Background

In the Fiorucci v Office of Harmonization for the Internal Market (OHIM)- Edwin (ELIO FIORUCCI) (T-165/06) case, the Court of First Instance (CFI) considered whether the use by a third party of a trade mark consisting of the first name and surname of Italian designer Elio Fiorucci would mislead the public where the third party has already acquired the rights to use the designer's surname. The case also considers the protection of famous names under Italian law.

In the early 1990's, Mr Fiorucci's company sold the entirety of its "creative assets" to a third party Edwin & Co Ltd. (Edwin), including all trade marks and "all the rights exclusively to use the designation 'FIORUCCI'". Edwin applied for a Community Trade Mark for the word mark 'ELIO FIORUCCI' in respect of a series of goods [falling within Classes 3, 18 and 25]. This mark was registered on 6 April 1999. In 2003, Mr Fiorucci sought revocation of the mark under Article 50(1)(c) and Article 52(2)(a) of Council Regulation No 40/94.

Article 50(1)(c) allows for revocation where, as a consequence of use by the proprietor, the trade mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of goods and services.

Article 52(2)(a) allows a mark to be declared invalid, on application by an interested party, if its use can be prohibited pursuant to a right to a name protected by national law. In this case the relevant national law cited was Article 8(3) Codice della Proprieta Industriale (Italian Industrial Property Code) which provides:

"If they are well known, the following may [only] be registered as a trade mark by the proprietor, or with the consent of the latter... personal names, signs used in the artistic, literary, scientific, political or sporting fields, the designations and acronyms of events and those of non-profit making bodies and associations, including their characteristic emblems."

The trade mark was invalidated by the Cancellation Division. That decision was then annulled by the Board of Appeal.

Outcome

The Application for Revocation under Article 50(1)(c)

Upholding the ruling of the Board of Appeal, the CFI dismissed Mr Fiorucci's argument that the mark ELIO FIORUCCI is in itself liable to mislead the public. Applying the findings of the ECJ in Emanuel (Case C-259/04 [2006] ECR I-3089) the CFI found that:

"a trade mark corresponding to a first name and to the family name of the designer and the first manufacturer of the goods bearing that mark is not, by reason of that particular feature alone, liable to revocation on the ground that the mark would mislead the public, where the proprietor of that mark has lawfully acquired, by assignment, a mark consisting of just the family name of the designer and all the creative assets of the business."

The CFI also rejected Mr Fiorucci's argument that use of the mark would be deceptive and would mislead the public as to the stylistic origins of the goods on the grounds that misleading use of the mark after registration had not been proven.

The Application for a Declaration of invalidity in under Article 52(2)(a)

The CFI, however, annulled the Board of Appeal's decision in so far as it contained an error of law in the interpretation of Article 8(3) of the Codice della Proprieta Industriale. The Board of Appeal had found that this Italian provision only applies where the renown attached to a person's name results from a "first use outside the market" and therefore does not apply where someone has already registered or consented to the registration of their name (in other words had made commercial use of the name).

The CFI Instance disagreed noting that:

  • there is nothing in the wording of Article 8(3) which makes any distinction as to the sector in which the renown was acquired. The only requirement of the wording of the provision is that the name be well known. There was also little academic support for the Board of Appeal's conclusions (and no applicable case law).
  • Furthermore, it was not disputed that Mr Fiorucci also enjoyed renown in fields "outside the market" (if this was a requirement of Article 8(3)) through his artistic, cultural and charitable activities. Even if that renown came later than, or arose out of, renown in the commercial sector, this would not preclude protection of the non-commercial renown.

Comment

This is another case where the courts have considered the protection granted to famous names and provided guidance, in particular, on the use of patronymics.

The CFI makes it clear that the public are aware that "behind every patronymic mark, there is not necessarily a fashion designer of that name".

However, as here, national laws may apply to offer greater protection for famous names. Companies wishing to register a Community Trade Mark for a famous Italian name will need to be aware that, under Italian law, personal names may only be registered with the proprietor's consent.

Although the Board of Appeal's decision was annulled in part, the appellant's (Mr Fiorucci's) application under Article 52(2)(a) and Article 8(3) of the Codice della Proprieta Industriale for a declaration of invalidity will need to be reconsidered by the Office of Harmonization for the Internal Market before it is determined whether or not the mark should remain on the register.