When Does a Designer’s Name on a Label Become Legally Misleading?

Can a trade mark that includes a designer’s name become deceptive once that designer is no longer involved with the brand? This is the key issue addressed by Advocate General Emiliou in the ongoing PMJC (C-168/24) case before the Court of Justice of the European Union (CJEU). The dispute centers around the fashion company JEAN-CHARLES DE CASTELBAJAC, S.A., which originally held trade marks for ‘JC de CASTELBAJAC’. These marks were based on the name of its founder, Jean-Charles de Castelbajac, who also designed the products. Following insolvency, the marks were transferred to PMJC SAS, where the designer remained employed until 2015.

Years later, PMJC initiated legal action against Mr. Castelbajac for trade mark infringement. In response, he sought revocation of the marks, arguing that PMJC’s use of them after his departure was deceptive. He claimed the company misled consumers by creating the impression that he remained involved in the design of the products, especially as some featured designs to which he held the copyright—copyright which PMJC had twice been found to infringe.

The Paris Court of Appeal ruled in favor of Mr. Castelbajac, revoking the trade marks under French law transposing Article 20(b) of Directive (EU) 2015/2436. This provision allows for revocation where a trade mark is used in a way that misleads the public about key aspects of the goods or services. PMJC appealed the decision, prompting a referral to the CJEU to clarify whether such use—implying continued involvement by the designer—can justify revocation.

Advocate General Emiliou revisited the Emanuel case, which held that the mere departure of a designer does not automatically make continued use of their name deceptive. However, Emiliou noted that this does not preclude revocation in cases where further evidence of misleading use exists. He emphasized that Article 20(b) TMD is broad enough to encompass deception about a product’s creative origin—not just its nature, quality, or geographical origin.

Importantly, the AG stated that for revocation to be justified, there must be solid and convincing evidence that the trade mark no longer performs its essential function: indicating the commercial origin of the goods. If the proprietor’s conduct creates a false impression that the designer is still involved, or poses a serious risk of doing so, the mark could be considered misleading. He cited as an example a marketing campaign that falsely implies the designer’s current involvement. However, isolated or occasional incidents are not enough. There must be a sustained and systemic pattern of misleading use.

The AG’s opinion reflects a high threshold for revocation, aiming to preserve the balance between protecting trade mark rights and preventing consumer deception. He cautioned against undermining the widespread commercial practice of using patronymic marks, especially since the average consumer is often aware that a designer’s name does not necessarily mean current involvement.

Still, the AG’s reliance on the requirement that the trade mark must lose its origin function raises some concerns. A trade mark can arguably still indicate the commercial origin of goods even if it misleadingly suggests a designer’s creative input. After all, the identity of the creative force behind a product and its commercial source are not always the same. This raises the question of whether revocation is the right remedy in such cases—or whether misleading advertising and unfair competition laws would be more appropriate tools.

The Opinion leaves room for nuanced interpretation, and the final word now rests with the CJEU. Its ruling will have important implications for brand ownership, trade mark integrity, and how far businesses can go in capitalizing on the legacy of a name—even after the person behind it has moved on.