Creative Lawyers for Creative Business

In 1981 Elizabeth Emanuel and her husband achieved world-wide recognition on the back of designing the wedding dress of the late Lady Diana Spencer. However the formidable design duo parted company and in 1990 Ms Emanuel began trading under the trademark ELIZABETH EMANUEL. In 1996 she formed a company called Elizabeth Emanuel Plc (EE Plc). This was in conjunction with another company called Hamlet International Plc. Ms Emanuel assigned to the new company her business of designing and selling clothing, assets in the business including its goodwill and an application to register the mark ELIZABETH EMANUEL which was registered in 1997.

However in September 1997 EE Plc took the step of assigning its business, goodwill and registered trademark to a company called Frostprint Ltd. At the very same time Frostprint immediately changed its name to Elizabeth Emanuel International Ltd (EE International). EE International continued to employ Ms Emanuel who subsequently decided to leave their employment after a period of 1 month. In November 1997 EE International assigned the trade mark to another company called Oakridge Trading Limited. On 18 March 1998 Oakridge filed an application to register the name ELIZABETH EMANUEL which was in due course assigned along with the earlier registration and goodwill to a company called Continental Shelf 128 Ltd.

The trade mark application in the name of Continental was opposed by Ms Emanuel who applied to have the earlier trade mark registration revoked believing that the public would be confused into thinking that she had an association with Continental. At first instance the hearing officer rejected her action and considered that the deception and confusion that arose was a natural lawful consequence of the sale of the business and goodwill previously undertaken under Ms Emanuel's name. The decision of the Hearing Officer was appealed by Ms Emanuel. Upon appeal the Appointed person referred a number of questions to the ECJ for clarification in an attempt to ascertain when a trade mark may be refused registration or when a registration may be invalidated on the ground that it will deceive the public as provided in Article 3(1)((g) and Article 12(2)(b). where the goodwill connected to the trade mark is assigned along with the business responsible for producing the goods and where the trade mark conveys the name of the first creator of the goods. .

The Decision
The ECJ held that in a case where a trade mark such as ELIZABETH EMANUEL relates to the name of a person then under Article 3(1)(g) the circumstances for refusing registration presume the existence of deceit or a serious risk that the public will be mislead. In this case it was considered that even if the consumer's choice to buy the garment was influenced by the fact that they believed that Ms Emanuel was involved with the product, ultimately the features and quality of the product were guaranteed by Continental. On this basis the function of the trade mark remained intact and the name ELIZABETH EMANUEL could not be deemed as misleading the public as to the quality or origin of the product.

Briffa Comment:
The decision acknowledges the importance of protecting the investment of an assignee in a business that includes brands. It would be a harsh situation if an assignee has purchased a business which includes trade marks and he is then prohibited from protecting those marks with registration in order to continue or attain enforceable rights. This would seriously challenge the value of the purchase. Simply because trade marks convey names should not signify they are less protectable by an assignee and if this were the case then it would directly contradict the understanding that famous names enhance, not diminish, the worth of the business being sold.