Elettra Lamborghini and the patronymic trade mark

 

The Board of Appeals of the Italian Patent and Trademark Office (UIBM) recently issued a decision in favour of Elettra Lamborghini, allowing her to register her name as a trade mark despite the opposition from well-known car manufacturer Automobili Lamborghini.

Facts of the case

Elettra Lamborghini, granddaughter of the founder of Automobili Lamborghini (Lamborghini), has built a career in the entertainment industry, participating in various international reality shows and releasing successful music.

On 02 May 2019, Elettra Lamborghini (the Applicant) filed before the UIBM the application for registration No. 302019000029288 for the word Italian trademark “Elettra Lamborghini” in classes 3, 9, 18, 25 and 41.

Lamborghini filed an opposition claiming that, in view of the identity or similarity of the goods and the strong similarity between the trade marks, being identical in the dominant component “LAMBORGHINI”, a likelihood of confusion and free riding would subsist between the two signs. The opposition was based on several word and figurative Italian and UE trademarks, including those pictured below.

The Opposition Division did not deem it necessary to examine the existence of a likelihood of confusion as it refused the registration on the ground of free riding.

The Applicant appealed.

The decision

By decision on 16 April 2024, the Board of Appeals of the UIBM upheld the appeal.

The Board ruled that the right to register one's own name is not absolute, but the provision contained in art. 8, par. 3, in the Italian Industrial Property Code (IPC) grants enhanced protection to the owner of a name that has become known outside the business activity, as it is in the case at hand “in the artistic, literary, scientific, political or sporting fields”.

Lamborghini is the Applicant's surname which, together with her first name Elettra, has become famous in the artistic industry and on social networks, having acquired notoriety completely independently of the famous automotive trade mark. This is a prerequisite to exclude undue advantage. According to the Board of Appeal, considering the origin of that reputation acquired in the civil sphere and its intended exploitation for commercial purposes, it is difficult to argue that the use of the patronymic “Elettra Lamborghini” would take unfair advantage of the distinctive character or reputation of the earlier mark “Automobili Lamborghini.” On the contrary, the refusal of registration by the UIBM, if confirmed, would prevent the Applicant from commercially exploiting her own and different reputation, acquired outside and (at least in part) independently of that of the earlier trade mark.

Comment

The decision represents a significant case not only in Italy. It clarifies that notoriety acquired in different fields can justify the registration of a name as a trade mark, even when there is a strong association with a prior existing well-known trade mark. In this case the Applicant has given strong evidence of this notoriety (e.g., through 154 million views of one of her musical videos in 2018).

This decision follows the Lionel Messi case (C-449/18 see The IPKat here), where the personal fame and reputation of the world-renowned football player were deemed relevant for trade mark registration, and the Picasso case (C-361/04 see The IPKat here).

The Court of Justice of the European Union (CJEU) and the General Court have addressed several cases involving patronymic trademarks, dealing with issues like distinctiveness, likelihood of confusion, and the rights of individuals to use their names in commerce (C-51/09, C-404/02, C-245/02, C-487/07).

Patronymic trademarks often carry strong associations with individual designers or founders, helping to establish a specific brand identity. These trademarks can evoke a sense of heritage, craftsmanship and personal connection. However, they also raise legal challenges related to distinctiveness, potential confusion and the balance between personal and commercial rights. It is worth recalling the recent case referred to the CJEU (C-168/24 see The IPKat here), where the French Supreme Court addresses legal issues regarding the potential deceptiveness of a trade mark for an eponymous fashion brand if the designer dies, retires or leaves the company.

 

 

Picture Elettra Lamborghini Wikipedia

Image of the cat istockphoto, Olga Kholiavina