• Beware the “Own Name” Defense

    by  • February 8, 2011 • trademark

    Lawsuits in the United States over use of personal names come up occasionally.  They happen when someone doing business under his or her own name sells off the rights, then try to compete in the original field using some form of the name (I think this is called “having one’s cake and eating it too”).  The Joseph Abboud case is a well-known one, but it happens fairly frequently.  In the U.S., sorting it out generally involves analysis of the transactional documents.

    In Europe, though, there’s another wrinkle, which is the “own name” defense.  A trademark is invalid if:

    the use of such trade mark may be prohibited pursuant to another earlier right, and in particular:

    (a) a right to a name;
    (b) a right of personal portrayal;
    (c) a copyright;
    (d) an industrial property right;

    under the Community legislation or national law governing the protection.

    Article 52(2) of Regulation No 40/94 (now Article 53 of Regulation No 207/2009).

    In Italy, the Industrial Property Code provides a right of registration to “personal names, signs used in the artistic, literary, scientific, political or sporting fields, the designations and acronyms of events and those of non-profit making bodies and associations, including their characteristic emblems . . if they are well known . . . .”

    The problem came up after fashion designer Elio Fiorucci sold his financially distressed company to the Japanese company Edwin Co., Ltd.  The conveyance was of:

    (i) trade marks wherever registered, or trade marks for which registration has been sought in any part of the world whatsoever, and all patents, ornamental and utility models and all other distinctive signs belonging to the company Fiorucci as listed in the annex to this contract …

    – (iv) all the rights exclusively to use the designation “FIORUCCI” and exclusively to manufacture and sell the clothes and other goods bearing the name “FIORUCCI”.

    Edwin then filed an application to register the mark ELIO FIORUCCI, which was granted in 1999.  Mr. Fiorucci filed an application to revoke the trademark and for a declaration of invalidity in 2003.  The case has been winding its way through the administrative and court systems on its way to the European Court of Justice.  The decisions go back and forth on the scope and meaning of the “own name” defense in Italy, in part whether it can be relied on in cases where the name has commercial value (the IPKat gives the complicated blow-by-blow on the case here).  At the moment, the General Court has held that Mr. Fiorucci has an “own name” defense, but also did not cancel the trademark on the basis that Edwin’s claim that the ELIO FIORUCCI mark was included in the above assignment had not been decided by the OHIM Board of Appeals.
    The Advocate General just issued her opinion, a split decision that there was no legal error so Edwin’s appeal should be dismissed, but also that Mr. Fiorucci’s appeal was without legal basis.  The European Court of Justice will now decide.

    I would love to hear from European practitioners more about the “own name” defense.  Is the biggest problem in the Edwin case that the personal name issue wasn’t specifically addressed in the assignment agreement?  If the contract had been for the use of “FIORUCCI and any confusingly similar names, including ELIO FIORUCCI,” would there have been a suit?  How far does the “own name” defense go?

    But a reminder to U.S. practitioners that, when dealing with a trademark that is a personal name, be sure to very specifically address to what extent the individual may use his or her personal name in future business.

    Edwin’s Fiorucci site here.

    Fiorucci poster art here.

    Edwin Co. Ltd., Case C-263/09 P (Advocate General’s opinion top link)

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