Italian fashion designer Alviero Martini protected by the Court of Milan against the use of his name as a trademark by its former company Alviero Martini SpA
Italy Studio IP Law Galli, Milan Brescia Parma Verona
On April 8 2014 the Court of Milan, Company and IP Specialized Division issued a landmark decision concerning the right of a fashion designer to keep doing exclusive use of his/her name as a trademark, after being ousted from the company where he used to work and which still holds the rights both on trademarks comprising also the stylist’s name and on the company name, consisting of the same name followed by the initials specifying the type of company (in this case, “S.p.A.”, which in Italian is the acronym for joint stock company).
The case concerned the well-known fashion designer Alviero Martini, creator of the famous print “Geo”, who left in 2005 the company he had founded – company which still bears his name (Alviero Martini S.p.A.) and holds several trademarks he had created, including “Alviero Martini Prima Classe” (where the fonts used for “Alviero Martini” are smaller and less evident than those used for the words “Prima Classe”). The decision held that, notwithstanding the existence of such trademarks, the exclusive right of using the name “Alviero Martini” in the course of trade still belongs to the designer, as a well-known sign, protected by art. 8(3) of the Italian Code of the Industrial Property (ICIP). Accordingly, the decision found the use done by the company of the name Alviero Martini alone on an apparel product (i.e. not in the context of the trademark “Alviero Martini Prima Classe”) wrongful, prohibited the continuation of such illicit behavior and ordered the company to pay damages to the stylist.
The Court also found the company liable for breach of the contract governing the relationship between the parties, both for having used the name Alviero Martini alone in its business, and for having failed to communicate the end of the collaboration of the stylist with the company.
Instead the Court rejected the further designer’s claim of forfeiture for deceptiveness of the company’s trademarks, since it did not considered fully proved that the company “actively operated, with specific and concrete means, for the purpose of confirming in the consumer’s perception that the assigned trademarks maintained a persistent connection with the person and the activity of the designer, now totally stranger to them”.
The decision is therefore important from two respects. On one side, it confirms that the Italian law gives to the holder of a famous name not just the (exclusive) right to register his name as a trademark (see the famous case Fiorucci: EC Court of First Instance, Div. V, May 14 2009, in the proceedings T-165/06, later on confirmed by EU Court of Justice, July 5 2011, in the proceedings C-263/09 P), but also the exclusive right on the use of the name, in every context in which the use implies an hitching to its celebrity or involves a recall to the person who bears the famous name or owns rights thereof.
Indeed Article 8 ICID has been amended in 2010 and now expressly provides for this protection (see GALLI, Codice della Proprietà Industriale: la riforma 2010, Milano, 2010, p. 22 e ss.). Therefore, well-known signs are considered in Italy a sui generis category of the distinctive signs, protected (even without being registered as trademarks) against every commercial initiative aimed at exploiting the market value of such signs without authorization. This is consistent with a comprehensive system for the protection of celebrity (civil and commercial), and in general of the value of the sign as a communication tool, by protecting both the right owner against any behavior which constitutes a parasitic exploitation of such value and the public against deception. These two protections, considered as a whole, represent in the perspective of the Italian scholars and case law the rationale of the rules on distinctive signs.
On the other side, consistently with such general approach, the decision also confirms that in Italy the deception of the public is relevant, also for causing the forfeiture of trademarks, not just when it regards the material features of the products, but also when it concerns any other circumstance (including the stylistic paternity) which is essential in the consumers’ opinion, and so it gives rise to forfeiture every time that the right holder does not comply with the message connected with his/her trademark (see, among Italians scholars, VANZETTI-GALLI, La nuova legge marchi², Milano, 2001, at page 5; FRASSI, Lo statuto di non decettività del marchio tra diritto interno, diritto comunitario ed alla luce della disciplina sulle pratiche commerciali ingannevoli, in Riv. dir. ind., 2009, I, at pages 29 ff.; GALLI, Lo statuto di non decettività del marchio: attualità e prospettive di un concetto giuridico, in Studi in memoria di Paola Frassi, Milano, 2010, at pages 371 ff.; and RICOLFI, in AUTERI-FLORIDIA-MANGINI-OLIVIERI-RICOLFI-SPADA, Diritto industriale. Proprietà intellettuale e concorrenza³, Torino, 2009, at page 114).
The decision seems anyway not to share completely such approach, since it does not burden the right holder with a positive and permanent “duty to inform the public”, for the purpose of avoiding the forfeiture, but simply with a “duty to use the mark in a not-misleading manner”, i.e. the right holder shall avoid misleading behavior, but is not required to correct an actual deception of the public not caused by his/her positive behavior.
This, however, does not seems to be consistent with the primary importance that the perception of the public plays in the area of distinctive signs. In particular, the Italian scholars highlighted, especially for fashion products, the existence of “immaterial” features (first of all creative paternity and stylistic consistency) which take on critical importance for consumers. Indeed, the fact that trademarks are nowadays protected against not-confusing uses of same or similar signs, when such uses prejudice the distinctiveness or reputation of the trademark or hook up to it, requires an extensive protection against the deception of the public as well, from the perspective, alrwady mentioned, of balancing the different interests in the field – right holders, competitors and consumers – and coordinating trademark law with the other aspects of business communication, like advertisement (GALLI, Lo statuto di non decettività del marchio: attualità e prospettive di un concetto giuridico, cit.).
Therefore, beyond the specific case (which cannot be examined here), this decision is an important element of debate on the topic of the functions of trademark and other distinctive signs, as well as on the necessity to adjust the assessments on its validity and protection to the reality of the market.
Cesare Galli, IP Law Galli, Milan