In Hotel Cipriani S.P.A. v Altunis – Trading, Gestão E Serviços, Sociedade Unipessoal, LDA [2022] SGIPOS 3, the PAR refused the registration of the trade mark application by Altunis – Trading, Gestão E Serviços, Sociedade Unipessoal, LDA on several grounds including passing off.

Intellectual Property Office of Singapore

Hearing Officer: Mr. Gabriel Tan, Principal Assistant Registrar (PAR)

Decision Date: 11 March 2022

Hotel Cipriani S.P.A. (“Opponent”) is the operator of Belmond Hotel Cipriani, a high-end luxury hotel in Venice, Italy. The Opponent also licenses “HOTEL CIPRIANI” and “CIPRIANI” to other members of the Belmond Group to operate restaurants and bars under those names. including a “RISTORANTE VILLA CIPRIANI” at Belmond Reid’s Palace hotel in Madeira, a “RISTORANTE HOTEL CIPRIANI” at Belmond Copacabana Palace hotel in Rio de Janeiro (awarded 1 Michelin star in 2019), “CIP’S BY CIPRIANI” at Belmond Cap Juluca, Anguilla, and “DELIZIE BY CIPRIANI” at Belmond Grand Hotel Europe, St. Petersburg, Russia. Hotel Cipriani itself is home to “CIP’s CLUB” (“CIP” being a contraction of “CIPRIANI”), a restaurant with a terrace overlooking the Venice lagoon.

On 1 March 2019 (“Relevant Date”), Altunis – Trading, Gestão E Serviços, Sociedade Unipessoal, LDA (“Applicant”), a Portuguese company, applied to register trade mark number 40201904595S (“Application Mark”) in Class 43 in Singapore in respect of “[s]ervices for providing food and drink; temporary accommodation; restaurants; bars; catering (food and drink-); hotels; motels; hotels reservations” (“Application Services”). An image of the Application Mark is depicted below:

On 14 October 2019, the Opponent filed opposition to the Application Mark under ss 8(7)(a) – “passing off”, 8(4)(b)(i) – “well-known mark”, 7(6) – “bad faith” of the Trade Marks Act (Cap 332, Rev. Ed. 2005)(“TMA”).

The Opponent does not have prior registered trade marks in Singapore. The Opponent sought to protect its unregistered rights in connection with “HOTEL CIPRIANI” and “CIPRIANI”. The Applicant has several registered trade marks from 2011 that are currently registered and subsisting including the “Cipriani” word mark T1102722H in Class 35 for “Business management of hotels” and T1102448B in Class 36 for “Leasing and rental of apartments, homes and condominiums” as well as various real estate services. The Applicant also has “” (“CIPRIANI bartender logo mark”) registered and subsisting, also filed in 2011 including T1102505E in Class 36 for “Leasing and rental of apartments, homes and condominiums” as well as various real estate services. 

The Opponent had previously applied to revoke “CIPRIANI word mark” – T1111568B & T1102503I and “CIPRIANI bartender logo” marks T1111569J & T1102450D by the Applicant and was successful due to the non-response from the proprietor in each case. 

For the Opponent to succeed under an action of passing off, it’s trite that the Opponent has to establish the elements of i)goodwill, ii)misrepresentation and iii) damage at the relevant date. 

Goodwill

The PAR found the Opponent had actual customers in Singapore between 2014-2019 corroborated by extracts from Opponent’s reservations system. There was a reservation office in Singapore and customers from Singapore can access the Hotel Cipriani from Belmond Group website. Customers were also able to access Belmond Hotel Cipriani through credit card concierge services such as AMX Centurion Travel Service, American Express Fine Hotels and Resorts Programme as well as tour agencies (targeted advertising).

Online booking websites such as expedia and booking.com were accessible to customers (indirect advertising) in Singapore as well. It was also found that the Opponent promoted Hotel Cipriani in Singapore as early as 2012. It was advertised to the public in Singapore including over the internet and traditional media. The PAR found “Hotel Cipriani” or “Cipriani” met the requisite goodwill at the Relevant Date. 

