When does a designer’s name become deceptive? CJEU weighs in in PMJC

[Marcel Pemsel]

When does a designer’s name become deceptive? CJEU weighs in in PMJC

Marcel Pemsel Monday, December 29, 2025 - C-168/24, deceptive use, designer, Emanuel, Marcel Pemsel, PMJC, trade marks

Can a fashion brand continue to use its designer’s name as a trade mark after the designer has left? In PMJC (C-168/24), the Court of Justice of the EU (‘CJEU’) clarifies when the use of a designer’s surname may become misleading - and when it does not.

Background

Fashion company JEAN-CHARLES DE CASTELBAJAC, S.A. owned various trade marks for the sign ‘JC de CASTELBAJAC’, including French trade mark no. 023201616 inter alia for ‘clothing for women, men and children’. The company was named after its owner, Mr. Jean-Charles de Castelbajac, who also designed the goods.

Due to insolvency proceedings of JEAN-CHARLES DE CASTELBAJAC, S.A., its trade marks were assigned to PMJC SAS (‘PMJC’) in 2011/2012. Mr. Jean-Charles de Castelbajac agreed to work for PMJC until 31 December 2015.

In 2018, PMJC brought proceedings against Mr. Castelbajac for infringement of the ‘JC de CASTELBAJAC’ trade marks that PMJC had acquired. Mr. Castelbajac filed a counterclaim for revocation of the ‘JC de CASTELBAJAC’ trade marks on the grounds that PMJC had been using them in a deceptive manner from the end of 2017 to the beginning of 2019. Mr. Castelbajac argued that PMJC created the impression that he was still involved in the design of the goods by using the trade marks for clothing, which incorporated a design to which Mr. Castelbajac owned the copyright. PMJC was found to infringe his copyright twice.

The Court of Appeal of Paris revoked PMJC’s trade marks due to deceptiveness under Art. L. 714-6(b) of the Code de la Propriété Intellectuelle (French Intellectual Property Code), which implements Art. 20(b) of Directive (EU) 2015/2436 (‘TMD’) into French law. According to the latter provision:

"A trade mark shall be liable to revocation if, after the date on which it was registered:

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."

PMJC appealed to the Court de Cassation, which asked the Court of Justice of the EU (‘CJEU’) for guidance in order to determine whether the Court of Appeal’s decision complied with Art. 20(b) TMD: 

"Must […] Article 20(b) [TMD] […] 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?" 

Advocate General Emiliou took the view that, in certain circumstances, such conduct may indeed fall foul of Art. 20(b) TMD (IPKat here).

The CJEU’s decision

The CJEU largely agreed with the Advocate General.

1. An intertemporal issue

First, there was a dispute as to whether the case had to be decided under Art. 20(b) TMD or the old Art. 12(2)(b) of Trade Mark Directive 2008/95 (‘TMD 2008’). The wording of both provisions was identical but not in the French version. The judges found that both versions had the same meaning and that almost all other language versions remained unchanged. The Court saw no intention of the legislator to change the conditions of the old Art. 12(2)(b) TMD 2008. Consequently, the judges did not decide which provision was applicable.

2. On the substance

In responding to the question of the referring court, the judges began by stating the obvious:

The word ‘particularly’ used in Art. 20(b) TMD shows that the characteristics of the goods or services to which the deception might relate is not exhaustive. Hence, it is conceivable that a trade mark consisting of the name of a designer can be revoked because there is a risk of deceit about the designer’s involvement in the creation of the goods.

Further, the creative origin of a product may constitute a characteristic of a product giving rise to certain expectations of the relevant public. Therefore, that origin is among the aspects which may ‘mislead’ the public.

However, as held in the Emanuel judgment (case C-259/04, IPKat here and here), the fact that a trade mark consisting of a designer’s name is used by an undertaking with which that designer no longer has a connection is not sufficient, in itself, to justify the revocation of the trade mark. The average consumer, who is reasonably well informed and reasonably observant and circumspect, is conscious of the fact that not all the goods bearing a trade mark corresponding to the name of a designer necessarily have been created by that designer.

Art. 20(b) TMD instead presupposes either actual deception or a sufficiently serious risk of deception. Therefore, additional circumstances must show that the public is deceived or likely to be deceived as to the creative origin of the goods bearing the designer’s name.

The use of decorations from the specific creative universe of the designer, which infringes his or her copyright, may constitute a relevant circumstance, in so far as it increases the risk that the public may be deceived as to the designer’s involvement in the creation of the goods.

This interpretation, according to the Court, is consistent with

a. the objective of consumer protection underlying Art. 20(b) TMD. Consumers must be able to make an informed choice between competing goods or services.

b. the general objective pursued by EU trade mark law to preserve undistorted competition. This objective does not permit that a trade mark becomes an unfair instrument for gaining customers.

For these reasons, the judges answered the referred question as follows:

"[…] Article 20(b) [TMD] […] must be interpreted as not precluding the revocation of a trade mark consisting of the surname of a fashion designer on the ground that, having regard to all the relevant circumstances, it is used by the proprietor of the trade mark, or with his or her consent, in such a way as to lead the average consumer who is reasonably well informed and reasonably observant and circumspect to believe, mistakenly, that that designer was involved in the design of the goods bearing that mark." 

Comment

The decision does not come as a surprise. The Emanuel decision laid the groundwork. The basic rule is that the use of the designer’s name is allowed even after his departure from the firm. This approach also protects brand heritage - an interest that may align with that of the designer, whose name would otherwise risk losing trade mark protection upon retirement or exit.

It is also not unexpected that the use of the designer’s creative work may be a factor contributing to deceit. The more interesting question is: What impact is necessary for the relevant public to be deceived (or for a serious risk of such deceit)? Are two instances of copyright infringement (whose severity we know nothing about) sufficient? Is it necessary that the entire relevant public is (at risk of being) deceived or, as in other provisions, a non-insignificant part?

Maybe time for another reference?