Estimated reading time: 4 minutes
A fashion designer’s name can play an important role in signalling and reinforcing a fashion company’s brand values, reputation and associated quality. But what happens when the name continues to appear on goods after the designer is no longer involved in the business? In a recent EU case, the Court of Justice of the European Union (CJEU) was asked to consider whether trade marks comprising a fashion designer’s name could be revoked on the ground that their use on goods may mislead the public into believing that the designer is still involved.
Background
In 1978, a French fashion company (referred to in the case as ‘[W] [X]’) was founded by a fashion designer of the same name. Following the company’s insolvency, PMJC SAS purchased the assets (including trade marks for the ‘[W] [X]’ name) in 2011/2012. The designer continued working with PMJC until the end of 2015.
In 2018, PMJC brought a claim against the designer for trade mark infringement after the designer began conducting business through a company incorporating the designer’s name (referred to in the case as ‘[X] Créative’). The designer responded by seeking the cancellation (revocation) of the trade marks, alleging that PMJC had used them deceptively (between 2017 and 2019) by leading the public to think that the designer had created the designs sold under the trade marks.
The French Court of Cassation referred questions to the CJEU. The issue was whether using a trade mark based on a fashion designer’s name, after the designer had left the business, could justify revocation for misleading the public about the nature or quality of the goods or services.
CJEU Ruling
The CJEU held that the mere fact that a trade mark for a fashion designer’s name is used after the designer is no longer a part of the business would not itself be enough for a revocation. The CJEU noted that consumers are generally aware that not all goods branded under a fashion designer’s name have been personally designed by that designer.
However, a trade mark could be revoked if, taking into account all the relevant circumstances, it is used in a way that leads the average consumer to think incorrectly that the designer was involved in the design of the goods. The CJEU pointed out that there must be “actual deceit or a sufficiently serious risk that the public will be deceived”.
Relevant factors could include the presentation of the goods, whether consumers can make informed choices between competing goods and if the trade mark is being used to unfairly attract customers. In this case, the CJEU considered it a relevant factor that PMJC had infringed the designer’s copyright twice in works that had not been assigned.
Key takeaways
- Designer’s trade marks – The continued use of a trade mark incorporating a designer’s name, without the designer’s ongoing involvement, is not sufficient by itself to justify a revocation. However, where that mark creates actual deceit (or a sufficiently serious risk of it) that trade mark may be vulnerable.
- UK perspective – The UK has a very similarly worded provision for revoking a trade mark where its use is liable to mislead the public. While UK Courts do not have to follow EU decisions post-Brexit, this ruling could be persuasive and provides useful guidance for fashion businesses operating across both the UK and EU.
- Use it or lose it – The most common ground for revocation remains non-use, where a UK or EU trade mark has not been put to genuine use for a continuous period of five years following registration. A third party may then try to cancel the trade mark for the goods/services that have not been used. This case highlights that even when a trade mark is used, other revocation risks may still arise.
- Competing IP rights – The CJEU pointed out that PMJC had infringed the designer’s copyright in unassigned works twice and this was a relevant factor in assessing whether the trade marks were used deceptively. Fashion businesses should ensure that all relevant intellectual property rights have been assigned and that continued use will not infringe any rights that the designer (or another company) may still own.
Related News
Authors
Related legal expertise
Connect with us
