The Italian fashion designer Elio Fiorucci enjoyed victory at last when the Court of Justice of the European Union confirmed that, where national law permits, an individual can prevent the use of his name as a Community trade mark even if that name has already been commercially exploited.

By contrast, in a previous ECJ decision, ELIZABETH EMANUEL, the ECJ held that where a person had previously exploited their name commercially, the registration would not become misleading, and therefore revocable, on the grounds that the person was no longer involved in that commercial activity.  This decision offers a new opportunity for people whose names are registered as trade marks to revoke such registrations.  However, it will be of concern to assignees of such trade marks, who will understandably consider that, where an assignment includes a trade mark consisting of a personal name, the assignor should be taken as having consented to the continued registration of that name.

Article 52(2) of Regulation 40/94 on the Community trade mark, as amended by Council Regulation (EC) No 422/2004, states under the heading “Relative grounds for invalidity”:

“A Community trade mark shall also be declared invalid on application to [OHIM] or on the basis of a counterclaim in infringement proceedings where the use of such trade mark may be prohibited pursuant to another earlier right, and in particular:

(a) a right to a name; (b) a right of personal portrayal; (c) a copyright; (d) an industrial property right,

under the Community legislation or national law governing the protection.”

This was implemented in Italy as Article 8(3) of the Industrial Property Code (IPC), which was the key provision in considering the validity of the trade mark ELIO FIORUCCI.

Background

Fashion designer Elio Fiorucci enjoyed success in Italy in the 1970s but faced financial difficulties in the 1980s, and his company went into administration.  In December 1990, a Japanese company named Edwin bought all of his company’s “creative assets”, including trade marks and the designation “FIORUCCI”.

Proceedings

In December 1997, Edwin applied to register the word mark ELIO FIORUCCI as a Community Trade Mark; registration was granted in April 1999.  In February 2003, Fiorucci sought revocation and/or a declaration of invalidity.

The Cancellation Division agreed with Fiorucci and declared the mark invalid in December 2004, stating that Fiorucci had an earlier right under what is now Article 8(3) of the IPC.  The reasoning behind this lay in the fact that ELIO FIORUCCI was already a well known name and Fiorucci had not given his consent as to the registration of the Community Trade Mark.

Edwin appealed to the First Board of Appeal, which annulled the decision of the Cancellation Division, stating that the raison d’être of Article 8(3) had not been properly considered.  As Fiorucci’s name had already been exploited, the Board decided that Article 8(3) did not apply, and that the public would not assume that the ELIO FIORUCCI Community trade mark corresponded to Elio Fiorucci personally.  In particular, the Board found that the raison d’être of Article 8(3) was to prevent third parties from exploiting for commercial purposes names that had become famous for non-commercial reasons; that raison d’être therefore fell away where, as in this case, the commercial potential of a name had already been fully exploited.  The Board acknowledged that there was no direct case law on this point but based its decision on Italian academic authorities.

The Board also considered it highly relevant that Fiorucci had waived his rights to the marks when his company was sold.

The General Court

Elio Fiorucci appealed to the General Court of the CJEU, seeking annulment of the Board’s decision and a declaration of revocation and/or invalidity of the Community trade mark.  The General Court refused the plea for revocation, as it did not believe there was any likelihood of the public being misled nor was there evidence of any misleading use of the mark.

However, the General Court concluded that the Board had been in error when considering the application of Article 8(3).  The fact that Fiorucci’s name was already well known was not a reason to not apply Article 8(3), as the name could nonetheless be used for new registrations for different goods or services.  The General Court also did not agree that the academic writings which had been cited by the Board supported the view that Article 8(3) should not apply in this situation.

The General Court therefore annulled the Board’s decision on the basis of its error in not applying Article 8(3).  The General Court did not consider, however, Edwin’s argument that any of Fiorucci’s trademark rights had been waived in the sale of the creative assets to Edwin, as this element had not been considered by the Board and the General Court therefore did not have the power to consider this issue.

Not prepared to abandon hope for its mark, Edwin contested the judgment under appeal in front of the Court of Justice, suggesting that part of the argument be referred to the Office of Harmonization for the Internal Market (OHIM).  OHIM concurred with Edwin’s views and advised that the judgment under appeal should be set aside and that Fiorucci should be ordered to pay the costs incurred by it.  Fiorucci in turn argued that parts of the judgment should be upheld, while other parts should be amended in his favour, and that he should be reimbursed for his costs.  

Decision of the Court of Justice

The Court of Justice confirmed the General Court’s decision that an individual’s right to have a registration declared invalid on the basis of their right to a name, as protected under Article 8(3) in Italy, does not fall away because the name has already been commercially exploited.  The right extends to names which have already had commercial exploitation.

Application

In confirming that Article 8(3) allowed Fiorucci to protect his own name, the Court of Justice has shown that national law will permit an individual to prevent the use of his name as a Community trade mark.

In 2006, a similar dispute over an individual’s name arose in the UK in Elizabeth Emanuel v Continental Shelf, which was also referred to the European Court of Justice (as it was then).  Elizabeth Emanuel, a prominent wedding dress designer who is known for designing Princess Diana’s wedding, tried to prevent Continental from using her name following on from a sale of her business to them.  Emanuel was unsuccessful in her application for revocation of her name as a trade mark.  In that case, the ECJ reasoned that the registration was valid because the public was not being misled. 

Ms Emanuel’s application was made on the basis that the use of her name, after she had ceased to be involved with the products bearing it, was deceptive.  This was a different question of law from that raised by Elio Fiorucci’s application, which was based on his earlier right to a personal name.  However, the ECJ’s decision that, even though the public would not be misled, the Article 8(3) grounds for invalidation still applied, offers an alternative means for individuals to invalidate trade mark registrations of their personal names.  In the meantime, assignees of trade marks consisting of personal names would be advised to obtain an irrevocable undertaking from the person whose name is the subject of the trade mark that they will not seek to invalidate or revoke the registration.