http://ipkitten.blogspot.com/2024/05/elettra-lamborghini-and-patronymic.html
The Board of Appeals of the Italian Patent and
Trademark Office (UIBM) recently issued a decision
in favour of Elettra Lamborghini, allowing her to register her name as a trade mark
despite the opposition from well-known car manufacturer Automobili Lamborghini.
Facts of the case
Elettra Lamborghini,
granddaughter of the founder of Automobili Lamborghini
(Lamborghini), has built a career in the entertainment industry, participating
in various international reality shows and releasing successful music.
On 02 May 2019, Elettra Lamborghini (the
Applicant) filed before the UIBM the application for registration No. 302019000029288
for the word Italian trademark “Elettra Lamborghini” in classes 3, 9, 18, 25
and 41.
Lamborghini filed an opposition claiming that, in
view of the identity or similarity of the goods and the strong similarity
between the trade marks, being identical in the dominant component “LAMBORGHINI”,
a likelihood of confusion and free riding would subsist between the two signs. The
opposition was based on several word and figurative Italian and UE trademarks,
including those pictured below.
The Opposition Division did not deem it necessary
to examine the existence of a likelihood of confusion as it refused the
registration on the ground of free riding.
The Applicant appealed.
The decision
By decision
on 16 April 2024, the Board of Appeals of the UIBM upheld the appeal.
The Board ruled that the right to register
one’s own name is not absolute, but the provision contained in art. 8, par. 3, in the
Italian Industrial Property Code (IPC) grants enhanced protection to
the owner of a name that has become known outside the business activity, as it
is in the case at hand “in the artistic, literary, scientific, political or
sporting fields”.
Lamborghini is the Applicant’s surname which,
together with her first name Elettra, has become famous in the artistic industry
and on social networks, having acquired notoriety completely independently of
the famous automotive trade mark. This is a prerequisite to exclude undue
advantage. According to the Board of Appeal, considering the origin of that
reputation acquired in the civil sphere and its intended exploitation for
commercial purposes, it is difficult to argue that the use of the patronymic “Elettra
Lamborghini” would take unfair advantage of the distinctive character or
reputation of the earlier mark “Automobili Lamborghini.” On the contrary, the
refusal of registration by the UIBM, if confirmed, would prevent the Applicant
from commercially exploiting her own and different reputation, acquired outside
and (at least in part) independently of that of the earlier trade mark.
Comment
The decision represents a significant case not
only in Italy. It clarifies that notoriety acquired in different fields can
justify the registration of a name as a trade mark, even when there is a strong
association with a prior existing well-known trade mark. In this case the
Applicant has given strong evidence of this notoriety (e.g., through 154
million views of one of her musical videos in 2018).
This decision follows the Lionel Messi case (C-449/18
see The IPKat here), where the personal
fame and reputation of the world-renowned football player were deemed relevant
for trade mark registration, and the Picasso case (C-361/04
see The IPKat here).
The Court of Justice of the European Union (CJEU)
and the General Court have addressed several cases involving patronymic trademarks,
dealing with issues like distinctiveness, likelihood of confusion, and the
rights of individuals to use their names in commerce (C-51/09,
C-404/02,
C-245/02,
C-487/07).
Patronymic trademarks often carry strong
associations with individual designers or founders, helping to establish a specific
brand identity. These trademarks can evoke a sense of heritage, craftsmanship
and personal connection. However, they also raise legal challenges related to
distinctiveness, potential confusion and the balance between personal and
commercial rights. It is worth recalling the recent case referred to the CJEU (C-168/24
see The IPKat here),
where the French Supreme Court addresses legal issues regarding the potential deceptiveness
of a trade mark for an eponymous fashion brand if the designer dies, retires or
leaves the company.
Picture Elettra
Lamborghini Wikipedia
Image of the
cat istockphoto, Olga Kholiavina
Content reproduced from The IPKat as permitted under the Creative Commons Licence (UK).