The CJEU on heritage washing in trade mark law
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Marcel Pemsel
May 11, 2026, 12:18:20 PM (3 days ago) May 11
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The CJEU on heritage washing in trade mark law
Is a trade mark that contains a year deceptive under Art. 4(1)(g) Trade Mark Directive (“TMD3”) and its predecessor Art. 3(1)(g) Second Trade Mark Directive (“TMD2”) if the owner was not established in that year? In Fauré Le Page
(case C-412/24), the CJEU held that this may be the case where the year
is perceived as indicating a long-established business and thereby
evokes long-standing know-how conferring a perceived guarantee of
quality and prestige on the goods, even though no such know-how actually
exists.
Background
The French company Maison Fauré Le Page had been selling arms, ammunition and leather accessories in Paris since 1716. It was dissolved and all its assets and liabilities were transferred to its sole shareholder, the company Saillard, in 1992.
In 1989, Saillard filed an application for the French trade mark “Fauré Le Page” covering, inter alia, “firearms and their parts; leather and imitations of leather; trunks and suitcases”. In 2009, Saillard sold this trade mark to Fauré Le Page Paris, a French company that was established in 2009.
In 2011, Fauré Le Page Paris filed applications for two French trade marks containing the words “Fauré Le Page Paris 1717” and covering, inter alia, “leather and imitations of leather; trunks and suitcases; travelling bags; handbags” (the “Paris 1717 Trade Marks”).
In 2012, the company Goyard ST-Honoré sought cancellation of the Paris 1717 Trade Marks on the ground that they were misleading under the French implementation of Art. 3(1)(g) TMD2.
In the cancellation proceedings, the lower courts found that the words “Paris 1717” referred to the place and date of establishment of the business, which led the public to believe in the continuity of operations since 1717 and in the transfer of know-how from the former Maison Fauré Le Page to Fauré Le Page Paris, resulting in the public attributing a particular quality or prestige to the goods. For the average consumer of luxury leather goods marketed by the Fauré Le Page companies, the use of very old know-how is considered to be a decisive factor in their purchase decision.
Fauré Le Page Paris argued that Art. 3(1)(g) TMD2 (now Art. 4(1)(g) TMD3) requires deceit as to the characteristics of the goods and services but not as to the qualities of the trade mark’s proprietor, such as the year of establishment.
The Cour de Cassation referred three questions to the CJEU (note that neither the request for a preliminary ruling nor the CJEU’s decision address the fact that the original company started selling goods in 1716 but the trade marks in question mention the year 1717):
1. Must Art. 3(1)(g) TMD2 be interpreted as meaning that a reference to a fanciful date in a trade mark conveying false information on the age, reliability and know-how of the manufacturer of the goods and, consequently, on one of the intangible characteristics of those goods is sufficient to establish the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived?
2. If the answer to the first question is negative, must that article be interpreted as meaning:
(a) that a trade mark may be regarded as deceptive where there is a likelihood that consumers of the goods and services designated by the trade mark will believe that the proprietor of that trade mark has been producing those goods for centuries, thereby conferring on them a prestigious image, whereas that is not the case?
(b) that, in order to establish the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived, on which a finding that a trade mark is deceptive depends, the trade mark must constitute a sufficiently specific designation of potential characteristics of the goods and services for which it is registered, so that the targeted consumer is led to believe that the goods and services possess certain characteristics which they do not in fact possess?
The CJEU’s decision
The Court answered all questions together.
It recalled its finding in W. F. Gözze Frottierweberei that, in order to be considered deceptive under Art. 3(1)(g) TMD2, the trade mark must create per se the risk of deception, “the subsequent management of that sign being irrelevant in this respect”. The provision presupposes the existence of actual deceit or a sufficiently serious risk that the public will be deceived.
Based on the wording of Art. 3(1)(g) TMD2 and its purpose, which is to target deception inherent in the sign, the Court found that a mark is “of such a nature as to deceive the public” only in the case of deception in relation to a characteristic of the goods or services covered by that mark.
The judges concluded that deception as to the proprietor of the mark is not covered by Art. 3(1)(g) TMD2. The date and place of establishment of the proprietor are not characteristics of the goods.
