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Tuesday, 5 July 2011

No win for Edwin as Elio gets his way

There are few more powerful motivators when it comes to trade mark litigation than the thought that one's own name is at stake. Even though most of us -- even Kats -- are actually named by our parents or owners, and most people go through phases of wanting to change them (our names, that is, not our parents or owners), the thought that someone has exclusionary rights in them can be deeply troubling.  That's probably why the dispute in Case C-263/09 P Edwin Co. Ltd v Office for Harmonisation in the Internal Market, Elio Fiorucci went all the way up to the Grand Chamber of theCourt of Justice of the European Union, which gave judgment this morning.

The background to this case is that Italian ("Love therapy") fashion designer Elio Fiorucci, who achieved a degree of renown in the 1970s in Italy, faced cash problems in the 1980s. An administrator was appointed over his company, Fiorucci SpA. In December 1990 this company sold to Edwin (a Japanese multinational) the entirety of its “creative assets”. Article 1 of the contract provided as follows:
“The company Fiorucci assigns, sells and transfers to the company Edwin … which, for its part, acquires:
– (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”.
In December 1997 Edwin applied to register the word mark ELIO FIORUCCI as a Community trade mark; registration was granted in April 1999 and all looked good for the Japanese company until February 2003, when Elio Fiorucci sought revocation and/or a declaration of invalidity.  In December 2004 he got his way: the Cancellation Division declared the mark invalid.  The Cancellation Division held that Elio Fiorucci had an earlier right under what is now Article 8(3) of the Italian Industrial Property Code; the name Elio Fiorucci was shown to be well known and there was no evidence that Elio had given his consent to registration of that name as a Community trade mark.

In April 2006 the First Board of Appeal allowed its appeal and annulled the decision of the Cancellation Division. In the Board's view, the raison d’être of Article 8(3) was to prevent third parties exploiting the name of a famous person for commercial purposes. While the Board conceded that there was not, to its knowledge, any case-law on that point, it added that “the most authoritative Italian academic writings” seemed to confirm that the raison d’être of Article 8(3) ceases where the commercial potential of a name is already fully exploited -- as Elio's had been. In this case, said the Board, the renown of the name Elio Fiorucci with the Italian public could certainly not be regarded as arising from its first use in the non-commercial sector. In any event, the public was aware that patronymics are commonly used as commercial marks, but that did not imply that those patronymics correspond to an actual person. Further, by the sale of 1990, Elio Fiorucci had waived all rights of use pertaining both to the mark FIORUCCI and to the mark ELIO FIORUCCI. Nor, since the mark ELIO FIORUCCI represented only the name of a person, but did not give any indication of a specific quality, could there be any question of the public being misled.

Getting no satisfaction from the Cancellation Division,
Elio decided to send in the heavies
Now it was Elio Fiorucci's turn to appeal, which he did.  Before the General Court he sought both the annulment of the Board's decision and a declaration revoking or declaring invalid the contested Community trade mark. The General Court rejected the plea for revocation. In its view, the particular requirements necessary for a designer name to be regarded as liable to mislead were not satisfied. In addition, no evidence of misleading use of the mark was demonstrated.  However, regarding the interpretation of Article 8(3), the Court considered that the Board’s interpretation was not confirmed by its wording, which refers to the names of well-known persons without making a distinction according to the sector in which that renown was acquired. Even on the assumption that the name of a well-known person has already been registered or used as a de facto trade mark, the protection given by Article 8(3) is not in any way superfluous or irrelevant: it cold not be not ruled out that the name of a well known person, registered or used as a mark for certain goods or services, can be the subject of a new registration for different goods or services which are not in any way similar to those covered by the earlier registration. Further, Article 8(3) did not lay down any condition other than that relating to the well known character of the personal name concerned. Thirdly, the extracts from some of the academic writings cited by the Board also did not allow the conclusion to be drawn that its interpretation of Article 8(3) was correct. Accordingly the Board, as a result of its error, incorrectly eliminated the application of that provision to the case of Elio Fiorucci’s name, even though it was not disputed that that was the name of a well-known person.

In paragraph 1 of its judgment he Court therefore annulled the Board's decision in so far as it contained an error of law in the interpretation of Article 8(3). The Court did not go so far as to cancel the registration of the ELIO FIORUCCI Community trade mark, though. On Edwin's plea that the mark ELIO FIORUCCI was included in the assignment of all the marks and all the distinctive signs, the Court held simply that such argument had not been examined by the Board of Appeal and accordingly refused to grant the application to alter the contested decision stating that that would imply, in substance, the exercise of administrative and investigatory functions specific to OHIM and would upset the institutional balance.

