The Italian Supreme Court has ruled on an interesting and rather longstanding name debate involving the rights to Fiorucci SpA, the iconic Italian design house founded in 1967 by Elio Fiorucci. In accordance with the most recent ruling, the designer's estate (Fiorucci died in July 2015) may not use his name in connection with an array of goods. Such disputes tend to come about when someone doing business under his or her own name sells off the rights and then tries to compete in the original field using some form of the name. Not surprisingly, this is exactly what occurred in the Fiorucci case.
In the 1980’s, after garnering fans like Andy Warhol, Elizabeth Taylor, and Cher, Fiorucci fell upon hard times due to poor management. After changing hands a couple of times, the company was acquired by Japanese denim brand, Edwin Co. Ltd., which purchased the entirety of the company’s “creative assets” in 1990, namely, the right to use the Fiorucci name in connection with the sale of “clothes and other goods.” Now skip forward to 2004, when Edwin filed an action against Elio Fiorucci because he was using and had applied for trademark registration of trademark “Love Therapy by Elio Fiorucci” for use in connection with a wide array of goods, including clothing, cosmetics, jewelry, and leather goods, among others.
A Bit of Background
Fiorucci and Edwin’s legal drama dates back to December 1997, when Edwin applied to register and was granted trademark rights in the ELIO FIORUCCI name in the European Union (“EU”) by the Office for Harmonization in the Internal Market (which has been renamed as the European Union Intellectual Property Office). Several years after the registration of the ELIO FIORUCCI mark, Elio Fiorucci, himself, sought to invalidate it, claiming that in Italy his name enjoyed special protection, under which a well-known personal name can be registered as a trade mark only by, or with the consent of, that person, and that no such consent had been given in this case.
The proceedings focused mainly on the scope of Article 52(2)(a) Community Trademark Regulation (the "CTM Regulation"), according to which "[a] Community trade mark shall also be declared invalid ... where the use of such trade mark may be prohibited pursuant to another earlier right, and in particular: a right to a name ... under the Community legislation or national law governing the protection.” Also at the center of the case: The interpretation of Article 8(3) of the Italian Industrial Property Code (Codice della Proprietà Industriale), the rule of national law that holds that if they are well-known, “personal names, signs used in the artistic, literary, scientific, political and sporting fields, the designations and acronyms of events and those of non-profit making bodies and associations, including their characteristic emblems … may be registered as a trademark only by the right holder, or with the right holder's consent.”
The case made its way through the administrative and court systems of the EU before landing in front of the Court of Justice. The lower courts’ decisions go back and forth on the scope and meaning of the “own name” defense in Italy – which holds that a trademark registration cannot be used to prevent a person from using his own name, provided he uses it in accordance with honest practices – and whether it can be relied on in cases where the name has commercial value.
Ultimately, the Court of Justice of the EU ruled in Elio Fiorucci’s favor, holding that the right to a name may be relied on not only in order to protect a name as an attribute of personality but also to protect its economic aspects.
THE MOST RECENT RULING
According to the Italian Supreme Court, Elio Fiorucci or better yet, his estate, is in the wrong. The court held late last month that Fiorucci infringed Edwin’s trademark rights by using the “Love Therapy by Elio Fiorucci” trademark, even if it does contain his own personal name. While the court held that there is, in fact, an “own name” defense, Fiorucci’s use of his name within the above mentioned trademark is not consistent with the principles of professional fairness, and thus, is not subject to the “own name” defense. The court stated in its decision that the use of the Fiorucci name allowed designer Elio Fiorucci to take unfair advantage of the reputation of the well-known ELIO FIORUCCI trademark, which he previously assigned to the plaintiffs, while still benefitting from the arrangement he made with Edwin. As a result, the court ordered that Elio Fiorucci camp no longer be permitted to use the trademark.
If this sounds familiar, it is because similar issues were at play in cases involving the Gucci family, as well as designer Joseph Abboud and Kate Spade. The moral of the story: Think long and hard if you want to use your personal name in connection with your brand, designers. And if you do decide to do so, make sure you understand the limitations that will be in place if/when you decide to sell off your brand.