# C_2009220EN.01002502.xml

| 12.9.2009 | EN | Official Journal of the European Union | C 220/25 |
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12.9.2009

EN

Official Journal of the European Union

C 220/25

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Appeal brought on 14 July 2009 by Edwin Co. Ltd against the judgment of the Court of First Instance (Fifth Chamber) delivered on 14 May 2009 in Case T-165/06 Elio Fiorucci v Office for Harmonisation in the Internal Market (Trade Marks and Designs)

(Case C-263/09 P)

2009/C 220/51

Language of the case: Italian

Parties

Parties

Appellant: Edwin Co. Ltd (represented by: D. Rigattti, M. Bertani, S. Verea, K.P. Muraro, M. Balestriero, avvocati)

Appellant:

Other party to the proceedings: Office for Harmonisation in the Internal Market (Trade Marks and Designs) and Elio Fiorucci

Other party to the proceedings:

Form of order sought

Form of order sought

| — | Set aside the judgment under appeal; |
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Set aside the judgment under appeal;

| — | order Mr Fiorucci to reimburse the appellant for the costs of the proceedings at first instance and the appeal proceedings or, on the contested basis that the appeal is not upheld, order that such costs be shared. |
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order Mr Fiorucci to reimburse the appellant for the costs of the proceedings at first instance and the appeal proceedings or, on the contested basis that the appeal is not upheld, order that such costs be shared.

Pleas in law and main arguments

Pleas in law and main arguments

| 1. | First, the judgment under appeal infringes or misapplies Article 52(2)(a) of the RCTM. (1) The relative ground for refusal which, on the basis of that provision, results in the invalidity of the registration of a trade mark consisting of the name of a person other than that of the registrant, is to be found in the fact that the applicant for such a declaration of invalidity is the owner under national law of an exclusive right of use of that name. However, under Article 8(3) of the CPI, (2) relied on by the other party to the proceedings, Mr Fiorucci does not hold any such right. Rather, Article 8(3) of the CPI confers upon him simply a contingent right to register the sign ‘Elio Fiorucci’, which, however, he could never avail himself of, since a mark thus registered would conflict with the rights of Edwin in the word ‘Fiorucci’. It is against this background that the Court of First Instance declared invalid Edwin’s trade mark ‘Elio Fiorucci’, on the basis of a ground for refusal which does not exist and which could never come into existence. That amounts to infringement or misapplication of Article 52(2)(a) of the RCTM, which, if correctly interpreted, can be applied only where the applicant for a declaration of invalidity is already the owner of (or at the very least has the possibility of obtaining) an exclusive right of use of his own name as a trade mark. |
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1.

First, the judgment under appeal infringes or misapplies Article 52(2)(a) of the RCTM. (1) The relative ground for refusal which, on the basis of that provision, results in the invalidity of the registration of a trade mark consisting of the name of a person other than that of the registrant, is to be found in the fact that the applicant for such a declaration of invalidity is the owner under national law of an exclusive right of use of that name. However, under Article 8(3) of the CPI, (2) relied on by the other party to the proceedings, Mr Fiorucci does not hold any such right. Rather, Article 8(3) of the CPI confers upon him simply a contingent right to register the sign ‘Elio Fiorucci’, which, however, he could never avail himself of, since a mark thus registered would conflict with the rights of Edwin in the word ‘Fiorucci’. It is against this background that the Court of First Instance declared invalid Edwin’s trade mark ‘Elio Fiorucci’, on the basis of a ground for refusal which does not exist and which could never come into existence. That amounts to infringement or misapplication of Article 52(2)(a) of the RCTM, which, if correctly interpreted, can be applied only where the applicant for a declaration of invalidity is already the owner of (or at the very least has the possibility of obtaining) an exclusive right of use of his own name as a trade mark.

