• European Perspectives

    Elizabeth Emanuel Loses Her Good Name

    What’s in a name? Not as much, perhaps, as the famous might hope, following the long-awaited judgment of the ECJ in Elizabeth Florence Emanuel v Continental Shelf 128 Ltd. (Case C-259/04). In it, the Court weighed up whether, when a famous person’s name is used as a brand and the brand is later assigned with goodwill, a mistaken assumption that the celebrity is still associated with the goods amounts to deception sufficient to block or revoke a trade mark registration.

     

    The Facts

    This reference to the ECJ arose from a case on appeal before the Appointed Person in the United Kingdom Trade Mark Office. We set out the facts in detail in the Autumn 2004 issue of Make Your Mark; only a brief summary, therefore, follows here.

    The parties were Elizabeth Emanuel, famous dress-maker to the stars, and a company to whom she had sold the business which she had conducted under her personal name, ELIZABETH EMANUEL. The transferee took assignment of Ms Emanuel’s registered U.K. trade mark for the name and filed a new application for it, as well.

    When her relations with the transferee broke down, Ms Emanuel challenged the registration and new application on the grounds that the name ELIZABETH EMANUEL would deceive the public into believing, wrongly, that she was still involved with the design and manufacture of the goods sold under it, either because of its intrinsic association with her or in consequence of the use made of it by the transferee.

     

    Questions Referred to the ECJ

    Ms Emanuel failed before the Patent Office but appealed to the Appointed Person, who referred to the ECJ the question of whether a trade mark is prohibited from registration, or if registered may become subject to revocation, where:

    • “the goodwill associated with it has been assigned together with the business of making the goods to which the mark relates”;

    • “prior to the assignment the trade mark indicated to a significant proportion of the relevant public that a particular person was involved in the design or creation of the goods in relation to which it was used”; and

    • “a significant portion of the relevant public wrongly believed that use of the trade mark indicated that the particular person was still involved in the design or creation of the goods in relation to which the mark was used, and this belief was likely to affect the purchasing behaviour of that part of the public.”

     

    Remaining Nameless

    The ECJ acknowledged the public interest in barring the registration, or continued registration, of trade marks that are likely to deceive as to the involvement of a particular person in the creation of the goods.

    However, it considered that the public interest had to be balanced against the express registrability of personal names as trade marks, and the fact that, intrinsically, they were still capable of guaranteeing a single trade origin, even if the public could not identify who that source was.

    The ECJ considered that “the name Elizabeth Emanuel cannot be regarded in itself as being of such a nature as to deceive the public as to the nature, quality or geographical origin of the product it designates.” This applied notwithstanding the fact that the average consumer might be influenced in a decision to purchase an ELIZABETH EMANUEL garment by the mistaken belief that Ms Emanuel was still involved with the business.

    Even if consumers were mistaken about the trade origin of the goods, they still correctly assumed that the goods came from a single source. There would in such circumstances be no relevant deception for the purposes of opposition or revocation.

     

    Comment

    This ruling should be hailed by those who have bought, or may buy, businesses carried on under personal names.

    The ECJ’s decision has dispelled the cloud of doubt over whether such personal names can be protected as registered trade marks by the assignee where the value of the name resides in its continued association with the bearer of that name in the eyes of the average consumer. It is now clear that, where a business including such a name has been assigned with goodwill, the new owner can protect the name as a registered trade mark, even if the relevant public still wrongly believes that the person bearing the name is involved with the business.

    This is but one side of the coin, however. The mere fact that an assignee can register the personal name as a trade mark does not necessarily mean that he may use it with impunity. If the assignor has retained any goodwill, for example, use of the name that results in confusion as to the assignor’s role in the production or offering of the goods or services could result in a successful claim for passing off, as outlined in “When Goodwill Vendors Have Second Thoughts” (Make Your Mark, Spring 2006).

    Nevertheless, this decision recognizes the practical importance of protecting the investment of an assignee in a business including brands. Where an assignee has bought a business including trade marks, the value of the purchase will be undermined if he is not able to protect those marks through registration, and thus to acquire or maintain enforceable rights. The mere fact that the trade marks correspond to personal names should not render them less protectable by a business assignee. To hold otherwise would run counter to the tendency of famous names to increase, not decrease, the value of a business being sold.

    Assignees who do not acquire goodwill are unlikely to find themselves in so strong a position. Those considering the purchase of a business involving personal names should consider the details of the deal carefully and seek professional advice.