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C-168/24 – Opinion, PMJC SAS v [W] [X], [M] [X], [X] Créative SAS, 27th March 2025
Designers forfeit certain rights when assigning patronymic trade marks, but new owners should not push the boundaries too far, says Shaun Anderson
Key points
The severance of the link between a fashion designer and
the party to whom they have assigned their patronymic trade marks
is not sufficient on its own for a mark to be refused registration,
nor for the mark to be revoked, on the grounds of
deceptiveness.
For patronymic trade marks to be revoked on the basis of deceptive use by the assignee, there must be additional factors, with the misleading use being persistent and intense to the extent the mark loses its ability to act as an indicator of origin.
The question addressed here by Advocate General Emiliou (the AG) centres on whether a trade mark including a designer's name can be revoked on the grounds of deception where the designer is no longer involved with the design of the goods for which the mark is used. The AG had to determine whether that factual scenario leads to the mark being misleading due to the owner's use of it.
Background
The question was borne out of a dispute between the
company PMJC SAS (PMJC) and the fashion designer Jean-Charles de
Castelbajac. Mr Castelbajac was the owner of an eponymous fashion
company, which previously owned French trade mark registrations for
the sign JC de CASTELBAJAC, covering goods and services relating to
clothing and fashion design, among others. After the company was
subject to insolvency proceedings, the trade marks were assigned in
2012 to PMJC, with which Mr Castelbajac continued to work until
31st December 2015.
Action and counterclaim
In 2018, the designer was sued by PMJC for trade mark
infringement relating to the assigned marks. In response, Mr
Castelbajac applied to revoke the marks on the basis that PMJC had
used them in a deceptive manner which implied he had continued
involvement in the creation of goods on which those marks were
affixed. It is important to note the goods also bore designs which
had been found previously to infringe Mr Castelbajac's
copyright.
The counterclaim was rejected at first instance, but, considering the copyright infringements, an appeal was upheld by the Paris Court of Appeal. The marks were therefore revoked, with PMJC's use determined to be deceptive.
PMJC appealed to the French Court of Cassation, largely on the basis that, according to the CJEU's judgment in Emanuel (C-259/04), even if PMJC intentionally implied the continued involvement of Mr Castelbajac in the design process, its use did not affect the function of the trade marks themselves. The Court subsequently asked the CJEU:
"Must Article 12(2)(b) of Directive [2008/95] and Article 20(b) of [Directive 2015/2436]1 be interpreted as precluding the revocation of a trade mark consisting of the surname of a designer on the grounds that it is used after the assignment in such a way as to make the public actually believe that that designer is still involved in the design of the goods bearing the mark, when that is no longer the case?"
The AG's opinion
In giving his opinion, the AG examined Emanuel, noting it
formed the main case law on such matters and had similar facts.
There, the Court asserted that the severance of the link between
the designer and the new owner does not make the mark or its use
deceptive on its own, even if a consumer may make a purchase based
somewhat on the mistaken belief the designer was involved in the
product's creation, because the characteristics and qualities
of those goods remain guaranteed by the owner of the marks.
While in the present case the copyright infringement had an impact on the context of PMJC's use, in Emanuel there were no relevant additional factors concerning use for the Court to consider. Only a hypothetical situation was discussed in which the Court noted that, if the new owner was clearly attempting to imply a link with the designer, this could be fraudulent but would not make the trade mark deceptive and would therefore not affect its registrability.
"There must be evidence that the owner has used the mark... with the intention of misleading the public"
As the fraudulent use was hypothetical, the Court did not go on to assess the effect of such use on revocation. The AG therefore decided Emanuel did not answer the referred question and the matter must be considered anew.
The AG referred to the broad wording of Article 20(b) of Directive 2015/2436, determining the use must simply be liable to mislead the public, with no closed definition of the type of deception. Therefore, contrary to PMJC's argument, there was no reason to exclude deception as to whether a designer has been involved in the creation of goods.
However, the AG stressed the context of the use is important and referred to the decision in Emanuel that the severance of the link between the designer and the new owner of the marks is not sufficient on its own for there to be deception, given that the use of patronymic marks is widespread and the public is "well aware that, behind every patronymic mark, there is not necessarily a fashion designer of that name".
The AG concluded it is possible for such a patronymic trade mark to be revoked on the grounds that use of the mark is misleading and therefore deceptive. However, there must be evidence that the owner has used the mark with "intensity, extent or logic" with the intention of misleading the public. The public would need to assume the designer still has involvement such that it results in them no longer being "reasonably expected not to assume that the given designer has been involved in the design of the specific goods covered by the trade mark". Thus, the mark would no longer be able to fulfil its essential function as an indicator of origin and could be found to be deceptive.
Comment
The AG's opinion, if confirmed by the CJEU, will
highlight to designers who assign their patronymic trade marks that
the assignee is under no obligation to expressly indicate the
designers have not been involved with the creation of the goods on
which their name is affixed. In the AG's view, there is a high
bar for the use to be tantamount to deception and for the marks to
be liable to revocation as a result. However, the assignees should
nonetheless be aware there are limits, and they could lose the
marks should they fall on the wrong side of that line.
This article was first published in the September/October issue of CITMA Review, the journal of the Chartered Institute of Trade Mark Attorneys (CITMA). For more information on CITMA, please visit citma.org.uk
Footnote
1 The articles referred to both relate to the question of misleading use and whether this can lead to the revocation of the mark.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