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| 2. | The judgment under appeal infringes or misapplies Article 8(3) of the RCTM. Contrary to the finding of the Court of First Instance, that provision is in fact applicable only to the names of persons that have become well-known in the non-commercial sector: it cannot therefore be applied to the patronymic ‘Elio Fiorucci’, which, on the basis of an appraisal of the facts which cannot be challenged in these proceedings, first became well-known in the commercial sector.
  That interpretation of Article 8(3) of the CPI is suggested primarily by the literal wording of the provision, which expressly states that it is intended to restrict the protection which it affords to the names of persons which have become well-known ‘in the artistic, literary, scientific, political or sporting fields’. That conclusion is confirmed by a systematic analysis of Italian trade mark law, from which it is apparent that, where a name has become well-known in the commercial sector, it is protected under Article 12(1)(b) and (f) of the CPI, whereas Article 8(3) of the CPI relates only to names which have first become well-known in the non-commercial sector. It is not possible for both of those provisions to be applied concurrently to the same sign, since that would give rise to two exclusive trade mark rights which are mutually incompatible. By registering his own surname as a trade mark (subsequently assigned to Edwin), Mr Fiorucci therefore relinquished all claim to exploiting the renown attached to his name for commercial purposes. He cannot therefore rely on Article 8(3) of the CPI to bring an action for a declaration that Edwin’s trade mark ‘Elio Fiorucci’ is invalid.
  Furthermore, the interpretation of Article 8(3) of the CPI proposed by Edwin, the consequence of which is that it does not apply to the present dispute, is consistent with the ratio of that provision, which is intended to prevent parasitical exploitation by a person who registers a sign which has gained a prestigious reputation through the merits of another person. No parasitical conduct can be imputed to Edwin since, in acquiring the ‘Fiorucci’ trade marks for a considerable sum, the appellant paid dearly for the right to benefit from the renown attached to the name of the famous Milanese fashion designer.
  The argument of the Court of First Instance that the protection given by Article 8(3) of the CPI is more extensive and does not duplicate the protection given to the reputation acquired by distinctive signs in the commercial sector is not convincing. According to the most authoritative Italian academic writing, the contingent right to register signs that are well-known in the non-commercial sector under Article 8(3) of the CPI is not an absolute right. However, the principal argument must be that the protection is not more extensive than that conferred in Article 12(1)(b) and (f) of the CPI for signs that are well-known or have acquired renown in the commercial sector. The fact that the fields in which those provisions operate overlap confirms once again that they cannot be applied concurrently.
  Contrary to the superficial conclusion of the Court of First Instance, it is apparent from a careful, detailed analysis of Italian academic writings commenting on Article 8(3) of the CPI (formerly Article 21(3)(m)) that the prevailing opinion is that that provision is applicable only to signs which have acquired renown in the non-commercial sector. That is confirmed by the small number of judgments delivered to date by the Italian courts on Article 8(3) of the CPI.
  No more convincing is the argument of the Court of First Instance that, having also become well-known in the non-commercial sector (specifically, in the artistic, cultural and ecological fields and in the field of child-protection), Mr Fiorucci could in any event rely on the protection afforded by Article 8(3) of the CPI. Rather, according to the most authoritative Italian academic writing, when a patronymic that is already registered by another person and has become widely known acquires renown in the non-commercial sector, its owner (in this case: Elio Fiorucci) cannot rely on Article 8(3) of the CPI, since the need to protect the owner (in this case: Edwin) of the well-known trade mark (in this case: the sign ‘Fiorucci’) which has previously been registered takes precedence. |
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2.

The judgment under appeal infringes or misapplies Article 8(3) of the RCTM. Contrary to the finding of the Court of First Instance, that provision is in fact applicable only to the names of persons that have become well-known in the non-commercial sector: it cannot therefore be applied to the patronymic ‘Elio Fiorucci’, which, on the basis of an appraisal of the facts which cannot be challenged in these proceedings, first became well-known in the commercial sector.

That interpretation of Article 8(3) of the CPI is suggested primarily by the literal wording of the provision, which expressly states that it is intended to restrict the protection which it affords to the names of persons which have become well-known ‘in the artistic, literary, scientific, political or sporting fields’. That conclusion is confirmed by a systematic analysis of Italian trade mark law, from which it is apparent that, where a name has become well-known in the commercial sector, it is protected under Article 12(1)(b) and (f) of the CPI, whereas Article 8(3) of the CPI relates only to names which have first become well-known in the non-commercial sector. It is not possible for both of those provisions to be applied concurrently to the same sign, since that would give rise to two exclusive trade mark rights which are mutually incompatible. By registering his own surname as a trade mark (subsequently assigned to Edwin), Mr Fiorucci therefore relinquished all claim to exploiting the renown attached to his name for commercial purposes. He cannot therefore rely on Article 8(3) of the CPI to bring an action for a declaration that Edwin’s trade mark ‘Elio Fiorucci’ is invalid.

Furthermore, the interpretation of Article 8(3) of the CPI proposed by Edwin, the consequence of which is that it does not apply to the present dispute, is consistent with the ratio of that provision, which is intended to prevent parasitical exploitation by a person who registers a sign which has gained a prestigious reputation through the merits of another person. No parasitical conduct can be imputed to Edwin since, in acquiring the ‘Fiorucci’ trade marks for a considerable sum, the appellant paid dearly for the right to benefit from the renown attached to the name of the famous Milanese fashion designer.

ratio

The argument of the Court of First Instance that the protection given by Article 8(3) of the CPI is more extensive and does not duplicate the protection given to the reputation acquired by distinctive signs in the commercial sector is not convincing. According to the most authoritative Italian academic writing, the contingent right to register signs that are well-known in the non-commercial sector under Article 8(3) of the CPI is not an absolute right. However, the principal argument must be that the protection is not more extensive than that conferred in Article 12(1)(b) and (f) of the CPI for signs that are well-known or have acquired renown in the commercial sector. The fact that the fields in which those provisions operate overlap confirms once again that they cannot be applied concurrently.

