Prior use defence: Rino Gaetano’s cover band can keep the name “Ciao Rino”, says the Italian court of Cassation

With ruling no. 2671, published on 11 February 2015, the Italian Court of Cassation rejected the appeal brought by the sister of the famous Italian songwriter Rino Gaetano against a decision of the Rome Court of Appeal granting the frontman of a cover band the right to use the trademark “Ciao Rino”.

In 2004, Ms Gaetano had sued the frontman of the band before the District Court of Rome, requesting the ascertainment of her ownership of the trademark “Ciao Rino”, which she had registered in March 2001, and of its infringement by the defendant. The plaintiff also complained, in her position as heir to her brother, that the changes to Rino Gaetano’s musical works made by the band were detrimental to the honour and reputation of the artist and thus sought damages. The defendant countered by arguing that the cover band had been using the trademark (incidentally, with Ms Gaetano’s consent) for three years prior to the plaintiff’s filing of the same. The District Court found that the prior use defence was grounded and that the plaintiff lacked locus standi in connection with the alleged damages to her brother’s reputation, and thus rejected all the plaintiff’s claims.

The Rome Court of Appeal upheld the first instance ruling and Ms Gaetano brought a last instance appeal before the Court of Cassation claiming, inter alia, the misapplication of Article 8 of the Italian IP Code, which, among other things, prohibits the use as trademarks of known personal names without the consent of the individual concerned or his/her heirs.

The Supreme Court noted, incidentally, that the expression “Ciao Rino” could not have been protected as a known personal name under Article 8 of the IP Code given the absence of the last name, the only element that truly “identifies and characterises the famous name“; furthermore, in the case at issue, the appellant herself had originally authorised the band to use this expression, which would have in itself ruled out any infringement. Above all, the Court noted, this claim had never been submitted in the first instance proceedings, and the Italian Civil Procedure Code does not allow the submission of new claims in appeal proceedings.

With reference to the prior use issue, the Supreme Court found that, notwithstanding it was uncontested that the appellant was the owner of the trademark “Ciao Rino”, the former judges had correctly granted the appellee the right to continue using the trademark, albeit only locally, for all the cover band’s activities, because of its ascertained prior use, in full compliance with the relevant provisions of the Italian IP Code.

In light of these considerations, the Court of Cassation entirely rejected Ms Gaetano’s appeal.