Brussels, 05/07/2011 (Agence Europe) - The holder of a name is entitled to prevent its use as a Community trade mark where national law so permits. The economic aspects of a right to a name may also be protected.
In the ruling delivered on 5 July 2011 in Case C-263/09 P, the Court of Justice of the EU was called on to interpret the concept of “right to a name” - that may be invoked when calling for a trade mark to be declared invalid - within the meaning of Regulation No 40/94 on trade marks. It was asked to clarify whether this concept referred to an attribute of a personality or concerns in addition its commercial exploitation.
An action was lodged by Japanese company Edwin Co. Ltd, challenging a ruling by the General Court of the EU which in 2009 (Case T-165/06) partly annulled the decision of the European Office for Harmonisation in the Internal Market (OHIM) to register the trademark “Elio Fiorucci”, upholding in part the appeal by Mr Elio Fiorucci, an Italian fashion designer and founder of the Fiorucci SpA range of luxury goods, which was sold to Edwin Co. Ltd in 1990. In support of his appeal, Mr Fiorucci had invoked the Community trade mark regulation in conjunction with Italian law, under which the names of famous persons may only be registered as trade marks by the person or with his/her consent.
The Court of Justice finds first of all that the wording and structure of the trade mark regulation do not permit the concept of the 'right to a name' to be restricted to an aspect of an attribute of personality. On the contrary, the concept may also cover the commercial exploitation of the name. The regulation provides for a Community trade mark to be declared invalid where an interested person claims “another earlier right”, and gives a non-exhaustive list of four examples: besides the right to a name, it cites the right of personal portrayal, copyright and industrial property rights. The economic aspects of some of those rights are protected, both under national laws and under European Union law. There is no reason, therefore, not to afford the same protection to the “right to a name”. Therefore, the right to a name may be invoked not only to protect the name as an attribute of the personality but also to protect its economic aspects.
Consequently, the General Court was fully entitled to infer from the Italian national law that, irrespective of the sector in which that renown was acquired and even where the name of the well-known person has already been registered or used as a trade mark, the proprietor of a well-known name is entitled to prevent the use of that name as a trade mark where he/she has not given consent to its registration as a trade mark. (F.G./transl.rt)