Contrary to the superficial conclusion of the Court of First Instance, it is apparent from a careful, detailed analysis of Italian academic writings commenting on Article 8(3) of the CPI (formerly Article 21(3)(m)) that the prevailing opinion is that that provision is applicable only to signs which have acquired renown in the non-commercial sector. That is confirmed by the small number of judgments delivered to date by the Italian courts on Article 8(3) of the CPI.

No more convincing is the argument of the Court of First Instance that, having also become well-known in the non-commercial sector (specifically, in the artistic, cultural and ecological fields and in the field of child-protection), Mr Fiorucci could in any event rely on the protection afforded by Article 8(3) of the CPI. Rather, according to the most authoritative Italian academic writing, when a patronymic that is already registered by another person and has become widely known acquires renown in the non-commercial sector, its owner (in this case: Elio Fiorucci) cannot rely on Article 8(3) of the CPI, since the need to protect the owner (in this case: Edwin) of the well-known trade mark (in this case: the sign ‘Fiorucci’) which has previously been registered takes precedence.

| 3. | The judgment under appeal is unlawful in so far as it fails to state adequate grounds since the Court of First Instance omitted to examine the arguments and evidence supporting Edwin’s submission that it had obtained Elio Fiorucci’s consent to register his patronymic as a trade mark. In the alternative, Edwin submits that, should the Court of Justice find that neither it nor the Court of First Instance has jurisdiction to examine the argument in question, it must expressly refer the matter to the Board of Appeal (or other office or division) of OHIM (which the Court of First Instance failed to do) for it to do so, pursuant to Article 63(6) of the RCTM and Article 1d of Regulation No 216/96. (3) |
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3.

The judgment under appeal is unlawful in so far as it fails to state adequate grounds since the Court of First Instance omitted to examine the arguments and evidence supporting Edwin’s submission that it had obtained Elio Fiorucci’s consent to register his patronymic as a trade mark. In the alternative, Edwin submits that, should the Court of Justice find that neither it nor the Court of First Instance has jurisdiction to examine the argument in question, it must expressly refer the matter to the Board of Appeal (or other office or division) of OHIM (which the Court of First Instance failed to do) for it to do so, pursuant to Article 63(6) of the RCTM and Article 1d of Regulation No 216/96. (3)

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| 4. | The judgment under appeal is also unlawful on the basis that it infringes or misapplies Article 63 of the RCTM and constitutes a denial of justice, in so far as the Court of First Instance incorrectly refused to consider Edwin’s argument based on the fact that the appellant acquired from Fiorucci SpA a de facto trade mark relating to (or, in any event, any other right to exploit the renown attached to) the patronymic ‘Elio Fiorucci’. In the alternative, Edwin submits that, should the Court of Justice find that neither it nor the Court of First Instance has jurisdiction to examine the argument in question, it must expressly refer the matter to the Board of Appeal (or other office or division) of OHIM (which the Court of First Instance failed to do) for it to do so, pursuant to Article 63(6) of the RCTM and Article 1d of Regulation No 216/96. |
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4.

The judgment under appeal is also unlawful on the basis that it infringes or misapplies Article 63 of the RCTM and constitutes a denial of justice, in so far as the Court of First Instance incorrectly refused to consider Edwin’s argument based on the fact that the appellant acquired from Fiorucci SpA a de facto trade mark relating to (or, in any event, any other right to exploit the renown attached to) the patronymic ‘Elio Fiorucci’. In the alternative, Edwin submits that, should the Court of Justice find that neither it nor the Court of First Instance has jurisdiction to examine the argument in question, it must expressly refer the matter to the Board of Appeal (or other office or division) of OHIM (which the Court of First Instance failed to do) for it to do so, pursuant to Article 63(6) of the RCTM and Article 1d of Regulation No 216/96.

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(1)  Council Regulation (EC) no 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1).

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(2)  Codice della Proprietà industriale italiano (Italian Industrial Property Code).

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(3)  Commission Regulation (EC) No 216/96 of 5 February 1996 laying down the rules of procedure of the Boards of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OJ 1996 L 28, p. 11).

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