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Sunday, 17 May 2009

CFI rules in Elio Fiorucci dispute

The CFI has delivered its judgment in Elio Fiorucci v OHIM, a case concerning the ability of a designer who assigns his business and related IP to another company, to object when that other company tries to register his name as a Community trade mark.

Elio Fiorucci effectively sold all of his IP rights and all the rights exclusively to use the designation “FIORUCCI” and exclusively to manufacture and sell the clothes and other goods bearing the name “FIORUCCI” to Edwin & Co Ltd in 1990. In 1997, Edwin applied to register ELIO FIORUCCI as a CTM in Classes 3, 18 and 25. The CTM was registered in 1999, but in 2003 Fiorucci applied to have the mark invalidated under Art.51(1)(c) and Art.52(2) CTMR. The mark was invalidated by the Cancellation Division, but that decison was annulled by the Board of Appeal. The designer appealed to the CFI.

The CFI partially annulled the decision.

The Art.51(1)(c) case was a textbook application of Elizabeth Emanuel. The public is used to businesses being conducted under the names of designers, even when the designers are no longer involved. Thus neither the mark itself, nor its use by Edwin, was liable to mislead the public, as the Board had correctly found.

The Art.52(2)(a) case was more complicated. This article allows for marks to be invalidated when their registration would be prohibited under national laws regarding the protection of personal names. Article 8(3) of the Italian Codice della Proprietà Industrial states that ‘If they are well known, the following may be registered as a trade mark by the proprietor, or with the consent of the latter or of the persons referred to in paragraph 1: personal names...’ The Board said that this did not apply here because it applied only where the renown attached to a person’s name results from a ‘first use outside the market’, which was not the case with regard to the applicant’s name.

The Board was in a difficult position here as there was no case law on the provision. However, the CFI found that it had erred.

The Board's decision made a distinction between different sectors that was not to be found in the Italian Act, and was unworkable. Even if the name had been used or registered as a trade mark, Article 8(3) could still apply, particularly because the name could be the subject of an additional registration in an different class of goods or services. Also, learned writings from Italian commentators did not support the Board's position. Finally, Mr Fiorucci had gained a reputation outside the commercial field by virtue of his cultural persuits.

The IPKat can't help but feel sorry for the Board of Appeal here, since it had to interpret a provision of national law which appears to have been the subject of very little previous litigation.

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