By PI order of December 27, 2023, the IP Specialized Division of the Court of Rome provided some interesting remarks regarding the legitimacy of name protection rights when using a third-party stage name as a company name, insignia, and de facto trade mark.

In particular, the Court has ordered an Italian pizzeria to remove all references to the name of the famous Italian actor.

Totò (Antonio Griffo Focas Flavio Angelo Ducas Comneno Porfirogenito Gagliardi De Curtis di Bisanzio)

Background

Totò, was a Neapolitan actor, playwright, poet, and screenwriter. He is recognised as a symbol of Italian comedy and known as “Principe della risata” (Prince of laughter). He is one of the most beloved and appreciated faces in Italian cinema. In other words, Totò is a true national cultural symbol.

To honor the Prince of laughter following his death, numerous pizzerias and restaurants across Italy adopted his name as their insignia and corporate name.

In the first years following his death, Totò’s daughter, Liliana De Curtis, did not made any claims against the owners of said pizzerias and restaurants distinguished by her father’s name.

However, the situation drastically changed upon Liliana’s death.

In fact, her sons, who inherited the rights of exploitation of the name – which, amongst the others, includes rights of commercial exploitation – filed a PI application aimed at preventing the use of their grandfather’s name as a distinctive sign of third parties’ commercial business.

The heirs claimed that the use of the name Totò without their permission infringed their economic rights linked to the famous comedian’s stage name.

The case

In the present case, Totò’s heirs filed an application before the Court of Rome claiming that the use of the name Totò – as an insignia, company name, domain name and, in general as distinctive sign – made by the defendant was unlawful.

The above-mentioned claims are grounded on Articles 7 and 9 of the Italian Civil Code (“ICC”) as well as Article 8 of the Italian Intellectual Property Code (“IIPC”), which covers name protection rights.

Notably, pursuant to:

• Article 7 ICC, “The person, whose right to the use of his or her own name is challenged or who may be prejudiced by the use that others unduly made of it, can judicially claim the termination of the damaging fact” as well as the compensation for damages;
• Article 9 ICC, “a pseudonym, used by a person in such a way that has acquired the significance of a name” can be protected by requesting an injunction aimed at inhibiting the continuation of any activity damaging to the pseudonym itself;
• Article 8(3) IIPC, person’s names, if well-known, can be registered or used as a trademark only by the person entitled thereto, with his/her consent or with the consent of his/her heirs.

Guidance on name protection rights

First, the Court of Rome, recalling the Italian Supreme Court’s decision n. 11129/2003, clarified that the use of a third party’s name within a company name can be considered lawful only with the prior consent of the party concerned and if such use does not cause prejudice to the party concerned.

The Court further clarified that it is not necessary for actual prejudice to have occurred; the mere potentiality of prejudice is sufficient.

On the merits, the Court turned its attention to the defendant’s arguments regarding the use of the name Totò.

Notably, the defendant argued that the use of the Totò sign was aimed at describing the geographical provenance (i.e., Naples, Totò’s hometown) of the products marketed.

However, the Court noted that the use of the Totò pseudonym cannot be classified as descriptive.

Indeed, Article 13 IIPC, which states that signs “which may be used in trade to designate … the geographical origin … of the goods or the service or other characteristics of the goods or services shall not be registered as trademarks”, clarifies that such use of another’s well-known name is wrongful and unjustified.

Further, the Court relied on Article 8 IIPC, which states that “if well-known, personal names and signs used in the artistic field may be registered or used as a trademark only with the consent of the person entitled and, after his/her death, of the latter’s relatives”.

Such a limitation, when considering the principle of unity of distinctive signs as referred to in Article 22 IIPC, applies not only to registration as a trademark but also for the use of a well-known name of a person as a company name, insignia, or domain name.

In the light of the above, the Court ordered the defendant to remove the name Totò from its company name, social profile name, domain name, e-mail address, and insignia.

The Court, therefore, held in favor of Totò’s heirs and granted a protection of the right to the name and by extension, granted the heirs the right to prevent the use of their grandfather’s name in the absence of their authorization.

Remarks

The order of the Court of Rome represents an important decision since it confirms the relevance of name protection rights of public figures, even postmortem.

Indeed, this decision asserts the principle that the identity of public figures must be protected, even after their death, to avoid undue exploitation and to preserve the cultural and moral value associated with such persons.

To summarise, Totò remains, and must remain, a symbol of Italian culture, and must be respected and protected in his integrity.