On 30 November, the IP Court of Appeal of Venice issued decision no. 2798/17 in a dispute between Giuseppe and Arrigo Cipriani, respectively grandson and son of Giuseppe Cipriani (founder of the famous Harry’s Bar in Venice), and Hotel Cipriani S.r.l., owner of the famed Venetian hotel. The latter was also founded by Giuseppe Cipriani “senior”, who then sold its shares in the company together with the trademark “Cipriani”. We discussed a similar issue also here on this blog, with reference to the fashion designer Elio Fiorucci.

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This specific case dealt with the use by Giuseppe and Arrigo Cipriani of business names containing the surname Cipriani, such as, for example, “by G. Cipriani” or “by the Ciprianis”, to identify their food and hotel business activities.

In 2012 the Venice Court, called upon to rule at first instance, granted the negative declaratory judgement claimed by the Ciprianis saying that the use of those names doesn’t constitute an act of unfair competition nor infringement of the Italian and EU trademarks “Cipriani” and “Hotel Cipriani”, owned by Hotel Cipriani S.r.l. In fact, it constitutes fair descriptive use pursuant to art. 12 EU Reg. 207/2009 and art. 21 Italian IP Code. The Court confirmed that the Cipriani family was entitled to operate in foodservice with a trademark based on their own surname, as this wasn’t deceptive if shown in a small size.

Hotel Cipriani S.r.l. filed an appeal against this decision, which was granted by the Venice Court of Appeal with the decision under review.

The Appeal Judges previously considered the possibility for a national court – called upon to rule as an EU trademarks court – to issue a non-infringement judgement with effect in all the EU States, when a final decision has already been issued by the judges of another member State (specifically, the United Kingdom) finding for the infringement of the same EU trademark. In this regard, the Court concluded that “the decisions taken by the EU trademarks court of the member State where the infringement happens (forum commissi delicti) have effect only in that State, and they don’t preclude the possibility to act before the competent EU trademarks court – in which case jurisdiction is extended to all the EU States – through actions of non-infringement”. Moreover, the plaintiff that requests a negative declaratory judgement can ask for a limitation of its effect to a part of the EU territory, as the Ciprianis did asking for the exclusion of the United Kingdom.

Regarding the merits of the case, the Court noted that “the use of a third party’s trademark, with confusing effect, does not conform to the principles of professional fairness”. The use of the surname does not conform to the principles of professional fairness “when it suggests a commercial link between the third party and the trademark proprietor, or when it damages “the trademark’s value gaining unfair advantage from”, or causing “discredit or denigration” to the distinctive function of the trademark or when it amounts to a parasitic use, especially if related to a trademark with reputation”. According to the Judges, the preceding occurs in the present case as the trademarks of Hotel Cipriani S.r.l. are famous worldwide, in view of the Venetian hotel’s reputation as one of the best hotels in the world. And so, “the interpretation given by the court (stating the possibility for the Cipriani family to operate in foodservice with trademarks based on their own surname which would not be deceptive, if shown in “small size”), requires that the use of the relevant surname conforms to the principles of professional fairness… but this would take place in competition and connection with the famous trademarks “Cipriani” and “Hotel Cipriani”, with the risk of hooking and confusion between the activities characterised by the conflicting trademarks, in the case of business activities in the same area or in similar ones”.

Moreover, as the decision notes, the reputation of the Cipriani family in the area of foodservice, underlined by the court of first instance, can’t justify the use of the surname in contrast with the protection of the famous trademarks under discussion. In particular, “this reputation… is irrelevant since Giuseppe Cipriani senior (in agreement with his son) sold his surname when he left the Hotel Cipriani’s corporate structure giving it the faculty of exclusively maintaining the surname Cipriani”. Neither, in the case under review, can the need be invoked to disclose to the public skills and professionalism underlined by the court. In fact – as the Judges say with a questionable statement – food services do not require detailed public information about the origin of the activities, since these do not possess the kind of creativity that, for example, requires an artist or a fashion designer to “sign” his or her own work.

In light of the foregoing, the Court of Appeal of Venice granted Hotel Cipriani’s claims and, rejecting the request for a negative declaratory judgement claimed by Arrigo and Giuseppe Cipriani, ordered the latter to pay the costs of the proceedings in both instances.