In our earlier blog piece Fashion Industry. Fiorucci. Use of own name we wrote about Mr Fiorucci, a fashion designer who had achieved certain renown in Italy during the 1970s. This is an update on the progress of that case, which has made its way from OHIM, through the Board of Appeal, to the General Court and eventually landed in the European Court of Justice, which recently rendered its decision.
In 1990, due to some cash problems, he sold his company, Fiorucci SpA, to Edwin Co. Ltd, a Japanese Multinational, along with its entire creative assets including all the trademarks it owned and “all the rights exclusively to use the designation ‘FIORUCCI’”.
Subsequently, Edwin registered as an EU word mark the name ELIO FIORUCCI. However in 2003, Mr Fiorucci brought an action to invalidate this registration on the grounds of his right to the name under a national law. The Cancellation Division duly declared the ELIO FIORUCCI community trademark invalid holding that Elio Fiorucci had an earlier right under Italian laws. These laws stipulated that well known personal names may be registered as a trade mark only by, or with the consent of that person. In this case, the ELIO FIORUCCI mark had been well known, and no such consent had been given.
That decision was then annulled by the Board of Appeal, who held that his situation did not fall within the scope of the Italian regulations, which were designed to prevent third parties from exploiting for commercial purposes the name of a person who had become well known for non-commercial activities. As Mr Fiorucci’s name was renowned as a result of commercial activity the Board found that the rule did not apply.
Fiorucci took the case to the General Court, hoping to have this decision set aside, and the registration revoked or declared invalid. The Court refused to revoke the registration on the basis that it was likely to mislead consumers. However, it did reject the Board’s view that the situation fell outside the scope of the Italian regulations, on the basis that the wording of the national law does not require renown to derive from non-entrepreneurial activity. The effect was merely to set aside the decision of the Board of Appeal, and leave standing the Cancellation Division’s declaration of invalidity.
The General Court’s interpretation of this national law has now been upheld by the European Court of Justice following appeal by Edwin. The ECJ rejected Edwin’s argument that the right to a name under the Italian law was limited to its protection as an attribute of personality, holding that the provision may be relied upon as a right to commercial exploitation of a name.
It is interesting to note that Elio’s case might have reached a different outcome if the Board of Appeal had examined Edwin’s argument that they were assigned trademark rights in the name ELIO FIORUCCI. As the Board did not do so, the ECJ found that the General Court was correct in not dealing with this question, as it was not within the Court’s power to substitute its own reasoning on issues where the Board of Appeal had not adopted a position.
Important points to take away from this case include:
- The holder of rights to a name is entitled to prevent its use as a Community trade mark where national law so permits.
- If there is to be an assignment of trademark rights in some elements of a personal name, like in Elio’s case (FIORUCCI), then the extent of that assignment should be made very clear, for example whether the assignment extends to the full name of that person.
- Provided that the essential function of a trademark is maintained (i.e. to guarantee the nature, quality or origin of goods or services), and there is no likelihood of deceiving consumers, then an individual is unlikely to succeed in securing revocation of a trademark for their personal name which was assigned earlier to another business now owning the mark.