Edwin Or Lose: Prior Rights In Personal Names

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.