Misrepresentation

The PAR took the view that the “Hotel Cipriani” and “Cipriani” were inherently distinctive of the Opponent’s hotel services at the Relevant Date because:

1. Cipriani is an Italian name and would not be widely familiar in Singapore
2. Cipriani has no dictionary meaning in English that would describe the services in question in any way

With the exposure of “Hotel Cipriani” and “Cipriani” to the public in Singapore through various media, the PAR took the view that the relevant public would identify “Hotel Cipriani” and “Cipriani” with the Opponent and hence the association at the Relevant Date.

In contrast, there was no evidence at the Relevant Date, the public in Singapore would associate the distinctive “Cipriani” sign with the Applicant or the Cipriani Group. 

Misrepresentation as to the origin or trade connection – Likelihood of confusion

The issue to be determined was whether, in the circumstances, the relevant public would likely be confused into thinking that the Application Services offered under the Application Mark originate from or are commercially connected with the Opponent, noting that “Cipriani” has been found to distinctive of the Opponent’s hotel services. There was no dispute that the services offered by the Opponent and the Application services overlap.

The PAR took the view that the distinctive component in the Application Mark was “Cipriani” in respect of the Application services. The bartender device made a strong visual impression and would not be regarded as distinctive in relation to the Application services. On balance, the PAR viewed that the relevant segment of the public comprising actual and potential customers would likely be confused by the “Cipriani” element common in the competing marks. The element of misrepresentation was established.

Damage

On the element of damage, the Opponent claimed that damage would arise in the form of diversion of sales to the Applicant and blurring. Actual damage need not be proven. Blurring occurs when the business, goods or services of the parties are in competition with or are at least substitutes for each other. The damage in the case of blurring manifests itself in sales being diverted from the claimant to the defendant. (See Amanresorts^[1] at [97].) With the element of misrepresentation made out, the sales would likely be diverted to the Applicant and the element of damage was established.

With all three elements made out, the ground of opposition under s 8(7)(a) was established.

Well-Known Mark

As for the ground of opposition under s 8(4)(b)(i), the Opponent has to establish that “Hotel Cipriani” and/or “Cipriani” were well known at the Relevant Date such that the use of the Application Mark in relation to Application Services would indicate a connection between those services and the Opponent and such connection would damage the Opponent’s interest. 

With the likelihood of confusion made out earlier, the issue to be determined under this ground of opposition would be if the Opponent’s “Hotel Cipriani” and/or “Cipriani” met the requisite threshold of being “well-known” to the public in Singapore at the Relevant Date.

The PAR noted the relevant sector to be high-income (or high spending) individuals who have stayed at the Hotel Cipriani or who would have been exposed to the Opponent’s advertising as well as once-in-a-lifetime guests aspirants, having referred to Amanresorts. The people and businesses involved in the sales and distribution of the Opponent’s services and third parties such as American Express, travel agencies were also referred as the relevant sectors of the public. Once the mark is well-known in a relevant sector in Singapore, it’s considered well known to the public in Singapore. The PAR found “Hotel Cipriani” and “Cipriani” met the requisite threshold of  being well-known marks to the public in Singapore at the Relevant Date. The ground of opposition under s 8(4)(a)(i) was made out. 

Bad Faith 

The PAR noted that the 1967 agreement between the parties gave Cipriani family rights to use Cipriani for their businesses and that the Applicant had earlier successfully registered trade marks in Singapore with “Cipriani” and “Cipriani bartender logos” in various classes of goods and services. Having reviewed the background of the disputes extensively in various jurisdictions and decisions going both ways, the PAR did not take the view that ordinary persons in the trade adopting proper standards would regard the Application Mark as having been applied for in circumstances that were dishonest or commercially unacceptable. The ground of opposition under s 7(6) was not made out. 

The trade mark application was refused registration.

Disclaimer: The above is provided to assist in the understanding of the decision by the Registrar at the Intellectual Property Office of Singapore. It should not be relied upon as legal advice. Any errors or omissions are the author’s. For queries related to the article, please contact the author here.

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^[1] Novelty Pte Ltd v Amanresorts Ltd [2009] 3 SLR(R) 216