The Court of Justice of the European Union (CJEU) upheld the General Court's decision on the case Edwin Co v. Elio Fiorucci, stating that the holder of a well-known personal name is entitled to prevent its use as a Community trademark, where there are national laws in place supporting this level of protection. This important decision came up at the end of a long proceeding in which Mr. Fiorucci attempted to protect the personal ownership of his name.
In 1990, the well-known Italian fashion designer Elio Fiorucci, founder of the fashion brand Fiorucci S.p.A., sold its company and all of its creative assets to the Tokyo Company Edwin Co. Ltd. Such sale encompassed all the Fiorucci trademarks, including numerous marks containing the element “FIORUCCI.”
Few years later, Edwin Co. filed an application with the Office for Harmonization for the Internal Market (OHIM), to register the mark “ELIO FIORUCCI” for a broad category of goods, including cosmetics, apparel, footwear and leather products. As a consequnce, Mr. Fiorucci filed an application for revocation and declaration of invalidity of the mark “ELIO FIORUCCI” with the Cancellation Division of OHIM pursuant to Italian law. The OHIM Cancellation Division dismissed the application for revocation but granted the application for declaration of invalidity relying on Section 8(3) of the Italian Industrial Property Code (IIPC) which states: “If they are well known, the following may 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 field . . .” The Cancellation Division stated that, in order to register Mr. Fiorucci's name as a Community trademark, Edwin Co. should have obtained the prior consent of the name’s holder.
Nothwistanding the OHIM’s First Board of Appeal annulled the first decision arguing that “this situation did not fall within the scope of Article 8(3) of IIPC whose purpose is to prevent third parties from exploiting for commercial purposes the name of a person who had become famous in a non-commercial sector and is not applicable to this hypothesis”, the General Court then rejected such Board of Appeal’s findings.
As a final confirmation, the CJEU upheld that OHIM may declare a Community trademark to be invalid, on application by the interested party, if its use can be prohibited pursuant to the right to a name, as it is protected by national law (which in this case, was Italian law).
Do you want to discuss the above? Feel free to contact me, Stefania Baldazzi (stefania.baldazzi@dlapiper.com)