ELIZABETH EMANUEL mark not deceptive

The decision of the appointed person in Emanuel v Continental Shelf 128 Ltd seems finally to have brought to a close one of the most commercially significant trademark cases of recent years. The result comes as a relief to all businesses trading under the name of a founding individual and confirms that Sections 3(1)(g) and 12(2)(b) of the First Trademark Directive do not undermine the assignability of such a brand. The validity of trademarks registered to protect such a brand will not be affected even if consumers are unaware of the assignment and make their purchasing decision under the mistaken belief that the founding individual is still involved in the business.

Elizabeth Emanuel brought opposition and revocation actions against the marks ELIZABETH EMANUEL and EE ELIZABETH EMANUEL (and logo). Having designed the Princess of Wales's wedding dress in 1981, Emanuel developed a leading bridalwear business under the name ELIZABETH EMANUEL. After a series of business transfers the goodwill and trademarks of this business were acquired by Oakridge Trading Ltd (Oakridge). There was a rift between Emanuel and the new owners and she became estranged from the business, which continued to bear her name.

Emanuel argued that (i) the continuing use of her name was misleading to the public, implying that she was personally involved in the design and creation of the clothes sold by Oakridge, and (ii) the sections of the directive which provide that a trademark shall be refused registration or revoked if it is, or has become, of such a nature as to deceive or mislead the public were applicable. The matter was referred to the European Court of Justice (ECJ).

The ECJ held that even where a consumer is influenced in purchasing an ELIZABETH EMANUEL item by the mistaken belief that Emanuel made it, the characteristics of that item are still guaranteed by the owner of the mark. This is the essential function of a trademark and it was not therefore of such a nature as to deceive the public as to the nature or quality of the goods it designates. The ECJ accepted that an undertaking, by intentionally creating an erroneous belief that a certain individual produced the goods, may be guilty of fraudulent behaviour. However, this behaviour would not affect the inherent registrability of the mark.

Following on from the ECJ's preliminary ruling, the appointed person drew out the implicit distinction between a mark which is deceptive as a result of its intrinsic qualities and is not registrable on absolute grounds (eg, ORLWOOLA for clothing), and one which causes confusion between undertakings and may be objectionable on relative grounds. The mark ELIZABETH EMANUEL was not inherently deceptive and so Emanuel's actions failed.

For background discussion of this case, see ELIZABETH EMANUEL Case helps to fashion trademark law.

Hastings Guise, Field Fisher Waterhouse, London