Use of a Designer’s Name in a Trade Mark

The Court of Justice of the European Union recently ruled on whether a trade mark made up of a designer’s surname can be revoked. The issue was whether revocation is possible if the mark is used in a way that misleads consumers into thinking the designer is still involved when they are not. Read our analysis of the case and the key learnings for fashion designers and companies acquiring fashion brands, written by our Intellectual Property team.

The European Union’s top Court, the Court of Justice of the European Union (CJEU) recently had to consider whether a trade mark consisting of a designer’s surname is liable to be revoked. The question was whether revocation applies if the mark is used in a way that deceives the public into believing that the designer has designed the goods bearing the trade mark. A similar issue arose in 2016. At that time, the UK High Court held that Karen Millen, the fashion designer and co-founder of the Karen Millen brand, was prohibited from using:

• Her name
• KM
• K.Millen, or
• Any other confusingly similar names in connection with clothing and homeware

In that case, Karen Millen had sold the majority stake in the Karen Millen brand to a third-party company and all goodwill in her name. We review the recent CJEU decision, and provide key takeaways for the fashion sector.

Background

A dispute arose between two French companies, PMJC SAS and Créative SAS, and concerned two trade marks owned by PMJC. The trade marks were word marks for JC de CASTELBAJAC, the surname of the fashion designer, Jean-Charles de Castelbajac. Due to insolvency proceedings of the designer’s company, the trade marks were assigned to PMJC in 2011/2012.

PMJC brought a trade mark infringement claim against Mr Castelbajac in 2018. The claim related to the trade marks that it had acquired. By way of counterclaim, Mr Castelbajac sought to have the trade marks revoked on the basis that PMJC had been using the marks in a deceptive manner from the end of 2017 to the start of 2019. In particular, Mr Castelbajac argued that PMJC had used the trade marks in such a way as to make the public believe that Mr Castelbajac had designed the products on which the marks were affixed. In a judgment dated October 2022, the Paris Court of Appeal partially revoked PMJC’s rights to the trade marks. The Court found that the trade marks in question had become deceptive.

Appeal to the Court of Cassation

PMJC appealed the Paris Court of Appeal decision. It argued that any conduct on its part intended to make the consumer believe that the designer was still involved in the design of the goods could not affect the trade mark itself. This was a case, it argued, even if that conduct was held to be deceptive. Before making a decision on the appeal, the Court of Cassation, the highest French Court, decided to stay the proceedings and to refer the following question to the CJEU for a preliminary ruling:

“Must EU law be interpreted as precluding the revocation of a trade mark consisting of a designers surname on the grounds that it is used after it has been assigned in such a way as to make the public believe that the designer in question is still involved in the design of the goods bearing the trade mark, when that is no longer the case.”

CJEU ruling

In answering this question, the CJEU ruled as follows:

1. In accordance with EU law, a trade mark may be liable to revocation if, after the date on which it was registered, ‘as a result of the use made of it’ by the owner of the trade mark or with their consent relating to the goods or services for which it is registered, it is liable to mislead the public. It may be misleading ‘particularly as to the nature, quality or geographical origin’ of those goods or services.
2. The use of the adverb ‘particularly’ in the legislation referenced in point 1 above means that the list of characteristics of goods or services to which the deception might relate is not exhaustive. Therefore, it cannot be excluded that the trade mark is revoked because there is a risk of deceit relating to the person having designed the goods bearing the trade mark or having contributed to their design.
3. The creative origin of a product may, depending on the circumstances, constitute a characteristic of that product and as a result, give rise to certain expectations by the public. Therefore, creative origin is among the aspects which may mislead the public.
4. The fact that a trade mark consisting of the name of a fashion designer is used by an undertaking that the designer no longer has a connection is not sufficient, in itself. It does not, on its own, justify the revocation of that trade mark. This is because the average consumer, who is reasonably well informed and reasonably observant and circumspect, is conscious of the fact that not all the goods bearing a trade mark containing the name of a designer necessarily have been created by that designer.
5. The question whether the use made of the trade mark is likely to mislead the public must be examined carefully. All circumstances relevant to the particular case should be taken into account. The answer to the question posed was therefore that EU law must be interpreted as not precluding the revocation of a trade mark consisting of the name of a fashion designer. This applies where, having regard to all the relevant circumstances, the mark is used by the owner of the trade mark, or with their consent, in a way that leads the average consumer who is reasonably well informed and reasonably observant to believe, mistakenly, that that designer was involved in the design of the goods bearing that mark.

Comment

The CJEU decision provides helpful clarity for companies acquiring rights to fashion brands going forward. When using trade marks containing the names of fashion designers on products, those companies can proceed on the assumption that the average consumer is reasonably well informed and reasonably observant and circumspect. When acquiring fashion brands, those companies should ensure that the acquisition documents are drafted in such a way to protect their investment, and to prevent fashion designers from continuing to use their names on new brands and product development. Conversely, fashion designers who are planning to sell their brands, should consider whether they are prepared to waive their rights to use of their name in a trade mark sense, in future project and new product development.

For further information and expert legal advice on the impact of this decision and how best to protect your intellectual property rights, please contact a member of our award-winning Intellectual Property team.

The content of this article is provided for information purposes only and does not constitute legal or other advice.