hotel Cipriani Srl & Others v Fred 250 Ltd & Others [2013] EWHC 70 (Ch), a Chancery Division, England and Wales, decision of the seemingly indefatigable Mr Justice Arnold this past Tuesday, 29 January.  How splendidly flow the judgments from his prolific pen; how eloquent his rulings, and how seriously-- like another celebrated Arnold of current times -- does he dedicate himself to his official duties when he determines this issues that come before his court.  Not for nothing is he called The Determinator [even though, unlike the other Arnold in The Terminator, he's allowed  to deliver more than 18 lines ... ].

To refresh the memories of seasoned readers and provide some background for more recent ones, it may be worth taking a look at this Katpost on the earlier proceedings between the two parties, to which frequent reference is made.  However, if you can't face retro-reading, continue here:

Hotel Cipriani held a Community trade mark for the word CIPRIANI and owned a number of hotels under that name in Europe. Giuseppe Cipriani was a director of Fred 250 Ltd (‘Fred’), this curious name being the new identity of the second defendant, formerly known as Cipriani (Grosvenor Street) Ltd. Fred had used the sign "Cipriani London" at its restaurant.  In the earlier proceedings, Arnold J found that Giuseppe, together with Fred and the third defendant, Cipriani International, were liable for passing off, granting an injunction to prohibit infringement of the trade mark, passing off any restaurant business not connected with Hotel Cipriani by use of the name "Cipriani", as well as the use of the trade mark CIPRIANI or any other trade mark which was confusingly similar to CIPRIANI in relation to restaurant services.

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the small print -- if you can read it

Fred dropped "Cipriani" from the name of its two London restaurants, calling them ‘C’ and ‘Downtown Mayfair’.  However, as you can see from the logos for those two desirable diners, the C-word had not been entirely eliminated.  Hotel Cipriani saw the logos too, and sought a declaration that the use of the words "by G. Cipriani" and "Managed by Giuseppe Cipriani", which were displayed in logos on the windows and menus of Fred’s London restaurants, constituted a breach of the injunction.  Additionally Hotel Cipriani requested a declaration that the advertisement of restaurant services to United Kingdom consumers via Cipriani International's website was in breach of the injunction.

In support of its application for a declaration, Hotel Cipriani submitted that use of the signs to which it took objection gave rise to a likelihood of confusion. Giuseppe denied that this was the case: the "by Giuseppe" bits were not used for the purposes of distinguishing the services in question, since (i) he was well known as a restaurant proprietor and manager and (ii) the restaurants were clearly identified by names which would not be confused with either Hotel Cipriani or its services. Giuseppe added that, even if his use of the signs fell within the scope of an infringing use on account of there being a potential likelihood of confusion, it was not an infringement by virtue of Articles 12(a) or 12(b) of the Community Trade Mark Regulation, being respectively the use, in accordance with honest commercial practice, of his own name or the use of an indication “concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of rendering of the service, or other characteristics of the goods or service”.

The Determinator came down firmly and almost entirely on the side of the wronged trade mark owner.  In his view:

* Before discovering whether the injunction had been infringed, it was necessary to revert to the earlier decision in which it was granted -- a decision which had itself been upheld by the Court of Appeal (see Katpost here).  The earlier proceedings weren't just important in legal terms: they were crucial in factual terms too, since the findings of the court in the earlier proceedings were res judicata. This being so, Fred and friends could not challenge them: their hands were tied by issue estoppel.

* Now, the findings which could not be challenged included the court’s conclusion that the average consumer was representative of the adult general public which patronised restaurants, particularly more expensive restaurants.  Such a consumer would take the statement "by G. Cipriani" as indicating the person who was responsible for the restaurant, thus making a significant indication as to the origin of the services [= "essential function" of a trade mark in the EU, notes Merpel] provided at a restaurant which was so described. Giuseppe's that the use of the word “Cipriani” in that context did not fall within the scope of an infringement under Article 9(1)(b) of the Community Trade Mark Regulation could not be accepted.

* Despite his fame among law students in recent years, it had not been established that Giuseppe was well known to the relevant average consumer. Accordingly, consumers might well take the word "Cipriani" as forming part of the names of Fred's restaurants. Such use would therefore give rise to a likelihood of confusion for reasons similar to those given in the earlier proceedings.

* The average consumer would not understand the statement "by G. Cipriani" as denoting the quality or other characteristics of the services in question within Article 12(b) of the Regulation. The use of the signs amounted to unfair competition against Hotel Cipriani and was not in accordance with honest practices in industrial and commercial matters.

* The use of the statements connecting the defendants’ restaurants to the name “Cipriani” amounted to passing off and constituted the use of confusingly similar trade marks within the scope of section 56 of the Trade Marks Act 1994 [the "well-known marks" provision, for which there is no "own name" defence].

* The only issue which remained to be determined in relation to Cipriani International's website was whether it targeted United Kingdom consumers. The original version of the website, which had a ‘London’ page, did -- but the new website, which had no such page, did not. Accordingly, no declaration would be given in respect of the use of the statements in question on the new website.

This Kat has an uncomfortable feeling that, if this decision is correct -- which it appears to be -- then perhaps the law, if not wrong itself, is a little harsh.  Is this level of protection, and the extent to which Giuseppe is distanced from being able to use his name in respect of his professional calling, more than we need the law to achieve, he wonders.

The Ciprianis: food, fun and fraud here
Right Said Fred here and, for connoisseurs of English humour, here