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Tuesday, 1 February 2011

Elio, Edwin in tug-of-love over FIORUCCI name

No joke -- this is a Fiorucci swimsuit
Litigation over personal names is obviously a popular activity in Europe these days. No sooner does the dust settle over the ruling of the European Court of Justice in Sayn-Wittgenstein (see earlier IPKat items here, here and here) then out pops the strange and wonderful case of Case C-263/09 P Edwin Co Ltd (for that is its name).  The background to this case is that Italian fashion designer Elio Fiorucci, who achieved a degree of renown in the 1970s in Italy, ran into cash problems in the 1980s. An administrator was appointed over his company, Fiorucci SpA. In December 1990 this company sold to Edwin (a Japanese multinational) the entirety of the company’s “creative assets”. Article 1 of the contract provided as follows:
“The company Fiorucci assigns, sells and transfers to the company Edwin … which, for its part, acquires:
– (i) trade marks wherever registered, or trade marks for which registration has been sought in any part of the world whatsoever, and all patents, ornamental and utility models and all other distinctive signs belonging to the company Fiorucci as listed in the annex to this contract ...
– (iv) all the rights exclusively to use the designation “FIORUCCI” and exclusively to manufacture and sell the clothes and other goods bearing the name “FIORUCCI”.
13 years ago, in December 1997, Edwin applied to register the word mark ELIO FIORUCCI as a Community trade mark; registration was granted in April 1999 and all looked good for the Japanese company until February 2003, when Elio Fiorucci sought revocation and/or a declaration of invalidity.  In December 2004 he got his way: the Cancellation Division declared the mark invalid.  Said the Cancellation Division, Elio Fiorucci had an earlier right under what is now Article 8(3) of the Italian Industrial Property Code) because the name Elio Fiorucci was shown to be well known and there was no evidence that Elio had given his consent to registration of that name as a Community trade mark [that contract was made with Edwin by Fiorucci's company -- but presumably no side contract was entered into, to neutralise Elio's claim]. Edwin then appealed to the Board of Appeal.

In April 2006 the Japanese company must have felt that the sun was rising for it.  The First Board of Appeal allowed its appeal and annulled the decision of the Cancellation Division. In the Board's view, the raison d’être of Article 8(3) was to prevent third parties exploiting the name of a famous person [this appears to mean "famous in a non-commercial context"] for commercial purposes. While the Board conceded that there was not, to its knowledge, any case-law on that point, it added that “the most authoritative Italian academic writings” seemed to confirm that the raison d’être of Article 8(3) ceases where the commercial potential of a name is already fully exploited -- as Elio's had been. In this case, said the Board, the renown of the name Elio Fiorucci with the Italian public could certainly not be regarded as arising from its first use in the non-commercial sector. In any event, the public was aware that patronymics are commonly used as commercial marks, but that did not imply that those patronymics correspond to an actual person. Further, by the sale of 1990, Elio Fiorucci had waived all rights of use pertaining both to the mark FIORUCCI and to the mark ELIO FIORUCCI. Nor, since the mark ELIO FIORUCCI represented only the name of a person, but did not give any indication of a specific quality, so there could not be any question of the public being misled.

Elio's cute ploy for charming
the General Court pays off
Now it was Elio Fiorucci's turn to appeal, which he did.  Before the General Court he sought both the annulment of the Board's decision and a declaration revoking or declaring invalid the contested Community trade mark. The General Court rejected the plea for revocation. In its view, the particular requirements necessary for a designer name to be regarded as liable to mislead were not satisfied. In addition, no evidence of misleading use of the mark was demonstrated.  However, regarding the interpretation of Article 8(3), the Court considered that the Board’s interpretation was not confirmed by its wording, which refers to the names of well-known persons without making a distinction according to the sector in which that renown was acquired. Even on the assumption that the name of a well-known person has already been registered or used as a de facto trade mark, the protection given by Article 8(3) is not in any way superfluous or irrelevant: it cold not be not ruled out that the name of a well known person, registered or used as a mark for certain goods or services, can be the subject of a new registration for different goods or services which are not in any way similar to those covered by the earlier registration [This struck the Kat as a good point and certainly as something that should be missed by anyone who is selling the rights to his name -- those unforeseen new registrations can be really embarrassing]. Further, Article 8(3) did not lay down any condition other than that relating to the well known character of the personal name concerned. Thirdly, the extracts from some of the academic writings cited by the Board also did not allow the conclusion to be drawn that its interpretation of Article 8(3) was correct. Accordingly the Board, as a result of its error, incorrectly eliminated the application of that provision to the case of Elio Fiorucci’s name, even though it was not disputed that that was the name of a well-known person.

