Hotel Cipriani SRL v Cipriani (Grosvenor Street) Ltd  EWHC 3032
9 December 2008
The first claimant, the owner of the Cipriani Hotel in Venice successfully brought a claim against the first defendant for trademark infringement and passing off in relation to the London restaurant called ‘Cipriani London’. The first defendant company was run by the sons of Guiseppe Cipriani, one of the founders of the Hotel Cipriani. The defendant argued that the goodwill in the name Cipriani was shared (both in Venice and in London) between the Hotel Cipriani, the defendants and the other Cipriani businesses in and around Venice. The defendants also argued that they were entitled to use the name Cipriani under Article 12(a) of the Council Regulation 40/94 (the ‘own name’ defence) and brought a counter claim for invalidity claiming that the claimant registered the trademarks in bad faith. The Judge found in favour of the Claimants. The Cipriani Group are appealing the decision; the appeal is expected to be in January 2010. James Mellor QC and Charlotte May appeared on behalf of the defendants in the October 2008 Trial.