C-259/04, Emanuel v. Continental Shelf 128

Emanuel sold her trademark in 1997, but attempted to get her name back two years later after the company that bought her trademark started selling clothes under her signature

Article 2 of Directive 89/104 contains a list, described as a list of examples in the seventh recital in the preamble to that directive, of signs which may constitute a trade mark. The Court had already held that this list expressly includes personal names (Case C-404/02, Nichols [2004] ECR I-8499, para. 22, paragraph 22).

Emanuel argued that consumers were being deceived by the company who had bought here trademark, since they were under the impression that she was the designer.
The Court held that the the name Elizabeth Emanuel cannot be regarded in itself as being of such a nature as to deceive the public as to the nature, but
left it up to the referring court to determine whether the new owner of the trademark intended to make consumers believe Emanuel is still designing the clothes bearing the mark.

In that case there would be conduct which might be held to be fraudulent but which could not be analysed as deception for the purposes of Directive 89/104 and which, for that reason, would not affect the trade mark itself and, consequently, its prospects of being registered.

Text of judgement