Wednesday May 20th 2009, by Piers Strickland
If you are a designer, think carefully before signing your brand / trade mark rights away.
A recent case, handed down by the European Court of First Instance, reinforced prior case law. This time, a designer, ELIO FIORUCCI, assigned over his IP in his business, only later to object to a trade mark application being made by the assignee for his full name to be registered as a trade mark (as opposed to the previous trade markuse of his surname only). The CFI held that the subsequent use of the designer’s full personal name as a trade mark would not mislead the public and so was registrable.
In other words, the designer, by signing away his trade mark rights in his surname and business could then not stop his former business from using his full name as well.
If you need to keep using your name for your profession / business, it would often be better only to license your trade mark rights in the first place, perhaps only on a non-exclusive basis, so as to retain more control of the future use of your trade marks.
A full transcript of the case can be found on the OHIM website: CFI case. The case went on to rule on certain specific provisions of Italian trade mark law.