However, the year of establishment may evoke particular know-how, which is seen as a guarantee of the quality of the goods and contributes to bestowing a prestigious image on them. Since the quality of the product is one of the characteristics referred to in Art. 3(1)(g) TMD2 and that quality may, in the field of luxury goods, also result from the allure and prestigious image of the product, the existence of actual deceit or a sufficiently serious risk that the public will be deceived, may be found where such long-standing know-how and, accordingly, the guarantee of quality and prestigious image associated with or resulting from it do not actually exist.
For these reasons, the judges held that
“where a trade mark includes a number which is likely to be perceived by the relevant public as indicating the year of establishment of a business and evokes, because that year is in the distant past, long-standing know-how bestowing a perceived guarantee of quality and a prestigious image on the goods for which the mark is registered, even though no such long-standing know-how actually exists, it may be inferred that that mark is of such a nature as to deceive the public, within the meaning of that provision.”
Background
The French company Maison Fauré Le Page had been selling arms, ammunition and leather accessories in Paris since 1716. It was dissolved and all its assets and liabilities were transferred to its sole shareholder, the company Saillard, in 1992.
In 1989, Saillard filed an application for the French trade mark “Fauré Le Page” covering, inter alia, “firearms and their parts; leather and imitations of leather; trunks and suitcases”. In 2009, Saillard sold this trade mark to Fauré Le Page Paris, a French company that was established in 2009.
In 2011, Fauré Le Page Paris filed applications for two French trade marks containing the words “Fauré Le Page Paris 1717” and covering, inter alia, “leather and imitations of leather; trunks and suitcases; travelling bags; handbags” (the “Paris 1717 Trade Marks”).
In 2012, the company Goyard ST-Honoré sought cancellation of the Paris 1717 Trade Marks on the ground that they were misleading under the French implementation of Art. 3(1)(g) TMD2.
In the cancellation proceedings, the lower courts found that the words “Paris 1717” referred to the place and date of establishment of the business, which led the public to believe in the continuity of operations since 1717 and in the transfer of know-how from the former Maison Fauré Le Page to Fauré Le Page Paris, resulting in the public attributing a particular quality or prestige to the goods. For the average consumer of luxury leather goods marketed by the Fauré Le Page companies, the use of very old know-how is considered to be a decisive factor in their purchase decision.
Fauré Le Page Paris argued that Art. 3(1)(g) TMD2 (now Art. 4(1)(g) TMD3) requires deceit as to the characteristics of the goods and services but not as to the qualities of the trade mark’s proprietor, such as the year of establishment.
The Cour de Cassation referred three questions to the CJEU (note that neither the request for a preliminary ruling nor the CJEU’s decision address the fact that the original company started selling goods in 1716 but the trade marks in question mention the year 1717):
1. Must Art. 3(1)(g) TMD2 be interpreted as meaning that a reference to a fanciful date in a trade mark conveying false information on the age, reliability and know-how of the manufacturer of the goods and, consequently, on one of the intangible characteristics of those goods is sufficient to establish the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived?
2. If the answer to the first question is negative, must that article be interpreted as meaning:
(a) that a trade mark may be regarded as deceptive where there is a likelihood that consumers of the goods and services designated by the trade mark will believe that the proprietor of that trade mark has been producing those goods for centuries, thereby conferring on them a prestigious image, whereas that is not the case?
(b) that, in order to establish the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived, on which a finding that a trade mark is deceptive depends, the trade mark must constitute a sufficiently specific designation of potential characteristics of the goods and services for which it is registered, so that the targeted consumer is led to believe that the goods and services possess certain characteristics which they do not in fact possess?
The CJEU’s decision
The Court answered all questions together.
It recalled its finding in W. F. Gözze Frottierweberei that, in order to be considered deceptive under Art. 3(1)(g) TMD2, the trade mark must create per se the risk of deception, “the subsequent management of that sign being irrelevant in this respect”. The provision presupposes the existence of actual deceit or a sufficiently serious risk that the public will be deceived.
Based on the wording of Art. 3(1)(g) TMD2 and its purpose, which is to target deception inherent in the sign, the Court found that a mark is “of such a nature as to deceive the public” only in the case of deception in relation to a characteristic of the goods or services covered by that mark.
The judges concluded that deception as to the proprietor of the mark is not covered by Art. 3(1)(g) TMD2. The date and place of establishment of the proprietor are not characteristics of the goods.
However, the year of establishment may evoke particular know-how, which is seen as a guarantee of the quality of the goods and contributes to bestowing a prestigious image on them. Since the quality of the product is one of the characteristics referred to in Art. 3(1)(g) TMD2 and that quality may, in the field of luxury goods, also result from the allure and prestigious image of the product, the existence of actual deceit or a sufficiently serious risk that the public will be deceived, may be found where such long-standing know-how and, accordingly, the guarantee of quality and prestigious image associated with or resulting from it do not actually exist.
