Registrare Marchio

  • Who we are
    • Eva Troiani law firm: trademark registration and legal protection
    • The Project Registrare-Marchio.com
  • Trademark consultancy
    • The Verification of Trademark’s Requirements
    • Trademark Search: identity and similarity
    • Where to register a trademark
    • Filing a Trademark Application
    • Graphic Creation of a Trademark
    • Trademark protection: the surveillance service
  • Trademark legal assistance
    • Trademark defense from objections of the Trademark Office
    • Trademark defense from disputes
    • Trademark Opposition Proceedings
    • Trademark Assignment and Licence Agreement
  • Contact
  • FAQ
  • Certification
    • EUIPO Webinar 2023
    • SEE Webinar 2023
  • LANGUAGES
    • English English
    • Italiano Italiano
  • The trademark
    • What a Trademark is
    • How to Conceive a Brand
    • Types of Trademarks
    • Denominative and Figurative Trademark
    • Collective Trademark
    • Color Trademark
    • Position Mark
    • Slogan Trademark
    • New marks
    • Unregistered trademark
    • Deceptive Trademark
    • Trademark with Reputation
    • Family of trademarks: what they are
    • Invalid Trademark and Revocation
    • Trademark symbols which can be used in Italy: ™ and ®
    • Value of a brand
    • Trademark assignment
    • Trademark Licence agreements
    • Right of Priority of a Trademark
    • Validation of a trademark
    • Limitations of the Right on the Trademark
    • How to Avoid Complaints to a Trademark
    • Read more
  • Registering a trademark
    • Why to Register a Trademark
    • Who is Entitled to Register a Trademark
    • Filing and Registering a Trademark
    • Nice Classification – 11 edition 2022
    • Duration of a trademark
    • Registering a logo or Registering a brand?
    • How much it costs to register a trademark
    • Graphic changes to a registered trademark
    • Trademark Registration in Italy
    • Registering the European Union trademark
    • Registering an international trademark
    • REGISTERING A TRADEMARK IN EUROPE
    • REGISTERING A TRADEMARK IN THE MIDDLE EAST
    • REGISTERING A TRADEMARK IN ASIA
    • REGISTERING A TRADEMARK IN NORTH AMERICA
    • REGISTERING A TRADEMARK IN LATIN AMERICA
    • REGISTERING A TRADEMARK IN AFRICA
    • REGISTERING A TRADEMARK IN OCEANIA
    • read more
  • Mistakes not to be made
    • 10 errors not to do with trademark
    • Lack of distinctive character of a mark
    • Vulgarization of Trademark
    • Signs become customary cannot be registered as trademarks
  • Further considerations
    • CASE LAW AND TRADEMARK
    • DISTINCTIVE CHARACTER OF A TRADEMARK
    • CONTRACTS RELATED TO TRADEMARKS
    • TRADEMARKS AND BAD FAITH
    • COUNTERFEITS AND MISLEADING INDICATIONS
    • UNFAIR COMPETITION
    • GEOGRAPHICAL INDICATIONS
    • EUROPEAN UNION TRADEMARK
    • COPYRIGHT
  • News
    • Read posts
  • Guest corner

Home FURTHER CONSIDERATIONS ON TRADEMARKS CONTRACTS RELATED TO TRADEMARKS Trademark assignment agreement and counterfeiting

Trademark assignment agreement and counterfeiting

by Admin / Tuesday, 15 May 2018 / Published in CONTRACTS RELATED TO TRADEMARKS, COUNTERFEITS AND MISLEADING INDICATIONS

On the issue of trademark and counterfeiting, we propose here below the case concerning the trademark Love Therapy by Elio Fiorucci, initially considered a counterfeit trademark by the Court of Milan, a statement not shared by the Court of Appeal of Milan but finally approved by the Italian Corte di Cassazione. Let’s find out why.

trademark assignment agreement and counterfeiting

The Italian “Corte di Cassazione” (Section I, May 25, 2016 n.10826) has 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 his 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 case Love Therapy by Elio Fiorucci: judgment of the Court and of the Court of Appeal

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 case Love Therapy by Elio Fiorucci: judgment of the Italian Corte di Cassazione

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”.

Summary
Trademark assignment agreement and counterfeiting
Titolo articolo
Trademark assignment agreement and counterfeiting
Description
With regard to the trademark assignment agreement and counterfeiting, we propose highly controversial case concerning the trademark Love Therapy by Elio Fiorucci. Let’s find out why
Author
Eva Troiani
Publisher Name
Lawyer Eva Troiani - Registrare-marchio.com
Publisher Logo
Lawyer Eva Troiani - Registrare-marchio.com

Did you find this article interesting? Share it!

They may also be interested in these items

Trademark Assignment and Licence Agreement

Copyright protection: counterfeit goods on the stalls

Trademark coexistence agreements

Eva Troiani

Eva Troiani (Attorney At Law)

Eva Troiani has been working for over 15 years dealing with all aspects of the trademark: from trademark application to trademark registration worldwide, providing assistance in the event of disputes; she proposes an extensive legal advice to companies and professionals. She is the author of all the articles in this website “registrar-marchio.com”, a project created with the aim of providing useful and updated information on the trademark’s world to all readers. You can follow the lawyer Eva Troiani also on her Linkedin profile.


