Elio Fiorucci v OHIM; Edwin Co. Ltd (CFI (Fifth Chamber); T-165/06; 14.05.09)

Elio Fiorucci was a fashion designer who achieved certain renown in the 1970s in Italy. Following financial difficulties, an administrator was appointed in respect of his company, Fiorucci SpA, and the entirety of the company’s assets were transferred to Edwin Co. Ltd. For several years Fiorucci and Edwin collaborated.

Edwin registered ELIO FIORUCCI as a CTM for a range of goods in Classes 3, 18 and 25 and some years later Fiorucci applied for revocation of the mark under Article 50(1)(c) and a declaration of invalidity under Article 52(2)(a). The cancellation division allowed the application under Article 52(2)(a) without finding it necessary to rule on Article 50(1)(c). Edwin successfully appealed to the BoA which held that Article 52(2)(a) did not apply. The alleged infringement under Article 50(1)(c) was also rejected. Fiorucci appealed to the CFI. The CFI rejected the appeal under Article 50(1)(c) but allowed the appeal under 52(2)(a).

Article 50(1)(c)

The CFI held that, ELIO FIORUCCI, was not, of itself, liable to mislead the public as to the origin of the goods for which it was registered. Further, because there was no evidence of the public being misled by the use of the mark since registration, the CFI held that the mark should not be revoked under Article 50(1)(c).

The CFI referred to the ECJ’s decision in Emanuel (C-259/04). Just because a trade mark corresponds to the name of the designer and first manufacturer of the goods bearing that mark, it does not mean that the mark is liable to mislead the public, particularly where the goodwill associated with the mark has been assigned. That conclusion still held where only the family name of the designer had been assigned and not the first name but where the mark consisted of both the family name and the first name.

Furthermore, even if the average consumer might be influenced in his act of purchasing the goods by imagining that the person to whose name the mark corresponded was involved in its design, the characteristics and the qualities of the product remained guaranteed by the undertaking which owned the trade mark.

Article 52(2)(a)

Under Article 52(2)(a) OHIM may declare a CTM to be invalid if its use can be prohibited by a national law. The relevant national law in this instance (Article 8(3) of the Codice della Proprietá Industriale) provided that, if they are well known, personal names may be registered as trade marks by the proprietor or with his consent.

The CFI rejected the BoA’s findings that the Italian provision:

(i) was not applicable because it applied only where the renown attached to a person’s name resulted from a ‘first use outside the market’; and

(ii) allowed a controlled (i.e., subject to the consent of the person concerned) migration of a patronymic from the field (of politics, sport etc) in which he was hitherto famous to the purely commercial sector.

The Italian provision did not lay down any condition other than that relating to the well known character of the personal name concerned. The BoA committed an error of law in its interpretation of the Italian provision. As a result of that error it (incorrectly) ruled out the application of that provision to Fiorucci’s name, even though it was not disputed that it was the name of a well known person.

The CFI therefore annulled the BoA’s decision. However, the CFI did not grant the declaration sought by Fiorucci because it would ‘upset’ the institutional balance on which the division of jurisdiction between OHIM and the CFI was based.