This case comment was written for The Reporter.
Case C-168/24 PMJC SAS v [W] [X] EU:C:2025:986 (18 December 2025).
On a reference from the French Cour de Cassation, the Court of Justice of the European Union has provided further refinement of its preliminary ruling in Case C-259/04 Emanuel v Continental Shelf 128 Ltd EU:C:2006:215, concerning brands still bearing the name of a designer who is no longer involved in the business or its creative process.
In Emanuel the CJEU found that a trade mark is not automatically deceptive just because it contains the name of a person who is no longer part of the proprietor’s business. In this case, the CJEU maintained this position, but also found that if use of that mark creates a serious risk that consumers believe that the named designer remains creatively responsible, this may justify revocation of the relevant trade marks on the basis of deceptiveness. Context is key.
Background
The case concerns Jean-Charles de Castelbajac (JCDC), a well-known French designer, who, in 1978 founded Maison Jean-Charles de Castelbajac, a fashion house. For many years it had much success, and his fashions were marketed under trade marks for “JC de CASTELBAJAC” (the Trade Marks). However, in 2011 his fashion brand went bankrupt, and was acquired by PMJC SAS (PMJC); this acquisition included lawful transfer of the Trade Marks to PMJC.
PMJC continued to market clothing under the CASTELBAJAC brand. However, after 2016, JCDC was no longer involved in the design or creative direction of products sold under that name, and PMJC continued to emphasise JCDC’s personal name in marketing of the products.
In 2018, PMJC sued JCDC for infringement of the Trade Marks, alleging he was improperly using his own name for new independent projects, after leaving the company in 2015.
In return, JCDC brought proceedings for revocation against PMJC on the grounds that the Trade Marks had become deceptive, and liable to mislead the public. JCDC argued that consumers buying fashion items bearing the CASTELBAJAC brand may assume that he was still responsible for their creative design, and given that assumption would be incorrect, the trade mark could be misleading within the meaning of Article 12(2)(b) of the Trade Mark Directive 2008/95/EC and its equivalent, Article 20(b), in the Trade Mark Directive (EU) 2015/2436.
Notably, the French courts found that in two instances, PMJC had infringed JCDC’s copyright in designs that hadn’t been transferred to PMJC with the Trade Marks. The Paris Court of Appeal also found that the Trade Marks were deceptive and revoked them. PMJC appealed that decision to the Cour de Cassation.
Reference to the CJEU
The Cour de Cassation asked the CJEU to provide further interpretation of Articles 12(2)(b) and Article 20(b) of the respective Directives, which provide (as updated) that:
“…a trade mark shall be liable to revocation if, after the date on which it was registered:
(b) as a result of the use made of it by the proprietor of the trade mark or with his consent in respect of the goods or services for which it is registered, it has become liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services” (our emphasis).
The Cour de Cassation essentially asked the CJEU the following questions:
Decision
The CJEU, considering these questions, found that a mark doesn’t automatically become misleading where a named designer is no longer involved in the creation of the products under that mark. It commented that, frequently, consumers do not expect fashion houses bearing the name of particular designers to be selling items that are designed by those named designers.
For a mark to be found “misleading” under Article 20(b), revocation is only possible where, considering all of the relevant MARCH 2026 REPORTER – PAGE 91 Calleja Consulting circumstances, use of the mark (a) actually deceives consumers or (b) creates a serious risk of deception.
Here the CJEU focussed on consumer perception; the decisive factor is how the average consumer perceives the mark in context.
It was important that there had been a finding that PMJC had infringed JCDC’s copyright in creation of products under the Trade Marks.
In particular, the CJEU considered the wording of Articles 12(2)(b) and 20(b), and found that the ways in which a trade mark could become misleading would include their nature, quality or geographic origin, although weren’t limited to those factors. A mark being misleading as to the creative origin of the products bearing that mark would fall within that provision.
Accordingly, in sectors where there is key creative input, such as fashion, the designer’s identity may be a key factor in influencing consumer choice. If consumers are led to believe that products are designed by a particular individual when they are not, this may amount to misleading use.
With that in mind, the CJEU found that national courts must examine:
(a) the way the mark is used in marketing;
(b) the relevant public’s expectations; and
(c) the economic significance of the designer’s identity in that MARCH 2026 REPORTER – PAGE 92 Calleja Consulting sector.
Comment
This decision further clarifies the ways in which a registered trade mark could become misleading and therefore liable to revocation.
It confirms that trade marks containing and/or consisting of personal names may continue to be valid where the named person is no longer involved in the design of the products bearing those marks.
However, brand owners must pay key attention to the ways in which those products are marketed and ensure that it does not lead to a consumer perception that the named person is creatively involved in the design or creation of those products when they are not.
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