Using A Designer's Name After Departure May Constitute A Deceptive Trademark

In response to a preliminary question referred by the French Court of Cassation, the CJEU has clarified the principle that a trademark bearing a designer's name may become deceptive due to its use after the designer's departure, explains Melis Metin.

Does European law preclude the cancellation of a trademark bearing a creator's name when used by the assignee in such a way as to effectively create the impression that the creator is still involved in the creation of the products, when this is not the case? This was the issue at the heart of the dispute referred to the Court of Justice of the European Union (CJEU) by the French Court of Cassation.

Origins of the dispute

The case originated from a conflict between a fashion designer (hereinafter Mr [W] [X]) and PMJC, the company that had acquired his business and the trademarks bearing his surname. Following the acquisition, Mr [W] [X] worked for PMJC for a period before ending this collaboration and ceasing all involvement in product design. After Mr [W] [X] left the company, PMJC continued to use the trademark bearing his name.

One factual element is of particular importance: after the end of the collaboration, PMJC was twice convicted of infringing Mr [W] [X]'s copyright on recent works that had not been assigned to PMJC.

Prior EU case law

The CJEU issued a high-profile ruling in 2006 (Emanuel) in a case also concerning a company's use of a trademark bearing the name of a fashion designer after her departure. The Court ruled that the designer's mere departure does not in itself render the trademark deceptive and does not affect its eligibility for (re)registration or its continued validity.

In this judgment, the Court reiterated that the essential function of a trademark is to indicate the (commercial) origin of the products and to guarantee that they originate from a single company. According to the CJEU, this criterion is not compromised simply because the designer is no longer involved in the creation of the products.

However, the wording of certain paragraphs of this judgment gave rise, for some, to doubt as to the possibility of declaring a trademark bearing a designer's name invalid when the actual use made of it by its holder is likely to create a risk of deception regarding the designer's involvement.

Clarification by the CJEU

In its judgment of 18 December 2025, the CJEU answered this question in the affirmative.

First, the Court indicated that European law does not preclude a trademark bearing the name of a creator after their departure from the business from becoming deceptive due to its use by the owner.

In accordance with its Emanuel case law, the CJEU stated that the use of such a trademark is not misleading per se, but it clarified that all the relevant circumstances of each case must be considered to determine whether the use of the trademark is deceptive.

The required level of risk is high: it must be established that the deception is actual or that there is a sufficiently serious risk of deception.

In this case, the CJEU indicated that the following factors may increase the risk of deception: the presence (on the trademarked products) of decorative elements belonging to the specific creative universe of the designer and infringing their copyright.

The Court concluded that this interpretation of EU law is consistent with the objective of protecting consumers and preserving undistorted competition.

When is a trademark deceptive?

The CJEU's decision appears to reflect reality: (1) given market practices, consumers do not necessarily expect that products bearing a trademark with a designer's name were designed by that designer; however, (2) depending on the advertising carried out by the trademark holder and the information provided by them, consumers can be seriously misled as to the designer's involvement.

Vigilance is advised, given the risk of losing trademark rights in these situations.

However, apart from considering convictions for copyright infringement, the CJEU does not provide criteria for establishing that there is an actual or sufficiently serious risk of deception in similar cases. Trademark offices and courts will therefore have to assess each case individually.