Intellectual Property

Community Trademarks and Italian Protection of Well-Known Names: The Elio Fiorucci Case

The decision handed out on July 5, 2011, by the European Court of Justice, in case C-263/09, is the latest stage of the hard-fought dispute between the Japanese multinational company Edwin and the well-known Italian fashion designer Elio Fiorucci, over both the registration and use of the names "Elio Fiorucci" and "Fiorucci."

This is the last chapter of a dispute which dates back to the nineties, when Edwin bought all IP assets - including the trademark "Fiorucci" - at that time owned by Fiorucci S.p.A., an Italian company set up by Mr. Fiorucci - who had already achieved a certain degree of reputation as a fashion designer - which was facing bankruptcy.  This purchase has given rise to a number of proceedings all over the world.

In 2003 Mr. Fiorucci filed an application for both revocation and invalidity of Edwin's word mark "Elio Fiorucci" - applied for on December 23, 1997 and registered on April 6, 1999 - based, respectively, on Articles 50(1)(c) and 52(2)(a) of Regulation (EC) No. 94/94 on the Community trademark (the "CTM Regulation") [now Articles 51(1)(c) and 53(2)(a) of Regulation (EC) No. 207/2009].

Mr. Fiorucci's revocation claim based on Articles 50(1)(c) CTM Regulation was rejected on the basis that, in the absence of evidence showing any use whatsoever of the mark "Elio Fiorucci" on the part of Edwin, "there could be no question of use liable to mislead the public" (see point 19, ECJ decision).

The proceedings therefore mainly focused on the scope of Article 52(2)(a) CTM Regulation, according to which "[a] Community trade mark shall also be declared invalid ... where the use of such trade mark may be prohibited pursuant to another earlier right, and in particular: (a) a right to a name ... under the Community legislation or national law governing the protection;" and on the interpretation to be given to Article 8(3) of the Italian Industrial Property Code (Codice della Proprietà Industriale: the "CPI") - i.e., the rule of national law relevant to the case at issue - that in the wording in place when these proceedings started provided that "[i]f they are well-known, the following may be registered as a trademark only by the right holder, or with the right holder's consent ...: personal names, signs used in the artistic, literary, scientific, political and sporting fields, the designations and acronyms of events and those of non-profit making bodies and associations, including their characteristic emblems."

By decision of December 23, 2004, the Cancellation Division of OHIM, taking the view that Article 8 CPI was applicable to the dispute by the reference made in Article 52(2)(a) CTM Regulation, declared Edwin's CTM to be invalid as it was established that the name Elio Fiorucci was well known and there was no evidence that Edwin had been authorized by Mr. Fiorucci to register such name as a Community trademark. 

Edwin then brought an appeal against this decision.  On April 6, 2006, the First Board of Appeal of OIHM reversed the Cancellation Division's decision, holding that the ground of invalidity referred to in Article 52(2)(a) CTM Regulation did not apply to the case at issue, as such case did not fall within those contemplated under Article 8(3) CPI.  Unlike the Cancellation Division, in its analysis the Board took the view that Article 8(3) CPI applies only to names of persons, whose reputation had been achieved in a non commercial sector, giving them the right to commercially exploit the evocative power of the their name by way of registering and/or using such name as a trademark.  Consequently, having found that "the renown of Elio Fiorucci as a cultural figure was direct result of the renown of Elio Fiorucci as a fashion designer an therefore of his commercial activity" (see point 11, Court of First Instance decision), the Board concluded that Mr. Fiorucci's personal name was not entitled to the protection of Article 8(3) CPI.

Mr. Fiorucci appealed this decision before he European Court of First Instance (case T-165/06).  With decision handed down on May 14, 2009, the Court, pointing out that the decision under appeal contained an error of law as "the interpretation of Article 8(3) of the [CPI] adopted by the Board of Appeal is not confirmed by the wording of that provision," annulled such decision in part. 

Hence, the ECJ - with the decision at stake - upheld the judgment of the Court of First Instance, which had been appealed by Edwin.

In its reasoning, the ECJ firstly determined whether the expression "right to a name" in Article 52(2)(a) should be read - as Edwin maintained - restrictively, as a reference made only to an attribute of personality.  In this respect, the ECJ pointed out that the wording "right to a name" per se does not support such restrictive interpretation.  Moreover, the Court stressed that Edwin's thesis was inconsistent with the structure of Article 52(2), which lists, among the earlier rights that may affect a subsequent Community trademark, also rights which clearly protects economic interests, such as industrial property rights and copyright.

Based on this, the ECJ concluded that "[i]t follows that, contrary to what the appellant maintains, the wording and structure of Article 52(2) of Regulation No 40/94 do not, where a right to a name is asserted, allow application of that provision to be restricted merely to situations where the registration of a Community trade mark conflicts with a right intended exclusively to protect a name as an attribute of the personality of the person concerned," consequently holding that "the General Court cannot be criticised for making an error of law in the interpretation of Article 52(2)(a) of Regulation No 40/94" (see points 36 and 37, ECJ decision).

The ECJ then focused on the interpretation of Article 8(3) CPI.  In this respect, in accordance with the First Instance decision, it concluded that Article 8(3) CPI "does not lay down any condition other than that the personal name concerned must be well known," pointing out that the wording of such article "makes no distinction according to the sector in which that renown was acquired" nor does it exclude "the application of that provision where the name of a well-known person has already been registered or used as a trade mark" (see point 56, ECJ decision).

Therefore, the ECJ upheld the First Instance decision, ruling that "the proprietor of a well-known name is entitled to prevent the use of that name as a trade mark where he maintains that he has not given his consent to registration of that mark" (see point 57, ECJ decision).

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