A distinctive sign formed by a personal name and validly registered as a trade mark cannot normally be adopted as a trade mark for identical or similar products.
The person legitimately bearing said personal name is allowed a limited use only, in compliance with professional fairness, since the right to a name is subject – if not to a proper suppression – to a curtailment in business activities.
The inclusion in a trade mark of the name of a person who previously registered it as a trade mark – and then became well known – and later transferred the trade mark, is not compliant with professional fairness unless the inclusion is justified by a real need to describe the activity, the products or the services offered by that person, who surely has a right to conduct his or her own business or intellectual and creative activity, but only without creating an activity parallel to the one for which the trade mark was registered and used with a distinctive function.
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Decision of the Supreme Court of Cassation, I Civil Division 29 December 2011, Case No. 29879 – AVC by Adriana Campanile V. Campanile.
Recently, General Court, 11 July 2013, Case No. T-321/10 – SA.PAR. Srl v. OHIM; Court of Justice, 5 July 2011, Case No. C-263/09 – Edwin v. OHIM.
Translated from the original by Marco Bellia. For a case note on this decision by Marco Bellia, see this issue of IIC at doi:10.1007/s40319-017-0613-y.
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Edwin Co. Ltd et al. v. Fiorucci Elio et al. Trade Mark Directive (2008/95/EC), Art. 6; Industrial Property Law (Legislative Decree 10 February 2005, No. 30), Art. 21 . “Fiorucci”. IIC 48, 606–609 (2017). https://doi.org/10.1007/s40319-017-0614-x
- Personal name as a trade mark
- Professional fairness
- Scope of use