For these reasons, the judges held that
“where a trade mark includes a number which is likely to be perceived by the relevant public as indicating the year of establishment of a business and evokes, because that year is in the distant past, long-standing know-how bestowing a perceived guarantee of quality and a prestigious image on the goods for which the mark is registered, even though no such long-standing know-how actually exists, it may be inferred that that mark is of such a nature as to deceive the public, within the meaning of that provision.”
Comment
The CJEU took two facts into account, which are not discernible from the trade mark application, namely:
1. The owner of the mark has not been active since 1717 in the sale of the goods for which the mark was filed, meaning that no long-term know-how in the manufacture of the goods exists.
2. The goods sold under the mark are luxury goods.
The second point seems less problematic if and when the wording of the goods is sufficiently broad to cover luxury goods. An absolute ground for refusal exists if it applies to specific goods that fall under a broad term such as “goods made of leather” (e.g. T‑641/21 at para. 35).
However, taking into account that the proprietor has not been active since 1717 is a questionable endeavour. In this Kat’s view, it conflates the absolute ground for refusal in Art. 3(1)(g) TMD2/Art. 4(1)(g) TMD3 with the ground for revocation because of deceptive use in Art. 12(2)(b) TMD2/Art. 20(b) TMD3. According to the latter provisions, a trade mark may be revoked if, after the registration date
“as a result of the use made of it by the proprietor of the trade mark or with the proprietor's 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”.
This is precisely the norm that could apply in the present case if the trade mark owner were to use its trade mark or license it to a third party which has not been active since 1717 in the sale of the goods concerned. However, such use should not give rise to an absolute ground for refusal because the only relevant factors in assessing deceptiveness under Art. 3(1)(g) TMD2/Art. 4(1)(g) TMD3 are, as the CJEU itself acknowledged, the sign and the goods and services.
If there is at least a theoretical possibility of using the trade mark in a lawful manner – also by way of licensing –, Art. 3(1)(g) TMD2/Art. 4(1)(g) TMD3 should not apply. If it is used in a misleading way, revocation proceedings under Art. 12(2)(b) TMD2/Art. 20(b) TMD3 would be the appropriate path to deal with such a situation.
It can only be hoped that the scope of this decision will be limited to its facts and not extended to other situations.
The CJEU took two facts into account, which are not discernible from the trade mark application, namely:
1. The owner of the mark has not been active since 1717 in the sale of the goods for which the mark was filed, meaning that no long-term know-how in the manufacture of the goods exists.
2. The goods sold under the mark are luxury goods.
The second point seems less problematic if and when the wording of the goods is sufficiently broad to cover luxury goods. An absolute ground for refusal exists if it applies to specific goods that fall under a broad term such as “goods made of leather” (e.g. T‑641/21 at para. 35).
However, taking into account that the proprietor has not been active since 1717 is a questionable endeavour. In this Kat’s view, it conflates the absolute ground for refusal in Art. 3(1)(g) TMD2/Art. 4(1)(g) TMD3 with the ground for revocation because of deceptive use in Art. 12(2)(b) TMD2/Art. 20(b) TMD3. According to the latter provisions, a trade mark may be revoked if, after the registration date
“as a result of the use made of it by the proprietor of the trade mark or with the proprietor's 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”.
This is precisely the norm that could apply in the present case if the trade mark owner were to use its trade mark or license it to a third party which has not been active since 1717 in the sale of the goods concerned. However, such use should not give rise to an absolute ground for refusal because the only relevant factors in assessing deceptiveness under Art. 3(1)(g) TMD2/Art. 4(1)(g) TMD3 are, as the CJEU itself acknowledged, the sign and the goods and services.
If there is at least a theoretical possibility of using the trade mark in a lawful manner – also by way of licensing –, Art. 3(1)(g) TMD2/Art. 4(1)(g) TMD3 should not apply. If it is used in a misleading way, revocation proceedings under Art. 12(2)(b) TMD2/Art. 20(b) TMD3 would be the appropriate path to deal with such a situation.
It can only be hoped that the scope of this decision will be limited to its facts and not extended to other situations.
The picture is by Muhammed Fatih Beki and used under the licensing terms of pexels.com.
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