The Italian Supreme Court has fully upheld the appeal filed by Edwin against the judgment of the Milan Court of Appeal that had established the legitimacy of the use by Elio Fiorucci of the trademark “Love Therapy by Elio Fiorucci” and other similar marks, which litigation started after the breakdown of the contractual relationship between the two parties. The Supreme Court considered founded all seven grounds of appeal presented by Edwin and quashed the ruling on Appeal, setting aside the decision of the Court of Appeal of Milan and returning the proceedings to the lower court.
Edwin was assisted by Osborne Clarke partner Diego Rigatti, who has acted for Edwin in this matter for over 15 years and which matter still has many open issues at litigation. Rigatti commented: “The satisfaction on reaching this result is huge. This ruling, in fact, becomes key in the interpretation of article 21 Intellectual Property Code with respect to brands using surnames originated by stylists and designers, the so-called “creators of taste and fashion”.
In particular, the Supreme Court ruled that a distinctive sign consisting of a person’s name and validly registered as a trade mark cannot be re-adopted as a trademark, in related goods sectors, even by a person bearing that name; the right of the individual bearing that name to use the same is limited in the ambit of the economic and commercial activity when it was previously the object of registration and subsequently became notorious.
The Court also ruled that the inclusion in the label of an identical surname to that already used by an individual in a registered mark that has become famous and then transferred to third parties, is not in line with honest business practices unless it is justified by a real descriptive need inherent to the business; however, it precluded that the latter can be transformed into an activity parallel to that for which the earlier mark has already been registered and has carried out a distinctive function.
