The Italian “Corte di Cassazione” (Section I, May 25, 2016 n.10826) has recently had occasion to rule on the matter of the assignment of a patronymic trademark, consisting of the name of a stylist, and on the possibility that such stylist uses, after the assignment, new brands formed by its name in addition with further words.
The main issue can be summarized as follows: can a famous fashion designer, after selling his trademarks composed of its name, use new trademarks also containing his name? In the matter in exam the new trademark used by the designer was formed not only by his surname, but also by his first name (absent in the assigned trademarks), in addition to other verbal elements (LOVE THERAPY by ELIO FIORUCCI).
The Court of Milan affirmed the infringement of the assigned trademarks (in which there was the name “FIORUCCI”) by the trademark “LOVE THERAPY by ELIO FIORUCCI”.
On the contrary, the Court of Appeal of Milan considered that “the personal right to the name (guaranteed by article 22 of the Italian Constitution by article 6 of the Italian Civil Code and by ECHR) remains intact, even if it involves the assignment of the economic rights, so that it is impossible to think to a kind of “perpetual non-competition clause”. The Corte di Cassazione points out that in its previous judgement (n.29879 of 2011) stated the principle according to which “the commercial use of a patronymic name must be conform to the principles of professional integrity and, therefore, it cannot be done with the function of a trademark, namely distinctive, but only descriptive; this is the rule according to which the owner of a trademark cannot prohibit to a third party to use its name in the economic activity; as a result, there is counterfeiting when the contested trademark includes the protected patronymic, even if it is accompanied by other elements”.
The Corte di Cassazione also notes that patronymic trademark “generally is a strong mark and for this reason its inclusion in another trademark or trade name cannot be considered neither legitimate nor lawful, unless the use by a third party of its own name (which collides with a former trademark, registered by another party) is justified by the existence of a real descriptive exigency related to its activity, products or services”.
The Cassazione, therefore, annuls the judgment of the Court of the Appeal and establishes a new trial on the merits, taking into account the following principles of law:
- “In case of a distinctive sign consisting of a patronymic name and validly registered as a word mark, it is not possible to adopt an identical or similar name, neither as trademark nor as company name, not even by the person who has that name, because the right to the name has a compression in the economic and commercial activity, when the name has been registered as a trademark, first, and has become famous, then, thanks to the same stylist who has later assigned such mark”.
- “The inclusion, in a trademark, of a surname which coincides with the name of the person who has previously assigned a trademark (become famous) including such name, is not in accordance with honest practices if it is not justified, in a strictly limited extent, by the existence of a real descriptive need inherent to the activities, products or services offered by the person who has certainly the right to conduct its own economic, intellectual or creative activity but who has not the right to transform its activity in an activity parallel to that for which the earlier mark has been registered and played a remarkable distinctive function”.
When is it proven the reputation of a Reform European Union Trademark?
The judgement of the Court of Justice C-125/14 of 3 September 2015 gives an answer to some questions concerning when the reputation of a European Union Trademark can be considered as demonstrated.
The questions are:
- Is it possible to affirm the reputation of a European Union Trademark when it is demonstrated only in a single State or it is necessary that the evidence of the reputation necessarily involve more Countries of the European Union and, in the latter, how many and which?
- Is it possible to oppose a national trademark if you are owner of an earlier European Union Trademark with reputation but the reputation does not concern the State of the national mark that you want to oppose?
Notoriety European Union Trademark
First of all, with regard to the concept of “reputation”, “assumes a certain degree of knowledge amongst the relevant public, which must be considered to be reached when the European Union Trademark is known by a significant part of the public concerned by the products or services covered by that trademark” (C-125/14, paragraph 17).
The Court of Justice, besides, specifies that “in examining this condition, the national Court must take into consideration all the relevant facts of the case, in particular the market share held by the trademark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it” (C-125/14, paragraph 18).
Coming to the first question – whether the reputation can be proved even if existing in reference to a single Member State – the Court of Justice states that “the condition as to reputation must be considered to be fulfilled when the European Union Trademark has a reputation in a substantial part of the territory of the Community and such a part may, in some circumstances, correspond to the territory of a single Member State” (C-125/14, paragraph 19).
From the answer to the first question comes the answer to the second question, because “if the reputation of an earlier European Union Trademark is established in a substantial part of the territory of the European Union which may, in some circumstances, coincide with the territory of a single Member State…the proprietor of that mark is not required to produce evidence of that reputation in the Member State in which the application for registration of the later national mark, which is the subject of an opposition, has been filed”. (C-125/14, paragraph 20).
Notoriety European Union Trademark
Having seen that the reputation of a European Union Trademark may also cover a single Member State and that, if the reputation is demonstrated, it is not necessary that it also exists in the State in which the opposed trademark application was filed, we must clarify another point.
Article 4(3) of the Directive 2008/95/EC of the European Parliament of the Council of 22 October 2008, states that “A trademark shall furthermore not be registered …if it is to be, or has been, registered for goods or services which are not similar to those for which the earlier European Union Trademark is registered, where the earlier European Union Trademark has a reputation in the community and where the use of the later trademark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier European Union Trademark”.
When you have proved the reputation of the Community trademark but that reputation does not involve the State in which the national trademark you want to oppose was filed, can we affirm that the proprietor of the national trademark would take unfair advantage of the reputation of the trademark if the well-known mark is not known in that State?
The Court of Justice says the following: “if the earlier Community trademark has already acquired a reputation in a substantial part of the European Union, but not with the relevant public in the Member State in which registration of the later national mark concerned by the opposition has been applied for, the proprietor of the Community trademark may benefit from the protection introduced by article 4(3) of Directive 2008/95 where it is shown that a commercially significant part of that public is familiar with that mark, makes a connection between it and the later national mark, and that there is, taking account of all the relevant factors in the case, either actual and present injury to its mark, for the purposes of that provision or, failing that, a serious risk that such injury may occur in the future”.
Many people believe it is very complicated to register a trademark.
IActually, it is very simple if you appoint an expert in the field of trademarks.
We explain here below how to do, step by step:
Through the specific form, you can ask for a free of charge check of some of the registrability requirements of your trademark.
Our team will confirm if your trademarks seems to have a distinctive character and appears to be not contrary to the law, public policy or principles of morality. You will receive the result of this check by e-mail.
Apart from the exit, positive or negative, this check is free of charge and not binding for future steps with this firm.
In the event the free of charge check is positive, you will find attached to our e-mail two forms, one for proceeding with a similarity trademark search (optional, but strongly recommended by the firm in order to be aware of the existence of prior identical or similar trademarks conflicting with the sign of your interest) and the other for proceeding straight away with the filing of the trademark application, in the event you wish to file the application without performing any search.
Contextually you will be informed on the exact amount to pay through a bank transfer, depending you are a natural or a legal person (counting VAT or not), taking into account that the cost for filing an Italian trademark is the following:
- € 472 in one class, plus 4% of so called CAP to be calculated exclusively on the Attorney’s fees;
- € 50 for each additional class, plus 4% so called CAP to be calculated exclusively on the Attorney’s fees.
Method of payment:
- Bank transfer to::Banca Popolare di Milano – Ag.di Roma n. 00253
- IBAN: IT87D0558403202000000021963
- SWIFT: BPMIITM1253
As soon as we receive your instructions for the filing, together with a copy of the payment, we will prepare the documents for the filing.
In order to positively conclude the proceeding, you will be requested to send the Power of attorney singed in original by you to the following address:
- Avv. Eva Troiani
- Via Pasquale Revoltella 35
- 00152 Roma
Once filed the trademark application, you will receive a copy by e-mail.
- Tel. / fax: 06 58233422