Elio Fiorucci v. Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), Case T-165/06, Judgment of the Court of First Instance (Fifth Chamber), 14 May 2009

The applicant, the fashion designer Elio Fiorucci, achieved certain renown in the 1970s in Italy. On 21 December 1990, Fiorucci sold to Edwin Co. Ltd, a Japanese multinational, the entirety of its ‘creative assets’. On 23 December 1997, Edwin Co. Ltd filed an application with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) for registration of the word mark ELIO FIORUCCI as a Community trade mark. The applicant Elio Fiorucci asks the Court to annul the contested decision [by the Board of Appeal of OHIM pursuant to which the registration of the name Elio Fiorucci as a Community trade mark by the proprietor did not fall within the condition for invalidity laid down in Article 52(2) of Regulation No 40/94] and declare invalid the Community trade mark ELIO FIORUCCI. According to the applicant, the mark ELIO FIORUCCI is, in itself, liable to mislead the public as to the stylistic origin of the goods covered by that mark. The Court of First Instance decided that the Board of Appeal committed an error of law in its interpretation of Article 8(3) of the Codice della Proprietà Industriale. As a result of that error the Board of Appeal ruled out, incorrectly, the application of that provision to the case of the applicant’s name, even though it is not disputed that that is the name of a well-known person.