Case Details
- Citation: Hotel Cipriani S.P.A. v Altunis - Trading, Gestão E Serviços, Sociedade Unipessoal, LDA [2022] SGIPOS 3
- Court: Intellectual Property Office of Singapore
- Date: 2022-03-11
- Judges: Principal Assistant Registrar Ong Sheng Li, Gabriel
- Plaintiff/Applicant: Hotel Cipriani S.P.A.
- Defendant/Respondent: Altunis - Trading, Gestão E Serviços, Sociedade Unipessoal, LDA
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Trade Marks Act
- Cases Cited: [2022] SGIPOS 3
- Judgment Length: 35 pages, 10,562 words
Summary
This case involves a trade mark opposition filed by Hotel Cipriani S.P.A., the owner and operator of the famous Hotel Cipriani in Venice, Italy, against the registration of a trade mark application by Altunis - Trading, Gestão E Serviços, Sociedade Unipessoal, LDA, a Portuguese company. The key issue was whether the Applicant's trade mark, which featured the word "CIPRIANI", should be allowed to be registered in Singapore given the Opponent's prior rights in the "HOTEL CIPRIANI" and "CIPRIANI" marks. The Opponent argued that registration of the Applicant's mark would amount to passing off and infringe its well-known trade marks. After a detailed analysis, the Intellectual Property Office of Singapore ultimately found in favor of the Opponent and refused the Applicant's trade mark application.
What Were the Facts of This Case?
Hotel Cipriani is a high-end hotel located in Venice, Italy that is owned and operated by Hotel Cipriani S.P.A. ("the Opponent"). The hotel first opened in 1958 and has since acquired a reputation as a leading luxury destination, attracting many rich and famous guests over the years. In 2014, the hotel was rebranded as "Belmond Hotel Cipriani" after the Orient Express Hotels group that the Opponent was a part of was renamed the Belmond Group.
On March 1, 2019, Altunis - Trading, Gestão E Serviços, Sociedade Unipessoal, LDA ("the Applicant"), a Portuguese company, applied to register a trade mark in Singapore featuring the word "CIPRIANI" in Class 43 for various hospitality services. The Opponent subsequently filed an opposition against the registration of this trade mark application.
The Opponent does not have any earlier trade mark registrations in Singapore, but argued that the registration of the Applicant's mark would amount to passing off and infringe its well-known "HOTEL CIPRIANI" and "CIPRIANI" marks. The Applicant is part of the Cipriani Group of companies, which was founded by Mr. Giuseppe Cipriani Senior, the same person who was involved in establishing the original Hotel Cipriani. However, it is undisputed that the Cipriani family and the Cipriani Group entities have had no shareholding or management connection with the Opponent since 1967 when Mr. Cipriani sold all his shares in the Opponent.
What Were the Key Legal Issues?
The key legal issues in this case were:
1. Whether the Opponent can rely on the tort of passing off under Section 8(7)(a) of the Trade Marks Act to prevent the registration of the Applicant's trade mark, even though the Opponent does not have any prior registered trade marks in Singapore.
2. Whether the Opponent can rely on Section 8(4)(b)(i) of the Trade Marks Act to oppose the registration of the Applicant's trade mark on the basis that it is well-known in Singapore.
3. Whether the Applicant's trade mark application should be refused under Section 7(6) of the Trade Marks Act on the basis that its use would be contrary to law.
How Did the Court Analyse the Issues?
On the passing off ground, the Intellectual Property Office of Singapore ("IPOS") found that the Opponent had established the necessary elements of goodwill, misrepresentation, and damage. The Opponent had clearly demonstrated that the "HOTEL CIPRIANI" and "CIPRIANI" marks had acquired substantial goodwill and reputation, particularly through the fame and luxury status of the Hotel Cipriani in Venice. The use of the "CIPRIANI" element in the Applicant's mark was likely to lead to misrepresentation and consumer confusion, given the overlapping services. The IPOS was also satisfied that the Opponent would suffer damage to its goodwill and reputation if the Applicant's mark was allowed to be registered.
On the well-known trade mark ground, the IPOS accepted that the "HOTEL CIPRIANI" and "CIPRIANI" marks were well-known in Singapore based on the Opponent's evidence of the hotel's international renown, awards, and media coverage. The use of the "CIPRIANI" element in the Applicant's mark was found to be taking unfair advantage of, and detrimental to, the distinctive character and repute of the Opponent's well-known marks.
Regarding the Section 7(6) ground, the IPOS held that the registration of the Applicant's mark would be contrary to law, as it would amount to passing off and infringe the Opponent's well-known trade marks. The IPOS also noted the long-running dispute between the parties over the use of the "CIPRIANI" name, and that some of the Applicant's prior "CIPRIANI" trade mark registrations in Singapore had been revoked.
What Was the Outcome?
The IPOS ultimately found in favor of the Opponent and refused the registration of the Applicant's trade mark application. The Opponent successfully established its grounds of opposition under Sections 8(7)(a), 8(4)(b)(i), and 7(6) of the Trade Marks Act. The Applicant's trade mark application was therefore not allowed to proceed to registration.
Why Does This Case Matter?
This case is significant for a few reasons:
Firstly, it demonstrates that a party can successfully oppose a trade mark application in Singapore even without having any prior registered trade marks, by relying on the common law tort of passing off and the protection afforded to well-known marks under the Trade Marks Act. This provides an important avenue for brand owners to protect their unregistered rights.
Secondly, the case highlights the importance of reputation and goodwill in trade mark law. The IPOS placed significant weight on the Opponent's evidence of the fame and luxury status of the Hotel Cipriani brand in finding that the use of the "CIPRIANI" element would lead to consumer confusion and damage the Opponent's interests.
Finally, the case serves as a cautionary tale for trade mark applicants, particularly those seeking to register marks that are similar to well-known brands. The IPOS was not persuaded by the Applicant's arguments and was willing to refuse registration to prevent unfair advantage being taken of the Opponent's established rights.
Legislation Referenced
Cases Cited
Source Documents
This article analyses [2022] SGIPOS 3 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.