The Court of Appeal rejected the appellants’ argument that they could rely on the own name defence in Article 12(a) of the CTM Regulation (40/94/EEC, now replaced by 2009/207/EC). While the court found that the defence might be available in respect of a trading name as well a company’s corporate name, it found that CGS’s use of the Cipriani sign amounted to unfair competition with the Hotel Cipriani, so that it was not in accordance with honest practices in commercial matters, as required under Article 12(a).
The court also rejected the appellants’ arguments, based on their contention that they enjoyed concurrent goodwill in the Cipriani mark in respect of restaurants in the UK, that the CTM had been applied for in bad faith and that the passing off claim should fail. The court also considered how to assess whether an international business based abroad, and providing services abroad, had goodwill in the UK.
Case: Hotel Cipriani SRL and others v Cipriani (Grosvenor Street) Ltd and others  EWCA Civ 110, 24 February 2010.
Practical Law Company 24.02.2010