Advocate General opines that misleading use of assigned trade mark consisting of designer’s surname may warrant revocation action (PMJC v [W] [X])
IP analysis: Under EU law, a trade mark may be revoked if its use by the proprietor will mislead the public as to the nature, quality or geographical origin of the concerned goods. This rule has previously been interpreted in the context of the use of trade marks consisting of the surname of the designer who initially produced the applicable goods, in circumstances where that designer’s involvement in the company that owns those trade marks has ended. In Emanuel v Continental Shelf, Case C‑259/04, it was held that the mere severance of the link between a designer and the proprietor of a trade mark does not result in the trade mark being deceptive and therefore vulnerable to revocation. Some interpreted this to mean that the revocation of a patronymic trade mark was precluded in a scenario such as that described above. However, in this case, the Advocate General has gone further and opined that it should be possible to bring a revocation action against a trade mark for the original designer’s name which has been assigned to a third party, on the grounds that it is used in a manner which causes consumers to believe that the designer is still involved in the production of the applicable goods, when that is no longer a reality. Written by Amanda McDowall (partner) and Sophie Anim (senior associate) at Lee & Thompson LLP.