The General Court of the Court of Justice of the European Union (CJEU) has dismissed an appeal from the unsuccessful application by Arrigo Cipriani (Arrigo) to have Hotel Cipriani's EU trade mark (EUTM) for CIPRIANI, registered for hotel services among other things, declared invalid on the grounds that (i) it was registered in bad faith and (ii) that, under national Italian law, Arrigo had a prior right to that name.

This case is one of many disputes between Hotel Cipriani and Arrigo (along with various other members of the Cipriani family and group) surrounding the ownership and use of CIPRIANI.

Bond Dickinson's Patrick Cantrill acted for Hotel Cipriani in the seminal High Court and Court of Appeal cases of Hotel Cipriani Srl v Cipriani (Grosvenor Street) Ltd [2008] EWHC 3032 and [2010] EWCA Civ 110. Hotel Cipriani was successful at both stages and was awarded in excess of £6 million in damages – the largest amount ever awarded by an English court for infringement proceedings.

Hotel Cipriani's predecessor (Registrant) filed for the EUTM for CIPRIANI in 1996 covering classes 16 (printed matter and publications), 35 (advertising and hotel management services) and 42 (hotel and restaurant services). The mark proceeded to registration in 1998.

In July 2009, Arrigo filed an application for a declaration that the EUTM was invalid for all the goods and services. The grounds of invalidity were that:

  • the application for registration was made in bad faith (Article 52(1)(b) of Regulation No. 207/2009 (Regulation))
  • the mark infringed the right of a well-known person to his name, in this case Cipriani, the renown of which is closely linked to Arrigo, who is a "man of culture whose restaurant business has worldwide renown" (Article 53(2)(a) of the Regulation in conjunction with Article 8(3) of the Codice della Proprieta Industriale (Italian Industrial Property Code) (IPC)).

The EUIPO's Cancellation Division rejected Arrigo's invalidity application. It found that under the doctrine res judicata it did not need to re-examine the ground of bad faith, as a national court with jurisdiction over trade marks of the EU had already given a definitive ruling on the same question (see Hotel Cipriani Srl v Cipriani (Grosvenor Street) Ltd [2008] EWHC 3032 and [2010] EWCA Civ 110). The Division also held that Arrigo had acquiesced to the use of CIPRIANI for hotel, restaurant and other related services, therefore his ground of invalidity under Article 53(2)(a) of the Regulation was inadmissible.

Arrigo appealed to the Board of Appeal, which dismissed the action. The Board of Appeal concluded that there was no bad faith. The Registrant, and subsequently Hotel Cipriani, had run the hotel since the 1960s and was the owner of an Italian national trade mark for CIPRIANI dating from December 1971 for various goods and services, including hotel and restaurant services. Arrigo had not contested this Italian trade mark registration. The Board held that to seek an EUTM for business activities, which were legitimate and ongoing, could never constitute bad faith. In terms of the ground of Article 8(3) of the IPC, the Board stated that the surname "Cipriani" on its own did not sufficiently identify the person Arrigo Cipriani since his forename and surname were generally used together.

Arrigo appealed to the CJEU seeking an annulment of the Board of Appeal decision.

The CJEU dismissed the appeal in its entity and ordered Arrigo to pay costs.

Arrigo claimed that the Board should not have taken into consideration the existence of the earlier Italian national trade mark for CIPRIANI and stated that Hotel Cipriani had intended to profit from the renown of Arrigo and the Cipriani name. The CJEU rejected both of Arrigo's submissions, concluding that it is normal commercial strategy for an entity to extend its national trade mark protection by registering an EUTM and therefore such registration cannot be said to have been made in bad faith. Also, as admitted by Arrigo, the registration of the contested EUTM was applied for at a time when the Registrant was the owner of an identical national mark in Italy, which national registration had never been successfully challenged by Arrigo. If Arrigo had challenged the earlier Italian mark, this might have assisted the allegation of bad faith in the subsequent filing of the EUTM. However, in the absence of such a challenge, it could not now be found that Hotel Cipriani had intended to profit from the alleged renown of the name Cipriani or that of Arrigo.

Arrigo also claimed that the Registrant acted in bad faith when filing the application as they had no intention to use the mark for the relevant services. The CJEU rejected Arrigo's argument on the basis that he had not produced any evidence to support his allegation that this was the sole intention of the trade mark applicant. Moreover, there was substantial evidence that the restaurants in the Hotel Cipriani were stand-alone operations which services both guests and non-guests.

The CJEU rejected Arrigo's appeal on this basis and upheld the Board of Appeal's finding that there was no bad faith on the part of Hotel Cipriani or its predecessor.

Under Article 53(2)(a) of the Regulation an EUTM can be declared invalid if its use could be prohibited pursuant to the right to a name under the national law governing its protection. In this instance, Arrigo referred to Article 8(3) of the IPC which provides for well-known persons to register their personal names as trade marks.

Arrigo argued that the Board of Appeal incorrectly held that he could only rely on the renown of his first name and surname together, and that the surname did not refer to his person. The CJEU rejected his argument stating that, out of the 60 documents provided, Arrigo was always referred to by his first and last name, other than in the main title where Cipriani was referred to on its own. Also, in 38 of those documents, Arrigo's full name appeared next to or below his photograph. The evidence submitted by Arrigo did not establish that the surname Cipriani would link to Arrigo; the name Cipriani could potentially designate members of a family (including Arrigo), the Registrant, or Hotel Cipriani, as well as refer to the Italian national mark for CIPRIANI.

The CJEU rejected Arrigo's appeal on this basis and upheld the Board of Appeal's finding that the contested EUTM did not infringe, for the purposes of Article 8(3) of the IPC, the right to the name Cipriani.

The CJEU affirmed the test for bad faith and the principle that extending the protection of a national mark by registering an EUTM is part of an undertaking's normal commercial strategy. The fact that the Registrant had an earlier, identical national mark, which Arrigo did not oppose or object to, contributed to the finding that there was no bad faith. In any case, bad faith remains a high threshold to prove and if owners have EU national rights, which were never challenged by the invalidity applicant, this could further add to the difficulty of proving bad faith by the registrant.

It is a well-established principle that the EUIPO is not bound by decisions given by national courts. However the CJEU made it clear that the EUIPO may nevertheless take such decisions into consideration as indicia in the assessment of the facts of the case, especially if these, such as with the proceedings in the UK, had been upheld at a later stage. Where an issue, such as bad faith, had already been decided upon at national level, the EUIPO may deem it unnecessary to re-examine the ground under the res judicata doctrine.

This case serves as a reminder of the need to submit sufficient and relevant evidence to support your arguments. Arrigo failed to demonstrate that his name was well-known under Article 8(3) of the IPC and did not produce any evidence that Hotel Cipriani's sole intention was to hinder his commercial activities. Without this evidence, the CJEU declined to find in favour of the applicant.