In paragraph 1 of its judgment he Court therefore annulled the Board's decision in so far as it contained an error of law in the interpretation of Article 8(3). The Court did not go so far as to cancel the registration of the ELIO FIORUCCI Community trade mark, though. On Edwin's plea that the mark ELIO FIORUCCI was included in the assignment of all the marks and all the distinctive signs, the Court held simply that such argument had not been examined by the Board of Appeal and accordingly refused to grant the application to alter the contested decision stating that that would imply, in substance, the exercise of administrative and investigatory functions specific to OHIM and would upset the institutional balance.

Edwin then challenged the judgment under appeal and sought, among other alternative pleas, to have set aside paragraph 1 of the operative part or at least to have that argument referred to OHIM for examination. OHIM argued that the Court of Justice should set aside the judgment under appeal and order Elio Fiorucci to pay the costs incurred by it. Elio Fiorucci argued that the Court of Justice should uphold various parts of the judgment under appeal, amend other parts in his favour and order that the costs of his appeal be reimbursed.

We don't yet know what the Court of Justice of the European Union will rule, but we do know what Advocate General Kokott thinks since her Opinion was published on the Curia website last Thursday: the Court of Justice should be advised that, since none of Edwin’s grounds of appeal can be upheld, the appeal must be dismissed in its entirety, though Elio Fiorucci’s application must be dismissed as inadmissible.  In her view:

* Article 52(2) of Regulation 40/94 provides that “A Community trade mark shall … be declared invalid … where the use of such trade mark may be prohibited pursuant to another earlier right, and in particular: (a) a right to a name; ... under the Community legislation or national law governing the protection”. Accordingly, Article 52(2) of Regulation 40/94 applies to the present case if the right under Article 8 of the Industrial Property Code on which Elio Fiorucci relies in fact exists.  While the mere reference to national law in Regulation 40/94 does not transform national law into EU law, an incorrect assessment of national law, where this is relevant, may still result in a finding incorrectly establishing or denying the existence of a criterion, such as a right to a name, defeating the use of a mark.

* The General Court engaged in a detailed analysis of the wording of Article 8(3) of the Industrial Property Code and assessed in a logically consistent manner the Italian legal literature which had been submitted to the Board of Appeal and to that court itself. No grounds exist for a complaint that the clear sense of the parties’ submissions or evidence was distorted.

* As for the position under national law, the General Court was not required to engage in further investigations of its own. Since the subject matter of the proceedings before the General Court was defined by the subject-matter of the appeal to the Board of Appeal, the General Court was required to confine itself to the material on the dispute submitted to the Board of Appeal in relation also to the national legal position.

* The General Court had to assess whether the assessment of national law made in that regard by the Board of Appeal was well-founded or, if not, whether there had been an infringement of a rule of law relating to the application of Regulation 40/94. The fact that Edwin now contends that at first instance reference was made to various relevant judgments of Italian courts which the General Court did not assess is irrelevant. Although the General Court has the authority to review the legality of decisions of the Board of Appeal, it is precluded from considering evidence first submitted in the annex to the application.

The IPKat is offering no guesses as to what the Court will do.  He has some sympathy for Edwin, which clearly had the expectation that it was buying all rights past, present and future in Elio Fiorucci's name -- though Article 1 of the contract looks definitely dodgy in hindsight -- but has been rewarded with a guided tour of Europe's top trade mark litigation venues instead.  Merpel notes the respect and reverence with which the writings of Italian academic are treated as sources of law, and hopes that one day the opinions of their English counterparts will be accorded similar status -- at least when it comes to interpreting Italian law ...

More on the Fiorucci brand here

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