Edwin Or Lose: Prior Rights In Personal Names

Author:Mr Tom Scourfield and Stuart Helmer
Profession:CMS Cameron McKenna LLP
 
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The Italian fashion designer Elio Fiorucci enjoyed victory at last when the Court of Justice of the European Union confirmed that, where national law permits, an individual can prevent the use of his name as a Community trade mark even if that name has already been commercially exploited.

By contrast, in a previous ECJ decision, ELIZABETH EMANUEL, the ECJ held that where a person had previously exploited their name commercially, the registration would not become misleading, and therefore revocable, on the grounds that the person was no longer involved in that commercial activity. This decision offers a new opportunity for people whose names are registered as trade marks to revoke such registrations. However, it will be of concern to assignees of such trade marks, who will understandably consider that, where an assignment includes a trade mark consisting of a personal name, the assignor should be taken as having consented to the continued registration of that name.

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The Italian fashion designer Elio Fiorucci enjoyed victory at last when the Court of Justice of the European Union confirmed that, where national law permits, an individual can prevent the use of his name as a Community trade mark even if that name has already been commercially exploited.

By contrast, in a previous ECJ decision, ELIZABETH EMANUEL, the ECJ held that where a person had previously exploited their name commercially, the registration would not become misleading, and therefore revocable, on the grounds that the person was no longer involved in that commercial activity. This decision offers a new opportunity for people whose names are registered as trade marks to revoke such registrations. However, it will be of concern to assignees of such trade marks, who will understandably consider that, where an assignment includes a trade mark consisting of a personal name, the assignor should be taken as having consented to the continued registration of that name.

Article 52(2) of Regulation 40/94 on the Community trade mark, as amended by Council Regulation (EC) No 422/2004, states under the heading "Relative grounds for invalidity":

"A Community trade mark shall also be declared invalid on application to [OHIM] or on the basis of a counterclaim in infringement proceedings where the use of such trade mark may be prohibited pursuant to another earlier right, and in particular:

(a) a right to a name; (b) a right of...

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