Hotel Cipriani, the world famous hotel in Venice which is part of Orient-Express Hotels Ltd (NYSE:OEH, http://www.orient-express.com), has been successful in defending an appeal against the decision of His Honour Mr Justice Arnold in the High Court in London in December 2008 in which he found for Hotel Cipriani in an action for trade mark infringement and passing off in respect of the mark ‘‘Cipriani’’ for restaurant services, against the operators of the restaurant ‘Cipriani’ London.

Hotel Cipriani is the proprietor of the ‘Cipriani’ trade mark registered within the UK and across the European Union for hotels and restaurant services. In a lengthy and comprehensive judgment in December 2008, the High Court had found that ‘Cipriani’ (Grosvenor Street) Ltd, ‘Cipriani’ International SA of Luxembourg, companies controlled by the Cipriani family including Arrigo and Giuseppe Cipriani, and Giuseppe Cipriani personally, had by operating a restaurant in Mayfair under the name ‘Cipriani’ London infringed the Hotel’s UK and Community trade marks and English Law and were also liable for passing the restaurant off as being associated with the Hotel. The High Court had also held that under international law (“the Paris Convention”), the Hotel’s ‘Cipriani’ brand was a “well known mark”.

The Court of Appeal has now dismissed the Defendants’ appeal and confirmed the High Court’s findings that the Defendants’ use of ‘Cipriani’ and “‘Cipriani’ London’ was not in accordance with honest practices in industrial and commercial matters” and that the Hotel’s UK and Community trade mark registrations for ‘Cipriani’ are valid and subsisting. The Court of Appeal also confirms that the Hotel’s ‘Cipriani’ brand is a “well known mark”.

As a result the Court of Appeal has ordered the Restaurant to cease using ‘Cipriani’ and ‘Cipriani’ London and to change its name to one that does not infringe. The Court of Appeal has also ordered the Restaurant to publicise the Court’s decision on its menus and elsewhere and to pay costs and damages to the Hotel.

Paul White, President and Chief Executive Officer of Orient-Express Hotels, said “We have no wish to cause difficulties for other businesses but Orient-Express Hotels has worked long and hard over many years to build a worldwide reputation for Hotel ‘Cipriani’, substantiated by the many awards and accolades the hotel and its restaurants win each year. We are entitled to protect this famous name in Europe and it was important to us to do so.

“‘Cipriani’ is one of the many valuable brands owned by the Company and others should be in no doubt that we will take appropriate action in any part of the world to protect shareholder value when others seek to encroach upon our brands.”