Section 2 - Likelihood of confusion in the case law of the European Court of
B. United Kingdom
2. Hotel Cipriani SRL v. Cipriani (Grosvenor Street) Ltd 2008 EWHC 3032 (Ch)
High Court of Justice Chancery Division
The three claimants are members of the Orient Express Hotels Group of companies:
the first claimant, “Hotel Cipriani”, owns and operates the Hotel Cipriani in Venice, the second claimant owns and operates the Ristorante Hotel Cipriani at the Lapa Palace Hotel in Lisbon, and the third claimant owns and operates the Ristorante Villa Cipriani at the Reid's Palace Hotel in Madeira.147
Hotel Cipriani is the owner of the registered CTM for the word CIPRIANI in respect of various goods and services including the following: "Hotels, hotel reservation, restaurants, cafeterias, public eating places, bars, catering; delivery of drinks and beverages for immediate consumption." 148 Hotel Cipriani has primarily used the CTM so far as hotel and restaurant services are concerned in Venice. More recently, it has also used the CTM in relation to restaurant services in Lisbon and in Madeira.149 Hotel Cipriani is also the owner of CTM for the words HOTEL CIPRIANI applied for and registered for the same goods and services as the first CTM.150
On 21 November 1997 defendants applied to register the following words and devices as CTMs in Classes 29 and 30 (FOOD) and 39 and 42 (SERVICE) respectively, representations of which are shown below: 151
147 Hotel Cipriani SRL & Ors v. Cipriani (Grosvenor Street) Ltd & Ors [2008] EWHC 3032 (Ch) (9 December 2008) at paragraph 1
148 Hotel Cipriani, supra note 147, at paragraph 8.
149 Hotel Cipriani, supra note 147, at paragraph 117.
150 Hotel Cipriani, supra note 147, at paragraph 10.
151 Hotel Cipriani, supra note 147, at paragraph 78.
The applications were published and Hotel Cipriani filed notices of opposition to both applications on grounds raised under CTMR Article 8(1)(a) and (b), relying upon its various Community and other European national registrations.152
In April 2001, the Opposition Division of OHIM refused the application for the CIPRIANI SERVICE mark in its entirety holding that the mark applied for was not identical to any of Hotel Cipriani's marks, but concluded that:
1. The mark “CIPRIANI” enjoys considerable international esteem and notoriety in relation to hotel services.
2. The identical word “CIPRIANI” is the dominant and distinctive component of the marks in comparison, both visually and phonetically. It is the part in which the distinctiveness of the CTM application lies, as it is much stronger than the directly descriptive word “SERVICE” and the allusive graphic element. The different features of the CTM application have only a secondary impact on its overall impression. Moreover, the CTM application reproduces in its entirety the senior mark. Therefore, the two marks are highly similar.
3. The respective services are identical.
4. Association: There are sufficient grounds to suggest that the average consumer may directly mistake the one mark for the other or at least associate the two assuming that they indicate origin from the same or connected undertakings.
Hence, the Opposition Division concluded that the reproduction of the senior mark in the CTM application in its entirety generates sufficient visual and phonetic similarities
152 Hotel Cipriani, supra note 147, at paragraph 79.
between the marks to give rise to confusion on the part of the public in the Community.153
As for the CIPRIANI FOOD mark, the Opposition Division refused the application for some foodstuffs but allowed it in respect of others for the following reasons:
1. The mark “CIPRIANI” enjoys considerable reputation in relation to hotel services, as the identifier of one of the most prestigious and highly esteemed hotels in Italy, being ranked for decades among the best of the sector in specialized directories, both because of the quality of its services and its imposing site in the Venetian lagoon. The international press attested to the fame of the HOTEL CIPRIANI.
2. The identical word “CIPRIANI” is the dominant and distinctive component of the marks in dispute, both visually and phonetically, as it is much stronger than the directly descriptive words “HOTEL” and “FOOD” and the allusive graphic element. Therefore, the marks are highly similar.
3. Some goods were complementary to the opponent’s (namely, jellies, jams;
preserved and cooked fruits and vegetables; fruit sauces; milk products; pastry and confectionery, etc.), but on the other hand, some of the applicant's goods (meat, fish, poultry and game; meat extracts; dried fruits and vegetables; eggs, milk, etc.) have been found to be clearly dissimilar to the opponent's services. Being the similarity of goods an indispensable condition for the finding of a likelihood of confusion, it follows that for those dissimilar goods there can be no likelihood of confusion, notwithstanding the high degree of similarity between the signs and the reputation of the opponent's marks.
4. For those complementary goods, combined with the close similarity of the signs and the high distinctiveness of the senior marks, they may indeed justify an assumption on the part of the public that such goods either originate directly from the opponent, or that the opponent is somehow involved in their production or is ultimately responsible for their quality.154
153 Hotel Cipriani, supra note 147, at paragraph 80.
154 Hotel Cipriani, supra note 147, at paragraph 81.
Despite the Opposition Division’s opinion, defendants later on began operating a restaurant since April 2004 under the name Cipriani London, but which is commonly referred to simply as Cipriani.155 As a consequence, claimants filed this complaint in Court.
The High Court of Justice Chancery Division found that there was a likelihood of confusion for the following reasons:
1. The mark CIPRIANI would have been fairly distinctive to a UK consumer at that date even if it had not acquired a reputation. In fact, the CTM has a high reputation.
2. CIPRIANI LONDON is a sign which is similar to the CTM CIPRIANI. The dominant and distinctive element in the defendants' sign is CIPRIANI since the additional word LONDON is non-distinctive, particularly for a restaurant in London.
This is self-evident, but confirmed by the fact that both the Defendants and third parties often drop the word LONDON. Thus the dominant and distinctive elements of the mark and the sign are identical.
3. The services are identical.
4. Association: Even if the CTM did not have a reputation, the average consumer would think that the services denoted by the mark and the sign came from the same or economically-linked undertakings. 156
5. The average consumer is representative of the adult general public which patronizes restaurants, and in particular the more expensive class of restaurant. While some care is taken over the selection of restaurant services, these are not specialist services or ones over which especial care is taken.
In conclusion, the Court’s opinion is consistent with the two decisions of the OHIM Opposition Division discussed above.
155 Hotel Cipriani, supra note 147, at paragraph 2.
156 Hotel Cipriani, supra note 147, at paragraph 124.