David Kitchin QC as the Appointed Person considered the question whether the confusion following the assignment of a trade mark amounted to "lawful deception". He decided the issue is unclear and so warranted a reference to the European Court of Justice. This is the first time the Appointed Person has made such a reference
Background
The case concerned a registered trade mark comprising a device and the words ELIZABETH EMANUEL ("the Registered Mark") and an application to register ELIZABETH EMANUEL in bold capitals ("the Application"). The Registered Mark had originally been in the name of Elizabeth Emanuel, the famous and very well known designer of fashion clothes, particularly wedding wear (including Lady Di’s wedding dress). Through a series of assignments the Registered Mark together with its associated goodwill had ended up in the hands of Continental Shelf. The Application was also in the name of Continental Shelf.
Elizabeth Emanuel applied to revoke the Registered Mark and she also opposed the Application.
The revocation application relied upon Section 46(1)(d) of the Trade Marks Act 1994 which implements Article 12(2)(b) of Directive 89/104 which provides:
"2. a trade mark shall also be liable to revocation if, after the date on which it was registered:
(b) in consequence of the use made of it by the proprietor of the trade mark or with his consent in respect of the goods or services for which it is registered, it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services."
The opposition relied on Section 3(3)(b) of the Trade Marks Act 1994 which implements Article 3(1)(g) of Directive 89/104 which provides:
"1. The following shall not be registered or if registered shall be liable to be declared invalid:
(g) trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service;"
At first instance the hearing officer dismissed the opposition and revocation. He did find that there had been deception and confusion but he said that this was lawful and the inevitable consequence of the sale of a business.
The decisions were appealed to the Appointed Person.
Outcome
The Appointed Person held that the hearing officer had failed to consider much of the evidence and he went further with his findings on the facts. He held that well beyond the relevant dates (date of application of the revocation action and date of the filing of the Application) a significant proportion of the public took the use of the mark ELIZABETH EMANUEL in relation to garments to indicate Elizabeth Emanuel was personally involved in their design and creation and that this belief was likely to influence their purchasing behaviour.
It seems to us that on Elizabeth Emanuel’s case this should have been enough to win. It had been argued for her that both Article 3(1)(g) and Article 12(2)(b) were solely concerned with public interpretation. It followed that if there was a real risk that the average consumer’s economic behaviour would be affected by an inaccurate message conveyed by the mark in question, then the requirements of both provisions were met.
The Appointed Person thought this was a tenable argument and that there was a public interest in preventing registration of deceptive trade marks. However, he was also concerned that there was a public interest in allowing the sale and assignment of businesses and goodwill, together with associated trade marks. He questioned whether the resulting confusion is incompatible with the essential function of a trade mark as an indication of origin.
At the end of the day, the Appointed Person came to the conclusion that the case raised an issue that was not clear. He adjourned the appeals pending a reference to the European Court of Justice.
The issue to be referred is whether a trade mark is to be considered as liable to mislead the public within the meaning of Article 3(1)(g) or Article 12(2)(b) if following its assignment, the use of it is liable to mislead the public into believing, contrary to the fact, that a particular person has been involved.
Comment
The questions for the European Court of Justice are yet to be settled. The issue is an interesting one and so far as we are aware has not been the subject yet of any Community jurisprudence. It is also the first time the Appointed Person has referred a question to the European Court of Justice. On this, it is noteworthy that both parties agreed that the Appointed Person had jurisdiction to make a reference.
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.
