Scope of Consultancy: Right to Use One's Own Name
Avv. Fulvia Sangiacomo describes a recent case relating to the right to use one's own name. For reasons of sensitivity, the client's true name has been omitted.
Case summary
The lawyers of Mr ROSSI (fictitious name to protect the anonymity of the Biesse client) requested technical assistance from BIESSE in defending their client, who claimed the right to use his first and last name in the company name of his new business (MARIO ROSSI XX Srl) after Mr ROSSI had left the family company (ROSSI Spa).
Scope of the advisory services:
As established in the context of the RIGHT TO USE ONE'S OWN NAME, a distinctive sign consisting of a registered name cannot, as a rule, be adopted either as a trade mark or as a company name, if already used or registered by third parties in identical or similar product or service sectors, not even by the person who lawfully bears that name. Mr ROSSI therefore did not have the right to use his first and last name in the name of his new business in the manner he had chosen.
Advisory services provided:
Biesse provided guidance on the actions to be taken in advance of an important sector trade fair in Germany, in order to protect his client, implementing preventive measures (filing preventive defence briefs before the competent German court, known as Schutzschrift) to limit access to Mr Rossi's exhibition stand by his competitors (ROSSI Spa) and prevent any consequent reputational damage.
Results achieved:
Biesse supported the client in formulating a settlement agreement under which Mr ROSSI undertook to change the company name and the mark of his products, while obtaining permission to include on the products and their packaging the wording DESIGNED BY MARIO ROSSI or equivalent wording.
Avv. Fulvia Sangiacomo
CASE DETAILS: RIGHT TO USE ONE'S OWN NAME
The question:
Mr MARIO ROSSI (fictitious name) worked for several years at the family company ROSSI SPA, well known internationally. Mr ROSSI was a shareholder, CEO, and designer of the most successful products.
For family reasons, Mr ROSSI decided to leave the family company and set up his own business in the same sector, which he was not prohibited from doing as no non-compete clause was required at the time of the buy-out of his shares.
Mr ROSSI launched the new business under the name MARIO ROSSI XX SRL, created new products, and brought them to market under the mark MARIO ROSSI XX. ROSSI SPA reacted immediately with precautionary proceedings for seizure and injunction, based inter alia on a series of marks registered in Italy and abroad. Mr ROSSI's lawyers then requested BIESSE's technical assistance in defending their client, who claimed the right to use his name in the new business.
Advisory services provided:
BIESSE highlighted that, under established law and case law, a distinctive sign consisting of a registered name cannot, as a rule, be adopted either as a trade mark or as a company name, if already used or registered by third parties in identical or similar product or service sectors, not even by the person who lawfully bears that name, except under the principle of professional correctness. This is because, in the context of economic and commercial activity, the right to a name is restricted where it has become the subject of registration by others.
It follows that the inclusion in a company name of a member's name coinciding with a first name already included in a third party's registered mark is not permitted.
The commercial use of a patronymic, corresponding to a mark already registered by others, in order to comply with the principles of professional correctness, cannot be used as a mark (i.e. in a distinctive function) but only in a descriptive manner. Adding a first name to a surname is not in itself sufficient to exclude unlawfulness. Mr ROSSI therefore did not have the right to use his name in his new business in the manner in which he was doing so.
Since Mr ROSSI was about to exhibit products at an important trade fair in Germany, BIESSE advised his lawyers to file a preventive application before the competent German court, to prevent any action by ROSSI SPA during the fair (known as a Schutzschrift). BIESSE assisted Mr ROSSI's lawyers in this preventive procedure in Germany, thanks to which Mr ROSSI suffered no access to his fair stand and avoided all consequent reputational damage.
With BIESSE's support, the parties subsequently reached a settlement agreement under which Mr ROSSI undertook to change the company name and the product mark, but obtained permission to include on the products and their packaging the wording DESIGNED BY MARIO ROSSI (or equivalent wording) in dimensions and form sufficient to maintain his recognition as a designer in the market.
