When the Designer Using his Patronymic Infringes Third Parties’ Rights

The Italian Supreme Court Finally Stated on the Long-Standing Fiorucci Case

On 25 May 2016, the Italian Supreme Court released an interesting decision on the use of patronymic as a trademark, which might have significant impact for many fashion and design firms which identify themselves with the name of their founders.

Edwin Co. Ltd., Edwin International and F. Design Office, which had previously acquired from Mr. Elio Fiorucci the ownership and the right of use of several trademarks containing the name ” Fiorucci”, filed an action against the designer because he was using and applying for registration of the trademark “Love Therapy by Elio Fiorucci” to identify a wide range of goods.

According to the Supreme Court, the designer Elio Fiorucci infringed plaintiffs’ rights, being the use of the patronymic within the above mentioned trademark not consistent with the principles of professional fairness.

In particular, the judges outlined that patronymic must be evaluated as a strong trademark: therefore, its inclusion within another trademark cannot be considered lawful, unless such use is justified by a real descriptive need concerning the products, services and activity that third parties wish to identify under such trademark.

In the case at issue, the inclusion of the patronymic within the trademark would had not been justified by any descriptive need, since the designer’s activity did not involve exclusively products created by Mr. Fiorucci but included also merchandising and cobranding products and activities. Consequently the use of the patronymic let the designer to take unfair advantage of the reputation of a well-known trademark, “Elio Fiorucci”, he previously assigned to the plaintiffs.

With this judgement, the Supreme Court came back again on the use of patronymic in the fashion and design sector after similar court battles, such as the one between Guccio Gucci S.p.A. and Elisabetta Gucci on the use of the relevant name “Gucci” that hit the headlines in 2010.

Authors: Alessandra Feller and Alessia Castelli