In 1990, Fiorucci sold his brands to Edwin International Gmbh and Edwin Co Ltd. and ceased collaborating with them in 2002. However, he did not buy back his brand names and their trademarks.
According to Martini Manna Avvocati, the italian designer’s brand “Love Therapy by Elio Fiorucci”, used for sweetener products as well as for fashion items such as clothing, footwear, jewellery and handbags was accused of infringing on the Fiorucci trademarks that are owned by the aforementioned companies and competing unfairly.
After the Milan court found the Fiorucci guilty only of infringement and then Court of Appeal ruled in his favour, Edwin appealed to the Supreme Court.
The Supreme Court declared that a surname can only have a descriptive function, not a trademark function and that a company that owns a trademark cannot lawfully deny another company the right to use their name in business as long as they are providing different goods and services. Therefore in the case of the Fiorucci brand, the italian designer cannot legally use his name as a trademark since he is selling the same type of goods as Edwin, the owner of the trademark.
The court went on to say 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." They also stated that the Italian fashion designer is not restricted from developing his own business but that he is not allowed to market a brand parallel to that which he used to own the rights to and is now owned by another.
The Supreme Court has now revoked the Court of Appeal’s ruling and has passed the case back to them for a new ruling. We shall have to wait to hear the outcome.
An important lesson that can be learnt from this case is that when trademarking your own name, it is better to licence it to others rather than sell it in order to avoid any future complications. As the Fiorucci case has proven, a trademark can be a very valuable asset as it will protect your brand and allow you to enforce your trademark rights over other companies that may infringe upon your mark.
For advice and more information on searching, acquiring, registering and enforcing Trademarks please visit our website, http://www.lipex.com.
Our unique database of trademarks for sale or license could save you time and help protect your brand.
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