Trade marks and the use of “own name”
Don’t assume you can use a trade mark just because it is the same as your own name – the Cipriani cases have highlighted this is not necessarily the case as Cathrine Ripley explains.
The Cipriani cases – background
The Guinness family and a restaurateur called Guiseppe Cipriani opened the Hotel Cipriani in Venice in 1958. Signor Cipriani sold his entire interest in the business in 1967 and agreed that the company – called Hotel Cipriani – would have exclusive rights to use the name “Cipriani”. Hotel Cipriani successfully registered the “Cipriani” trade mark in 1996.
In 2004 the Cipriani family, operating through an English company called Cipriani (Grosvenor Street) Ltd (CGSL), opened a restaurant in London’s Mayfair called “Cipriani London”. The sole director of CGSL was Signor Cipriani’s grandson, Guiseppe junior.
Hotel Cipriani brought a successful infringement claim against CGSL and Guiseppe junior.
CSGL and Guiseppe appealed the decision using the “own name” defence under the Community Trade Mark Regulations. In other words, they argued that Hotel Cipriani could not stop them from using the “Cipriani” name because it was Guiseppe junior’s own name. This argument failed, the court finding that the trade mark was not being used by CGSL in accordance with “honest practices in industrial or commercial matters”; indeed the court thought the use amounted to unfair competition with Hotel Cipriani. In addition, the Mayfair restaurant was being run by CGSL, not Guiseppe junior personally.
The moral of the story
This case illustrates that the circumstances in which the courts will allow one party to use another party’s registered trade mark simply because his own name is the same as the trade mark are very limited. The name in question must be the legal or trading name of the party seeking to use it and the use of the name should be in accordance with “honest practices in industrial or commercial matters”.
So can I register my name as a trade mark?
Yes, you can register your name as a trade mark provided that the trade mark authorities are satisfied that it passes the test for “distinctiveness”. This will depend on various factors. Generally, where a name (or word) is more unusual it is likely to be considered more distinctive and therefore stands a better chance of registration. Equally, the more common a name (or word) is, the less likely it will be considered distinctive for the simple reason that there may be others with the same name.
If you would like any advice on the registrability of your name as a trade mark, or any other trademark registration, please get in touch with Cathrine Ripley.