Trademarks and designer names: when can trademark protection expire?

Trademarks play a key role in business – they allow consumers to distinguish the goods and services of one company from those of another, build brand reputation, and foster consumer trust. In many industries – especially fashion, design, and cosmetics – the trademark may consist of the designer’s own name.

What happens when a designer loses their connection to the brand?

But what happens when such a trademark is transferred, and the designer loses their real connection to it? Can it still be used as before? And does the law impose any limits on such use?

These questions were analyzed by the Advocate General of the CJEU in his opinion in case C-168/24. The outcome of this case may have significant practical implications for both creators who decide to “sell their name” and for businesses acquiring rights to such trademarks.

Dispute between the designer and the new trademark owner

The case involves a dispute between French company PMJC and fashion designer Jean-Charles de Castelbajac. After the bankruptcy of his company, the trademark rights bearing his name were transferred to PMJC. The designer collaborated with the new trademark owner until the end of 2015, when he launched his own artistic activities under his name.

In 2018, PMJC accused him of unfair competition in the form of parasitism. In response, the designer filed a counterclaim, seeking a declaration of revocation of the disputed trademarks to which PMJC holds the rights. He argued that the company used these marks in a misleading way, suggesting he was still associated with them.

The Court of Appeal’s ruling and the CJEU preliminary question

The Paris Court of Appeal ruled in favor of the designer, finding that a trademark that creates a false impression of collaboration with a designer may lose its legal protection. The Court of Cassation, reviewing PMJC’s appeal, referred the case to the CJEU for a preliminary ruling.

It is worth recalling that, under Article 20(b) of Directive 2015/2436 to approximate the laws of the Member States relating to trade marks, a trademark may be revoked not only due to non-use for five years, but also when its use misleads consumers as to the nature, quality, or origin of the goods or services. 

PMJC’s legal argument and the Emanuel precedent

PMJC relied on the CJEU ruling in the Emanuel case (C-259/04), where the Court found that merely ending a relationship with a designer does not automatically mean the trademark is misleading. In the ruling it was stated that the presence of a name in a trademark does not necessarily imply the creator’s personal involvement.

The Court held that even if the average consumer’s decision to purchase clothing bearing the trademark with the designer’s name (in the cited case: “ELISABETH EMANUEL”) might be influenced by the perception that the designer was involved in the design process, the specific characteristics and quality of the goods are guaranteed by the company that owns the trademark.

Consequently, the use of a designer’s name cannot, by itself, be regarded as likely to mislead consumers regarding the nature, quality, or geographical origin of the goods it designates.

Advocate general: use of the mark may be misleading

This interpretation was challenged by the Advocate General, who argued that case C-168/24 is fundamentally different.

In his view, case C-168/24 is fundamentally different – what matters is whether use of the trademark actually leads consumers to wrongly believe the designer remains involved in creating the products. If that is the case, the trademark protection may be revoked.

Moreover, the mere use of a designer’s name does not shield the owner from misleading consumers. If consumers believe the designer is involved – when they are not – and the trademark owner intentionally fosters that impression, the trademark’s protection may be lost.

Article 20(b) of Directive 2015/2436 in practice

The Advocate General emphasized that Article 20(b) of Directive is broadly framed. It covers not only the physical characteristics of products, but also any use of the trademark that creates confusion among consumers. The way the trademark is used is crucial – not only the circumstances surrounding its registration.

Taking the opposite view would mean that trademarks containing surnames could never be deemed misleading, which would contradict the Directive’s purpose. What matters is not just the wording of the trademark, but how it is used in practice and its effect on consumers.

A false impression on consumers may cost you protection

The Advocate General stressed that, to classify trademark use as misleading, there must be clear evidence that the owner deliberately created a false impression of a connection with the original designer.

In addition, the intensity of such conduct must be sufficient for an average consumer to associate the marked products with the designer – even if the designer is no longer involved with the brand.

Why the Jean-Charles de Castelbajac case should matter to every brand owner?

We chose to write about this case because its outcome could have significant consequences for both designers who transfer their trademark rights and for companies that acquire them.

This case highlights the importance of ensuring that trademark use does not mislead consumers, as this could negatively impact its ongoing legal protection.

Do you need help protecting your trademark?

Do you operate a brand based on a personal name? Or are you considering acquiring a name-based trademark? Consult us before you make a decision – we’ll help you ensure the lasting legal protection of your brand.