It's my name and you can’t use it!
Posted: 14th September 2011
Within the EU, names can be registered as Community Trade Marks (CTMs).
Recently, the European Court of Justice (ECJ) refused to allow fashion designer Elizabeth Emanuel to obtain revocation of a CTM issued using her name, registered by another company. She had previously exploited her name for business purposes and it had been assigned. She argued that the fact that she was no longer involved in the business using the CTM made the use of her name misleading. The ECJ could not accept that argument.
However, this is not a rule of thumb. In another case, the ECJ ruled that where the national law allows it, an individual (in this case Elio Fiorucci) can prevent the use of their own name as a CTM, even if the name has already been commercially exploited. In this instance, the ‘creative rights’ of the man’s business had been transferred when his company foundered, but he had not given assent to the registration of the CTM bearing his name.
What is the difference between the two? In the second case, Mr Fiorucci based his claim on EU trade mark law, which provides that a trade mark may be prohibited pursuant to another earlier right (in this case his previously established right to use his name). Because Italian law had incorporated this provision, he was successful