With the decision no. 10298/2020, the Italian Supreme Court reaffirmed that the use of the surname “Fiorucci” as a trademark by Mr. Elio Fiorucci is unlawful, recalling the principle already stated in the decision no. 10826/2016 issued in the parallel proceeding between Mr. Fiorucci and Edwin Company Ltd (that was basically identical to this one in fact and in law: see our comment here on this blog).

The ruling commented upon here has been issued in the context of a long dispute between, on the one hand, the company Love Therapy S.r.l. and the stylist Elio Fiorucci, creator of the homonymous brand, and, on the other hand, the company Fiorucci Design Office S.r.l. (“FDO”), i.e. the exclusive licensee of the “Fiorucci” trademark under license from Edwin Company Ltd, that bought the “Fiorucci” trademark from the stylist’s company in the 1990s. More specifically, this case began in 2007, when FDO had become aware of the marketing by Love Therapy of products created in collaboration with Mr. Fiorucci and marked by the “Love Therapy by Elio Fiorucci” brand. In its capacity as the licensee of the “Fiorucci” trademark, FDO had therefore sued the aforementioned company and Mr. Fiorucci in order to have the Court ascertain the unlawful use of such a trademark.

The initial decision of the Court of Milan to grant FDO’s requests had subsequently been overturned by the Court of Appeal, which had found that the use of the “Love Therapy by Elio Fiorucci” trademark was lawful. The Court of Appeal, in fact, underlined that Edwin Company Ltd. had acquired the “Fiorucci” trademark from the liquidator of the Fiorucci S.p.a. company in the context of its bankruptcy, and not from Mr. Fiorucci himself. Consequently, the Court of Appeal had observed that, given the personal nature of the right to a name, the liquidator could not assign the “Fiorucci” trademark with the same powers of Mr. Fiorucci himself, i.e. in a way that comprised the exclusive right to use the Fiorucci name. Therefore, the activity carried out by Love Therapy and by Mr. Elio Fiorucci – who used the stylist’s surname and not the assigned trademark – complied with the principles of honest practices and had not caused any likelihood of confusion.

This decision was appealed before the Supreme Court by FDO, which argued that the Court of Appeal had not taken into consideration that, by using a surname including the assigned trademark, Elio Fiorucci and Love Therapy had taken an undue advantage of their Fiorucci trademark and caused a significant likelihood of confusion with their Fiorucci branded products. Moreover, the use of the contested sign could also not be considered lawful descriptive use of the sign under article 21 of the Italian IP Code, because it had been carried out with a distinctive purpose, it had hooked onto the “Fiorucci” trademark and exploited its reputation. Lastly, FDO stressed that although a subject can use his own surname corresponding to another’s trademark in the context of his professional activity under article 21(1)(a) IP Code, this possibility does not concern third parties (such as Love Therapy) and regards cases of homonymy between the owner of the surname and the owner of the trademark; not cases in which, like Fiorucci did, the owner of the surname had sold a trademark containing his surname to a third party.

First of all, the Supreme Court recalled that a sign consisting of a name legitimately registered as a trademark is usually a strong mark and cannot be used for identical or similar products, neither as a trademark nor as a company name, even if such use is made by the person who legitimately owns that name. This is because “the right to a name is not properly elided, but is certainly limited in the context of an economic and commercial activity, if it has firstly been registered and has then become well-known through the efforts of the owner itself, who then transferred it to others”. Furthermore, article 21 IP Code allows the use of a surname that includes a third party’s trademark only to the extent that such use complies with the principles of honest practices, i.e. when the surname is exploited with a purely descriptive aim and does not hook onto another’s well-known trademark, as instead happened in the case under discussion.

Therefore, recalling the principle stated in the aforementioned decision of 2016, the CJEU stated that “the inclusion in the trademark of a surname that coincides with the name of the person who had previously included it in a trademark that became famous, and then sold it to a third party, is not in accordance with honest practices if it is not justified, to a strictly limited extent, by the existence of a real descriptive need inherent in the activities, products or services offered by that person. The latter certainly has the right to carry on its own business and intellectual or creative activities, but not to transform the same business into a parallel activity to that for which the earlier mark is not only registered but has also played a significant distinctive function”.

The Supreme Court therefore upheld the appeal and ascertained the unlawful use of the “Love Therapy by Elio Fiorucci” sign by the two defendants and referred the case to the Court of Appeal for a new (umpteenth) judgment.