Validity of a personal name as a trademark
15.05.2007
A personal name is nowadays frequently used as a trademark, trade name or sign. However, it is a source of litigation, as indicated by an important case law, to which belongs the judgement Elizabeth Emanuel of 30/03/2006.
Mrs Emanuel, a famous English fashion designer, assigned her clothing design and marketing company named "Elizabeth Emanuel", as well as the assets associated therewith, including the trademark ELIZABETH EMANUEL registered in 1997.Mrs Emanuel thereafter filed a request for revocation against the assigned trademark, and lodged an opposition to the registration of a new trademark application ELIZABETH EMANUEL. She considered indeed that the public was confused and deceived, insofar as she was no more the designer of the clothes sold under this trademark.These requests were dismissed before the first instance on the ground that confusion and deception were unavoidable as a consequence of the assignment of the company and of the goodwill linked to the personal name.
Judgement of 30/03/2006During the appeal, a preliminary ruling was referred to the ECJ, pertaining to the requirements for the refusal of the registration of a trademark or the revocation for deception according to Article 3, 1st paragraph of Directive 89/104, when the trademark corresponds to the name of the designer and first manufacturer of the products and the goodwill associated with the trademark has been assigned with the company.ECJ first underlines the fact that a personal name may constitute a valid trademark, as such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings, according to Article 2 of the Directive 89/104 (trademark as indicator of origin).The ECJ considers in this case that the name Elizabeth Emanuel "cannot be regarded in itself as being of such a nature as to deceive the public as to the nature, quality or geographical origin of the product it designates", even if the client is led to believe that the designer is still involved in the design of the clothes. Indeed, the company that owns the trademark guarantees the quality of the products.The ECJ specifies nevertheless that the national judge has to check whether or not there is an intention from the undertaking owner of the trademark to make the client believe that the designer is still involved in the design of the clothes. This intention would then constitute a conduct which might be held to be fraudulent, but which could still not prevent the registration of the trademark ELIZABETH EMANUEL.The ECJ concludes stating that a trademark corresponding to the name of the designer and first manufacturer of the products cannot, by reason of that particular feature alone, be refused registration or be liable to revocation on the ground that it would mislead or deceive the public, more particularly when the goodwill associated with the trademark has been assigned together with the company manufacturing the products bearing this trademark.This judgement highlights the shortcomings implied by the use of a personal name in business. It strengthens the judiciary security and ensues from the Judgement Ines de la Fressange of 31/01/2006 from the French High Court.
