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.