News for the Hospitality Executive
Venices's Hotel Cipriani Successful in Trademark Battle
The Cipriani Family, Owners of
the Cipriani Restaurant in London, Must Change
its Name by April 24, 2010 and Pay Penalties Totaling US$ 11.5 million
LONDON, February 24, 2010 - Hotel Cipriani, the world famous hotel in Venice which is part of Orient-Express Hotels Ltd (OEH, http://www.orient-express.com), has been successful in defending an appeal against the decision of His Honour Mr Justice Arnold in the High Court in London in December 2008 in which he found for Hotel Cipriani in an action for trade mark infringement and passing off in respect of the mark ''Cipriani'' for restaurant services, against the operators of the restaurant 'Cipriani' London.
Hotel Cipriani is the proprietor of the 'Cipriani' trade mark registered within the UK and across the European Union for hotels and restaurant services. In a lengthy and comprehensive judgment in December 2008, the High Court had found that 'Cipriani' (Grosvenor Street) Ltd, 'Cipriani' International SA of Luxembourg, companies controlled by the Cipriani family including Arrigo and Giuseppe Cipriani, and Giuseppe Cipriani personally, had by operating a restaurant in Mayfair under the name 'Cipriani' London infringed the Hotel's UK and Community trade marks and English Law and were also liable for passing the restaurant off as being associated with the Hotel. The High Court had also held that under international law ("the Paris Convention"), the Hotel's 'Cipriani' brand was a "well known mark".
The Court of Appeal has now dismissed the Defendants' appeal and confirmed the High Court's findings that the Defendants' use of 'Cipriani' and "'Cipriani' London' was not in accordance with honest practices in industrial and commercial matters" and that the Hotel's UK and Community trade mark registrations for 'Cipriani' are valid and subsisting. The Court of Appeal also confirms that the Hotel's 'Cipriani' brand is a "well known mark".
As a result the Court of Appeal has ordered the Restaurant to cease
using 'Cipriani' and 'Cipriani' London and to change its name to one that
does not infringe. The Court of Appeal has also ordered the Restaurant
to publicise the Court's decision on its menus and elsewhere and to pay
costs and damages to the Hotel.
Paul White, President and Chief Executive Officer of Orient-Express Hotels, said "We have no wish to cause difficulties for other businesses but Orient-Express Hotels has worked long and hard over many years to build a worldwide reputation for Hotel 'Cipriani', substantiated by the many awards and accolades the hotel and its restaurants win each year. We are entitled to protect this famous name in Europe and it was important to us to do so.
"'Cipriani' is one of the many valuable brands owned by the Company and others should be in no doubt that we will take appropriate action in any part of the world to protect shareholder value when others seek to encroach upon our brands."
Hotel Cipriani was built in 1958 by Lord Iveagh of the Guinness family in collaboration with Giuseppe Cipriani senior, a restaurateur and owner of the famous Harry's Bar in Venice. In 1967, Giuseppe Cipriani senior sold his entire interest in the company which owned Hotel Cipriani (Hotel Cipriani SRL) and agreed that company and the Hotel Villa Cipriani (also at that time owned by the Guinness family) would have the exclusive right to use the name 'Cipriani'. An exception was made for the business which became Locanda Cipriani on Torcello island.
In 1976, the company Hotel Cipriani SRL was purchased by one of the companies of the Sea Containers Group, later becoming part of Orient-Express Hotels. Hotel Cipriani had been in decline for many years prior to 1976 but after that date, benefited from massive investment from its new owners. It expanded hugely, creating two new restaurants, conference and banqueting facilities and restoring the gardens.
Long before 1996, when Hotel Cipriani SRL filed for the 'Cipriani' trade mark, Hotel Cipriani was generally recognised as one of the world's leading hotels, winning awards and welcoming celebrities, crowned heads of Europe and political leaders among its many loyal guests. The hotel's restaurants have always been a fundamental part of the hotel offering and contributed to its reputation, winning their own accolades for food quality, service and ambience.
The legal team acting on behalf of the Company consisted of Solicitors
Walker Morris, Iain Purvis and Benet Brandreth of Counsel and the Company's
in-house legal department.
|Also See:||Top Performing Properties for Orient-Express Hotels in 2000 Were the Cipriani, Windsor Court and Copacabana / Mar 2001|