 

Eva Troiani

Do you need assistance, advice or information? If you have an idea, do not let it steal!

Contact Eva Troiani’s law firm

For registration and protection of trademarks

The texts in this database are only for informational and scientific purposes and they are not to be considered official; we therefore decline any responsibility for possible errors or inaccuracies. All mentioned trademarks belong to their legitimate owners; trademarks, product names, trade names and the images of the products are the property of their respective owners. They are used in this database only for informational purposes, without any purpose of violating existing rights of others.
The information you obtained at this site is not, nor is intended to be, legal advice. You should consult Ms. Eva Troiani and/or a trademark attorney and/or an attorney at law handling with intellectual property for individual advice regarding any legal questions that you may have.

Find out why Mario decided to register his trademark

Register now your trademark!
Guest Corner

Last articles

  • Provisional Refusal in Japan-Rifiiuto provvisorio in Giappone

    Frequent Provisional Refusal in Japan

    A frequent ground for refusal refers to the mai...
  • Lack of distinctive character of a mark

    Lack of distinctive character of a mark

    : It is defined distinctive the sign able to id...
  • Protection trademark in Turkey

    Under the light of Turkish Law: Why Should We Register Our Trademark?

    In a country where the trade in counterfeit pro...
  • Nice classification for trademarks

    Nice Classification – 11 edition – 2023

    Nice Classification is an international registr...
  • Importance and advantages of registering a trademark in China

    Registering a trademark in China: importance and advantages

    Karson Yang, a Chinese trademark consultant, ex...

Category

  • THE TRADEMARK
  • REGISTERING A TRADEMARK
    • REGISTERING A TRADEMARK IN EUROPE
    • REGISTERING A TRADEMARK IN THE MIDDLE EAST
    • REGISTERING A TRADEMARK IN ASIA
    • REGISTERING A TRADEMARK IN NORTH AMERICA
    • REGISTERING A TRADEMARK IN LATIN AMERICA
    • REGISTERING A TRADEMARK IN OCEANIA
    • REGISTERING A TRADEMARK IN AFRICA
  • MISTAKES NOT TO BE MADE WITH TRADEMARKS
  • INSIGHTS INTO BRAND
    • CASE LAW AND TRADEMARK
    • DISTINCTIVE CHARACTER OF A TRADEMARK
    • COPYRIGHT
    • CONTRACTS RELATED TO TRADEMARKS
    • TRADEMARKS AND BAD FAITH
    • COUNTERFEITS AND MISLEADING INDICATIONS
    • UNFAIR COMPETITION
    • GEOGRAPHICAL INDICATIONS
    • EUROPEAN UNION TRADEMARK

Subscribe to the newsletter

come contattare l’Avv. Eva Troiani

+393382938021

Utility

  • Eva Troiani law firm: trademark registration and legal protection
  • The Project Registrare-Marchio.com
  • Where to register a trademark
  • The Verification of Trademark’s Requirements
  • Trademark Search: identity and similarity
  • Filing a Trademark Application
  • Graphic Creation of a Trademark
  • Trademark protection: the surveillance service for the protection of your brand
  • Trademark Opposition Proceedings
  • Trademark Assignment and Licence Agreement

Contact

Eva Troiani (Attorney At Law)

P. Iva IT07106461002
+39.338.29.38.021
info@marchiebrevettiroma.it
  • Who we are
    • Eva Troiani law firm: trademark registration and legal protection
    • The Project Registrare-Marchio.com
  • Trademark consultancy
    • The Verification of Trademark’s Requirements
    • Trademark Search: identity and similarity
    • Where to register a trademark
    • Filing a Trademark Application
    • Graphic Creation of a Trademark
    • Trademark protection: the surveillance service
  • Trademark legal assistance
    • Trademark defense from objections of the Trademark Office
    • Trademark defense from disputes
    • Trademark Opposition Proceedings
    • Trademark Assignment and Licence Agreement
  • Contact
  • FAQ
  • Certification
    • EUIPO Webinar 2023
    • SEE Webinar 2023
  • GET SOCIAL
Registrare Marchio

registrare-marchio.com | Avv. Eva Troiani © 2015 - All rights reserved | Cookie policy | Privacy policy
The contents of this site provide readers with general information and are not legal advice.
Powered by
Ip Coster

TOP

Questo sito fa uso di cookie tecnici per permettere una corretta navigazione agli utenti e cookie di terze parti (come Google Analytics, Maps, ReCapcha, etc..) per migliorarne la fruizione. Se vuoi saperne di più consulta la nostra Cookie Policy.

Questo sito utilizza i cookie per fornire la migliore esperienza di navigazione possibile. Continuando a utilizzare questo sito senza modificare le impostazioni dei cookie o cliccando su "Accetta" permetti il loro utilizzo.

Chiudi