Appointed Person makes first reference to ECJ

In Emanuel v Continental Shelf 128 Ltd, an appointed person of the UK Patent and Trademark Office has for the first time referred a question to the European Court of Justice (ECJ). David Kitchin requested that the ECJ clarify whether the confusion that results from the sale of a business and assignment of a trademark associated with a particular individual's name to an unconnected party amounts to "lawful deception" in the meaning of Articles 3(1)(g) and 12(2)(b) of the Community Trademark Directive.

Elizabeth Emanuel, a famous dress designer, registered her own name and device as a trademark. The business was subsequently sold, and the goodwill and registered mark assigned to the predecessors of Continental Shelf Limited. About a month after the business was sold, Emanuel left the employment of the company. Continental Shelf subsequently applied to register the word-only mark ELIZABETH EMANUEL. Emanuel filed an opposition against the application and an action for revocation against the registered mark on the grounds that they were deceptive under Section 3(3)(b) of the Trademarks Act 1994, which corresponds to Article 3(1)(g) of the directive.

At first instance the hearing officer refused the revocation and opposition. From the evidence, he found that there was a likelihood of confusion but decided that it was "lawful deception" and an inevitable consequence to the sale of a business. Emanuel filed an appeal to the appointed person. Continental Shelf requested that the appeal be referred to the High Court under Section 76(3) of the Trademarks Act on the grounds that a point of general legal importance was involved. Emanuel objected to this request, arguing that it was likely that the higher costs of the High Court would force her to discontinue her appeal.

Kitchin refused to refer the case to the High Court. He reasoned that while the case raised a question of legal importance, he doubted that it could be regarded as an issue of general legal importance (see Costs should be considered before referring cases to the High Court). Also, Kitchin found that the hearing officer had not made clear findings as to:

• the nature of the confusion and deception resulting from Continental Shelf's use of the ELIZABETH EMANUEL mark;
  
  
• the extent of confusion and deception; and
  
  
• the duration of the confusion and deception.

This "distinct and material error in principle", reasoned Kitchin, justified that he departed from the rule and reviewed the case himself.

In his review of the hearing officer's decision, Kitchin found that the evidence showed that:

• the confusion consisted in the public believing that the mark ELIZABETH EMANUEL indicated Emanuel's personal involvement in the design and production of the garments to which it applied;
  
  
• a significant portion of the relevant public was confused; and
  
  
• the confusion lasted at least two years.

The belief of Emanuel's personal involvement, Kitchin reasoned, was likely to influence the public's purchasing behaviour. Kitchin found that the sale of a business and assignment of its trademarks cannot be considered inherently deceptive: the public is aware that although a trademark indicates the source of the goods or services to which it applies, that source may change hands. He was nonetheless concerned by the argument that the public interest was at risk where the assignment of a trademark leads the public to believe that a particular person is still involved in the design or production of the goods to which the assigned mark applies. Accordingly, he referred to the ECJ the following question: is a mark deceptive within the meaning of Articles 3(1)(g) and 12(2)(b) of the Community Trademark Directive where, for a period following its assignment, the public is likely to believe that a particular person is still involved in the production of the goods to which the mark applies?

The outcome of this case is likely to have an impact on businesses who trade on the basis of marks that are linked to the personal services or skills of an individual. A business may not be as valuable without the individual's name attached but, on the other hand, would a famous individual wish to relinquish the ability to use his or her own name once the business is sold together with the trademark? How can a person protect his or her name for future use?

Cheng Tan, Field Fisher Waterhouse, London