It is necessary to distinguish two different cases, namely the registration as a mark of the name of an unknown person – in principle permitted by law – and the registration of the name of a well-known person, in principle forbidden by the law.
Registration of a patronymic trademark with the name of an UNKNOWN person
Article 8, 2) of the Italian Industrial Property Code provides that:
“persons’s names other than those of the person who applies for the registration may be registered as trademarks, provided that the use of such names is not as such as to damage the reputation, credit or the dignity of the person who is entitled to use such names. The Italian patent and Trademark office may, however, make the registration conditioned upon obtaining the consent as set forth in paragraph 1 (namely consent of the owner of the name and, after his death, the spouses and sons’ consent, failing the latter or, after their death, the parents’ or other ancestors’ consent, and, failing also the latter or after their death, other relatives’ until the fourth degree included). In any case, the registration will not prevent those who have the right to use the name in the company chosen by him, subsisting of the conditions referred to in article 21, paragraph 1”
Generally speaking, therefore, it is lawful the registration as a mark of a person’s name other than those of the person who applies for the registration, but there is the limit of respect for reputation, credit and dignity of the person who is the owner of such name. this limit would not be met is, for example, someone use as brand of cigarettes the name of a person known for the involvement in campaigns against smoking.
The violations of the limits set by the law implies the invalidity of the registered trademark and the prohibition of its use.
Registration of patronymic trademark with the name of a well-known person
Article 8, 3) of the Italian Industrial Property Code provides that:
“the names of people, if well-known, may be registered or used as trademarks by the person holding the right, or with the consent of the latter or the persons set forth in paragraph 1 (owner of the name and, after his death, the spouses’ and sons’ consent, failing the latter or, after their death, the parents’ or other ancestors’ consent, and, failing also the latter or after their death, other relatives’ until the fourth degree included”.
With this ban the law seeks to prevent episodes of illegal exploitation of other’s people notoriety and consequent unfair advantage.
Therefore pay maximum attention if you wish to proceed in one of the two cases described above. We advise you to contact Eva Troiani law firm who will give you the right assistance and advice on the subject.
If you want ot know other brand definition, we recommend reading types of trademark: definition and characteristics.