Fashion Designer Allowed to Prevent Use of His Name as Community Trademark, Despite Having Sold All Trademark Rights

Ruling on the proper interpretation of national legal provisions in invalidity proceedings, the Court of Justice of the European Union (CJEU) held that the holder of a name is entitled to prevent its use as a Community trademark where national law permits.  The economic aspects of a right to a name may also be protected. Edwin Co. Ltd. v. Elio Fiorucci, Case C-263/09 (CJEU July 5, 2011).

Fiorucci SpA, an Italian company set up by fashion designer Elio Fiorucci, sold the entirety of its “creative assets,” including all the trademarks which it owned (among which were numerous marks containing FIORUCCI), to Japanese clothing company Edwin in 1990.  In 1999, on application by Edwin, the Office for Harmonisation in the Internal Market (OHIM) registered the word mark ELIO FIORUCCI for goods in classes 3, 18 and 25.  In 2003, 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 Community Trade Mark Regulation (CTM Regulation) (40/94/EEC, now replaced by 2009/207/EC).

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), Fiorucci’s consent was required for the registration of his name as a Community trademark 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 Fiorucci could therefore not rely on this provision.  The Appeal Board rejected Fiorucci’s application for revocation. 

The EU General Court also rejected Fiorucci’s revocation action but ruled in his favor in relation to the invalidity action, stating that there was no justification for excluding the provision of the CPI if the name of a well-known person had been registered or used as a trademark.  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 CECJ 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 Community trademark 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 Community trademark where he has not given consent to its registration as a trademark and where national law so permits. 

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

Practice Note:  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 trademarks from Fiorucci in the 1990s, Edwin would probably not have imagined that more than 10 years later Fiorucci would rely on Italian national law to protect his naming rights.