Ruling on the proper interpretation of national legal provisions in invalidity proceedings (Edwin Co Ltd v Elio Fiorucci C- 263/09), the Court of Justice of the European Union (CJEU) has held that the holder of a name is entitled to prevent its use as a Community trade mark (CTM) where national law permits. The economic aspects of a right to a name may also be protected.

Background

Fiorucci SpA, an Italian company set up by fashion designer Elio Fiorucci, sold to Japanese clothing company Edwin the entirety of its “creative assets”, including all the trade marks it owned (among which were numerous marks containing FIORUCCI), in 1990. In 1999, on application by Edwin, the Office of Harmonization for the Internal Market (OHIM) registered the word mark ELIO FIORUCCI for goods in Classes 3, 18 and 25. In 2003, Mr Fiorucci filed an application for revocation and an application for a declaration of invalidity of the mark under Articles 50(1)(c) and 52(2)(a) of the CTM Regulation (40/94/EEC, now replaced by 2009/207/EC).

Decision

The Cancellation Division of OHIM allowed the application for a declaration of invalidity on the basis that, according to Article 8(3) of the Italian Industrial Property Code (CPI), Mr Fiorucci’s consent was required for the registration of his name as a CTM and that no such consent had been given. The Cancellation Division did not rule on the application for revocation. The OHIM Board of Appeal annulled the decision, finding that this situation did not fall within the scope of Article 8(3) CPI because its purpose was to prevent third parties from exploiting for commercial purposes the name of a person who had become famous in a non-commercial sector and that Mr Fiorucci could therefore not rely on this provision. The Appeal Board rejected Mr Fiorucci’s application for revocation.

The EU General Court also rejected Mr Fiorucci’s revocation action but ruled in his favour in relation to the invalidity action, stating that there was no justification for excluding the provision of the CPI where the name of a well-known person had been registered or used as a trade mark. However, the Court did not grant a declaration of invalidity as to do so would usurp the role of OHIM. Edwin appealed to the CJEU.

Dismissing Edwin’s appeal, the CJEU held that the wording and structure of Article 52(2) of the Regulation did not, where a right to a name was claimed, restrict the provision so that it merely protected the personality interests of individuals. The CJEU said that it was clear from the wording of the provision—which provides a non-exhaustive list of four examples on the basis of which a CTM may be declared invalid—that the rights cited were intended to protect interests of different types. The CJEU found that the definition of “right to a name” covered commercial use of a name. It also held that the right to a name may be relied upon to protect a name as an aspect of personality as well as its economic aspects. In doing so, the CJEU upheld the General Court’s decision that the holder of a name is entitled to prevent its use as a CTM where he has not given consent to its registration as a trade mark and where national law so permits.

The CJEU also confirmed that the General Court has jurisdiction to review the legality of OHIM’s decisions.

Comment

The decision illustrates the complexities and uncertainties that can arise when proceedings are based on rights arising under national law. Having acquired the business and trade marks from Fiorucci SpA in the 1990s, Edwin would probably not have imagined that more than 10 years later Mr Fiorucci would rely on Italian national law to protect his naming rights.