Edwin then challenged the judgment under appeal and sought, among other alternative pleas, to have set aside paragraph 1 of the operative part or at least to have that argument referred to OHIM for examination. OHIM argued that the Court of Justice should set aside the judgment under appeal and order Elio Fiorucci to pay the costs incurred by it. Elio Fiorucci argued that the Court of Justice should uphold various parts of the judgment under appeal, amend other parts in his favour and order that the costs of his appeal be reimbursed.

Advocate General Kokott advised that, since none of Edwin’s grounds of appeal could be upheld, the appeal must be dismissed in its entirety, though Elio Fiorucci’s application must be dismissed as inadmissible.  Today the Court agreed with her and left the General Court's decision unscathed. Its decision can be divided as follows:

Interpretation of Article 52(2)(a) of Regulation 40/94

To assess the merits of Edwin’s interpretation, it was necessary to take into consideration the wording and structure of Article 52(2) of Regulation 40/94, since it was that provision which brought Article 8(3) of the Italian law into play. Under Article 52(2)(a)
"“A Community trade mark shall... be declared invalid ... where the use of such trade mark may be prohibited pursuant to another earlier right, and in particular: (a) a right to a name; ... under the Community legislation or national law governing the protection".
In that provision, the words ‘right to a name’ do not provide any support for the restrictive interpretation proposed by Edwin that the provision concerns only that right as an attribute of personality and does not cover commercial exploitation of a name. Indeed, the structure of Article 52(2) is inconsistent with such an interpretation.

According to that provision, a Community trade mark may be declared invalid on application by a person concerned claiming ‘another earlier right’. To clarify the nature of such an earlier right, that provision lists four rights, while indicating, by the use of the adverb ‘in particular’, that that list is not exhaustive. The examples given include, besides the right to a name and the right of personal portrayal, a copyright and an industrial property right. It is apparent from that non-exhaustive list that the rights cited as examples are intended to protect interests of different types. For some of them, such as copyright and industrial property rights, the economic aspects are protected, both under the national legal systems and under European Union law, against commercial infringements.

Jurisdiction in applying Article 8(3) of the Industrial Property Code

The rule which Edwin claims to have been infringed is a rule of national law, applicable to the dispute by the reference made in a provision of European Union law, that being Article 52(2). It is apparent from the wording of that provision that, when it refers to the situation in which the existence of an earlier right makes it possible to prohibit the use of a Community trade mark, it distinguishes clearly between two situations: protection of the earlier right (i) under Community legislation or (ii) under national law.

As for the procedural arrangements laid down by the Implementing Regulations in the case of an application under Article 52(2) which is based on an earlier right protected under national law, Rule 37 of the Implementing Regulations provides that it is the applicant who must provide particulars showing that he is entitled under the national law applicable to lay claim to that right. That rule requires the applicant to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application, in order to be able to have the use of a Community trade mark prohibited by virtue of an earlier right, but also particulars establishing the content of that law. Once this is done, OHIM must assess the authority and scope of the particulars submitted by the applicant in order to establish the content of that rule. Then, under Article 63(2) of Regulation 40/94, actions may be brought before the General Court against decisions of the Boards of Appeal on grounds of infringement of the Treaty, of Regulation 40/94 or of any rule of law relating to their application. It follows from this that the General Court has jurisdiction to conduct a full review of the legality of OHIM’s assessment of the particulars submitted by an applicant in order to establish the content of the national law whose protection he claims.

Edwin's FIORUCCI designer was
great at doing heads, but never
could get the rest of the body right ...
After the General Court has made its findings with regard to that national law, the Court of Justice has jurisdiction to determine (i) whether the General Court, on the basis of the documents and other evidence submitted to it, distorted the wording of the national provisions at issue or of the national case-law relating to them, or of the academic writings concerning them; (ii) whether the General Court, as regards those particulars, made findings that were manifestly inconsistent with their content; (iii) whether the General Court, in examining all the particulars, attributed to one of them, for the purpose of establishing the content of the national law at issue, a significance which was inappropriate in the light of the other particulars, where that was manifestly apparent from the documentation in the case file. Here Edwin’s claim that the General Court interpreted Article 8(3) in a way that was inconsistent with the wording of that provision and with academic writings was not substantiated and this plea would be rejected as unfounded.

Says the IPKat, this post -- which is regrettably far too long -- only covers some of the issues raised before the ECJ: the others, relating to failure to state reasons and failure to do justice on the part of the General Court, are best omitted as desperate shots by a party that was clutching at straws.

Men's names beginning with E here
Naming of Cats here and here

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