ECJ says people with a protected name can prevent its use in trade marks

The ECJ said that the EU General Court had not misinterpreted Italian law when it said that a trade mark using an Italian man's name should not be registered, even though the man had sold his company, which was named after himself, to the organisation registering the trade mark.

The ECJ said that the EU General Court was right to overturn a decision by trade mark approval body the Office of Harmonisation in the Internal Market (OHIM) to allow the community trade mark to be registered. OHIM is the organisation that decides whether or not to approve trade marks for protection across the EU.

"Since the wording of [the Italian Industrial Property Code] makes registration of the names of well-known persons as trade marks conditional on consent being given by the proprietor of the name, it was possible for the General Court, without distorting that text, to infer from it that the proprietor of a well-known name is entitled to prevent the use of that name as a trade mark where he maintains that he has not given his consent to registration of that mark," the ECJ said in its ruling.

The ECJ made its ruling in a case involving Italian fashion designer Elio Fiorucci. Fiorucci sold the entire creative rights, including the trade marks, belonging to his company Fiorucci SpA to Japanese firm Edwin Company Limited in 1990, the ECJ's ruling said.

Edwin registered 'Elio Fiorucci' as a community trade mark with the OHIM in 1999 but in 2003 Fiorucci asked the OHIM to render the mark invalid on the grounds detailed in EU community trade mark regulations, the ECJ ruling said. The regulations provide that the OHIM should withdraw a registered community trade mark if a person can prove that they have the rights to a name under national law.

Fiorucci had argued that his rights were protected by the Italian Industrial Property Code which states that well-known people have the rights to trademark their name or to consent others to do so instead, the ECJ ruling said.

The OHIM initially decided to invalidate the 'Elio Fiorucci' community trade mark but following an appeal by Edwin it reinstated the company's ownership rights, the ruling said.

Fiorucci did not have the right to invalidate a community trade mark registered in his name because the Italian Code does not allow people to exploit commercial success to claim naming rights, the OHIM had said, according to the ECJ's ruling.

The General Court disagreed but Edwin and the OHIM appealed to the ECJ arguing that the General Court had misinterpreted the Italian Code. The ECJ disagreed and said the Italian Code's name protection provisions applied regardless of which sector the names had become well-known in.