Abstract
Using your own name in business does not necessarily mean you are free to use it as a trademark. In Judgment No. 10298 of 29 May 2020, the Italian Supreme Court revisited the Fiorucci case, clarifying a particularly sensitive issue: someone who has transferred a trademark based on their surname may continue to use that name, but only in accordance with fair commercial practices. Most importantly, they cannot exploit their surname to benefit from the reputation and commercial value of a trademark that now belongs to someone else.
What happens when your surname becomes someone else's trademark?
The dispute arose following the transfer of the historic “Fiorucci” trademark. In 1990, the trademark rights were acquired by Edwin Company Limited, while Fiorucci Design Office Srl became the exclusive licensee for Italy.
Years after the transfer, Elio Fiorucci returned to the market with the sign “Love Therapy by Elio Fiorucci”, which was used, among other things, for a limited-edition body spray and a kit including a sarong. Fiorucci Design Office argued that this use infringed the “Fiorucci” trademarks and brought infringement proceedings.
The Court of First Instance initially upheld the claim. However, the Milan Court of Appeal dismissed it, attaching particular importance to the fact that Edwin had acquired the trademarks from the liquidator of Fiorucci S.p.A., as part of composition with creditors proceedings, rather than directly from the designer himself. On that basis, the Court of Appeal considered the subsequent use of the name lawful. The Supreme Court, however, found that this conclusion had not been adequately reasoned.
The real issue was not simply whether Elio Fiorucci retained the right to his own name. The question was different: how could he use that name once his surname had become a trademark belonging to another party?
This was precisely the question at the heart of the Supreme Court’s assessment.
Does the right to your own name also entitle you to use it as a trademark?
A person retains the right to their own name even after transferring a trademark that contains it.
However, the right to a name and the right to use that name as a distinctive sign in business are not necessarily the same thing.
Article 21(1)(a) of the Italian Industrial Property Code allows individuals to use their own names in the course of trade, provided that such use complies with the principles of fair commercial practice. The right to a name therefore does not authorise every possible commercial use of a surname.
The Supreme Court emphasised that, where a name has been registered as a trademark and has acquired a reputation, the original holder’s ability to use that name in business may be significantly restricted.
In particular, case law distinguishes between descriptive use of a name – for example, where necessary to identify a person and their professional contribution – and use as a distinctive sign, where the name serves to identify products or services in the eyes of consumers.
The relationship between a founder’s name and trademark registrability was also examined in the RADA v PRADA case: the fact that a sign corresponds to a person’s first name or surname does not automatically give it preferential treatment over existing trademark rights.
When can using your own name become a legal problem?
According to the Supreme Court, it is not enough to establish that the name genuinely belongs to the person using it. What matters is how that name is actually used in the marketplace.
Where a surname forms part of a famous trademark that has subsequently been transferred, using the same name in a new sign may only be justified by a genuine descriptive need, subject to clearly defined limits.
It should not, however, become a means of establishing a parallel business that exploits the distinctive character and reputation built up by the earlier trademark.
Courts must therefore assess, for example, whether the way in which the name is presented could suggest a commercial connection with the earlier trademark; whether the new sign takes advantage of its reputation; or whether its use ultimately weakens the distinctive character of the transferred trademark. The Supreme Court expressly referred to European case law (Case C-228/03), according to which use that suggests a connection with the trademark owner or allows a party to take unfair advantage of the trademark’s reputation is incompatible with honest commercial practices.
For this reason, the Supreme Court criticised the Court of Appeal’s decision: merely referring to Elio Fiorucci’s personal right to his own name was not sufficient. It was also necessary to assess any unfair advantage gained from using the surname and any harm caused to the owner of the earlier trademark.
The Supreme Court therefore set aside the judgment and referred the case back to the Milan Court of Appeal for a fresh assessment.
What should be considered when selling a trademark based on the founder’s name?
The Fiorucci case illustrates why transferring a trademark based on a person’s name requires greater caution than selling an ordinary invented brand name.
Where the founder’s name is central to the brand’s identity, it is not enough simply to establish who will own the trademark registrations. It is also advisable to regulate what the founder will be allowed to do after the transfer: whether they may use their name in professional communications, collaborations, creative credits or new projects; in which business sectors; in what graphic form; and, above all, whether they may incorporate it into a new distinctive sign.
Even expressions such as “created by Mario Rossi” require a case-by-case assessment. It is necessary to verify that the claimed contribution is genuine and that, considering the name’s placement, size and context, it serves to identify that contribution without functioning as the trademark of the new product line. Simply adding “created by” or “by” does not automatically make the commercial use of a surname lawful.
When a surname is also a brand, the boundary between personal identity and trademark use depends primarily on the specific circumstances: the trademark assignment agreement, the products involved, how the name is presented and the reputation acquired by the trademark.
Reviewed by: Arlo Canella
Publication date: 20 October 2026
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Margherita Manca
Avvocato presso lo Studio Legale Canella Camaiora, iscritta all’Ordine degli Avvocati di Milano, si occupa di diritto industriale.