Update
May 2006
Trade marks
The right to a designer’s name - Elizabeth Emanuel
In 1981, Elizabeth Emanuel, together with her husband became one of the most famous design
teams in the world following on from their design of the wedding dress of Lady Diana Spencer in
her marriage to Prince Charles.
However, Ms Emanuel was subsequently divorced from her
husband and in 1990 Ms Emanuel began trading solely under
the trade mark ELIZABETH EMANUEL. In 1996, together with
a company called Hamlet International Plc, Ms Emanuel
formed a company called Elizabeth Emanuel Plc (EE Plc). Ms
Emanuel assigned to EE Plc her business of designing and
selling clothing, all assets in the business including its
goodwill and an application to register the mark ELIZABETH
EMANUEL which was registered in 1997.
In September 1997, EE Plc assigned its business, goodwill and
the registered trade mark to Frostprint Ltd, which
immediately changed its name to Elizabeth Emanuel
International Ltd (EE International). EE International
employed Ms Emanuel, who left their employment after one
month. In November 1997, EE International assigned the
registered trade mark to another company, Oakridge Trading
Limited (Oakridge). On 18 March 1998, Oakridge lodged an
application to register the trade mark ELIZABETH EMANUEL,
which was subsequently assigned, together with the earlier
registration and associated goodwill to Continental Shelf 128
Ltd (CSL).
The Directive
Article 3(1)(g) of the European Trade Marks Directive
provides:
‘The following shall not be registered or if registered shall be
liable to be declared invalid:
(g) trade marks which are of such a nature as to deceive the
public, for instance as to the nature, quality or
geographical origin of the goods or service.’
Article 12(2)(b) of the Directive provides:
‘A trade mark shall…be liable to revocation if, after the date
on which it was registered,
(b) in consequence of the use made of it by the proprietor of
the trade mark or with his consent in respect of the
goods and 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.’
Opposition
Ms Emanuel opposed the trade mark application in the name
CSL and applied to revoke the earlier trade mark registration
on the basis that the public would be deceived and confused
into thinking that she was in some way associated with CSL.
On 17 October 2002, the Hearing Officer of the opposition
and revocation actions rejected the actions in the first
instance on the ground that whilst the public may well have
indeed been deceived and confused, such deception and
confusion was lawful and the inevitable consequence of the
sale of the business and goodwill previously conducted under
the name of the original owner, Ms Emanuel.
Ms Emanuel appealed the Hearing Officer's decision to the
Appointed Person, who subsequently referred a number of
questions to the European Court of Justice (ECJ) for
reference.
These were the articles upon which Elizabeth Emanuel based
her opposition and revocation action against the trade mark
application and registration for ELIZABETH EMANUEL in the
name of CSL.
Questions to the ECJ
Following her appeal of the original opposition decision to
the Appointed Person, the Appointed Person asked the ECJ to
ascertain the circumstances in which a trade mark may be
refused registration, or a subsequent registration invalidated
on the ground that it is of such a nature as to deceive the
public, within the meanings of Articles 3(1)(g) and 12(2)(b),
where the goodwill associated with the trade mark has been
assigned together with the business making the goods, where
that trade mark corresponds to the name of the designer and
the first manufacturer of those goods.
Continued on reverse
Ms Emanuel pointed to the public interest in the protection
of consumers from deception enshrined in Article 3(1)(g).
She submitted that for the article to apply, it suffices that
there at least is a genuine risk that the use of the trade mark
in issue misleads the average consumer of the goods or
services as to their origin, and influences that consumer's
purchasing decisions. Whether or not such a risk exists is a
question of fact, so that all the circumstances which make
that deception probable should be taken into consideration.
She submitted that if deception is occurring, it does not
matter that the goodwill and the trade mark have been
assigned to the undertaking which believes it can use the
trade mark.
CSL submitted that consumers are aware, especially in the
field of fashion, that a trade name remains associated with
the goods or services produced by an undertaking and that
undertaking may have been assigned those rights. Such a
principle applies equally to bakers, wine makers and the
manufacturers of luxury goods. Thus, the assignment of a
trade mark cannot in itself automatically give rise to
confusion, whether or not the assignment was subject to
publicity. CSL stressed that if Ms Emanuel's argument was
upheld, it would be impossible to assign a business together
with the goodwill and the trade mark for the goods which
the business produces. Very often the value of the
assignment of a business lies especially in the trade mark
assigned.
The decision
One of the guiding principles of European trade mark law is
that the essential function of a trade mark is to guarantee
the identity of origin of marked goods or services to
consumers or end users by enabling them, without the
possibility of confusion, to distinguish the goods or services
of one undertaking from those of another. A trade mark must
offer a guarantee that all the goods or services carrying the
trade mark have been manufactured or supplied under the
control of a single undertaking which is responsible for their
quality.
The ECJ held that in the case of a trade mark such as
ELIZABETH EMANUEL, which corresponds to the name of a
person, the public interest ground which justifies the
prohibition laid down by Article 3(1)(g) of the Directive,
must raise the question of the risk of confusion which such a
trade mark may engender in the mind of the average
consumer, especially where the person to whose name the
mark corresponds originally personified the goods bearing
the mark.
Nevertheless, the circumstances for refusing registration
referred to in Article 3(1)(g) presupposes the existence of
actual deceit or a sufficiently serious risk the consumer will
be deceived. In the present case, even if the average
consumer might be influenced in his act of purchasing a
garment bearing the trade mark ELIZABETH EMANUEL by
believing Ms Emanuel was involved in the design of the
product, the characteristics and qualities of that product
remain guaranteed by the undertaking which now owns the
trade mark. Thus, the essential function of the trade mark is
maintained.
Consequently, the name ELIZABETH EMANUEL could not be
regarded in itself as being such a nature to deceive the
public as to the nature, quality or geographical of origin of
the product it designates.
Conclusions to be drawn
The ECJ's decision is undoubtedly correct and as if the
decision had gone in favour of Ms Emanuel, as CSL stressed,
it would be impossible to assign a business together with the
goodwill and the trade mark for the goods for which the
business produces, without the risk of the assignee
attempting to reclaim the rights at a later date.
Although not explicitly dealt with by the ECJ, it will be
interesting to see how Ms Emanuel will trade in the future.
Although she will probably be able to use her own name
Elizabeth Emanuel to indicate that she is behind any
business venture, presumably any main branding she uses
will have to incorporate another distinctive mark other than
her name to avoid confusion with CSL. In fact this has been
borne out with Ms Emanuel launching a new brand called
‘Art of Being’. Further, CSL will have to be careful, as the ECJ
stressed, not to imply in any way that Ms Emmanuel is still
associated with its business. Life was no doubt much more
straightforward in 1981.
© Pinsent Masons 2006
This update does not constitute legal advice and specific legal advice should be taken before acting on any of the topics covered.
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