12.9.2009

Official Journal of the European Union

C 220/25

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(Case C-263/09 P)

2009/C 220/51

Language of the case: Italian

Parties

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

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

Form of order sought

—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.

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.

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.

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)

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

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

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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