Automobili Lamborghini S.p.A. vs. Elettra Lamborghini – Italian Board of Appeal Case No. 29 of April 16, 2024
In a landmark case that has captured the attention of both the legal community and the Italian entertainment scene, Elettra Lamborghini, a prominent singer and social media influencer, sought to register her name as a trademark under classes 3, 9, 18, 25, and 41. This move in Italy was, expectedly, met with opposition from luxury sports car manufacturer Automobili Lamborghini S.p.A., who argued that her application infringed upon its established trademarks.
What elevates this particular Intellectual Property (IP) dispute from the legally intriguing to the culturally convoluted is the fact that Elettra Lamborghini is the granddaughter of the automaker's eponymous founder, Ferruccio Lamborghini. What is more, she has prominently featured the cars in her lyrics and music videos.
Initial rejection and opposition basis
Automobili Lamborghini S.p.A.'s opposition was rooted in Article 12, paragraph 1(e), of the Italian Industrial Property Code, which protects trademarks that enjoy widespread recognition and reputation. The Italian Patent and Trademark Office (UIBM) initially sided with the automaker, rejecting Elettra's application on account of this enhanced level of protection, regardless of the likelihood of confusion or lack thereof.
The appeal and "just cause" argument
Elettra Lamborghini contested the decision, with the case reaching the Italian Board of Appeals. The Board scrutinized the initial ruling and identified what it deemed a "just cause" for Elettra's trademark registration. That is, to deny her exclusivity would prevent her from "commercially exploiting a different and individual reputation, acquired outside and (at least in part) independently of that of the earlier trademark."
At the heart of the Board's decision was Article 8, paragraph 3, of the Italian Industrial Property Code. This provision extends trademark registration to individual names that have gained particular fame as well as similarly eminent signs used in the artistic, literary, scientific, political or sports fields and those belonging to non-commercial associations. Essentially, this paragraph allows the rightful owner of such a celebrated name or sign to register it as a trademark.
领英推荐
Legal precedents and wider implications
The Board's consideration of Elettra's just cause is particularly notable as it reflects a growing recognition of personal branding in the digital age, where individuals can amass significant influence and distinction independent of traditional marketplace engagement. This sets a critical precedent in Italian IP law that celebrity garnered outside of the business activities for which a trademark application is filed, that is, in "civil" pursuits, can uphold a patronymic registration even where a prior reputable mark exists.
Final ruling: a victory for personal branding
The Board's concluding statements were unequivocally in favor of Elettra Lamborghini:
"LAMBORGHINI is the surname of the Applicant and, along with the first name ELETTRA, has gained fame in the fashion sector. Elettra has become a brand in her own right, achieving notoriety entirely independent of the famous automotive brand. The application for registration of the name Elettra Lamborghini as a trademark is justified, as it coincides with the name of a 'famous' individual under Article 8, paragraph 3, of the Industrial Property Code. Furthermore, considering the origin of this notoriety in the 'civil' field and its alleged commercial exploitation, it is difficult to argue that the rightful owner's use of the surname 'Elettra Lamborghini' would result in an undue advantage."
This decision underscores the evolving face of trademark law, which increasingly recognizes personal identity and repute alongside their corporate equivalents. With time and exposure, the former can legitimately inform the latter, a phenomenon we are seeing with greater frequency as more individuals build influential brands through social media and other platforms.
Reflections for businesses and media personalities
The ruling from the Italian Board of Appeals can be seen as a nod to the power of personal branding in today's IP scene. As influencers and public figures continue to parlay their renown into registered trademarks, the legal system will undoubtedly see more cases that challenge traditional notions of trademark eligibility. Meanwhile, established brands and owners of prior trademarks will need IP strategies that can account for these new entrants, paying close attention to Nice Classifications, use in trade and figurative elements, as appropriate.
The Automobili Lamborghini S.p.A. vs. Elettra Lamborghini case is a testament to the complexity and nuance of modern trademark law and illustrates how legal frameworks are adapting to the realities of an interconnected world. As we continue to witness this interplay, one thing is clear: The IP landscape will keep evolving to address the unique challenges and opportunities presented by this new era of influence.