Own name defence to registered trade mark infringement applies to trading as well as corporate names, but use must be honest – Hotel Cipriani v Cipriani (Grosvenor Street) Ltd, Court of Appeal

HC – which owned hotels under the name ‘Cipriani’ in Italy, Portugal and Madeira – has won in its trade mark infringement action against the owners of a restaurant that called itself ‘Cipriani London’. The High Court initially, and now the Court of Appeal, have said that the defendant’s operation of a restaurant in London since 2004 infringed HC’s EU and UK trade marks, which had been registered since 1996. The London restaurant was ordered to change its name.

In the High Court action, the Court threw out the defendant’s argument that it was simply using its ‘own name’. Although there was an ‘own name’ defence that could apply to companies as well as to individuals, the defendant did not use its full company name (apart from the ‘Ltd’ bit) as it was required to do to take advantage of this defence but it instead used a much shorter version of its name. In any event, the Court said that its use had not been ‘in accordance with honest practices in industrial and commercial matters’ as it should have known of the existing registered trade mark when starting up.

On appeal, the Court of Appeal has agreed with the High Court ruling, but not with all of its findings. The Court of Appeal said that a company could claim that its trading name benefited from the ‘own name’ defence. Whether it was the company name or trading name, though, the position had to be that the use was in accordance with honest practices. The right to use one’s own name was not an absolute right. Much depended on the trading name adopted and in what circumstances it had been adopted. In this particular case, the use of the same name as the already established brand did not amount to honest practices as the infringer did not already have concurrent rights in the name, so the ‘own name’ defence was thrown out.