UK: The Right to a Designer’s Name - Elizabeth Emanuel

In 1981, Elizabeth Emanuel, together with her husband became one of the most famous design teams in the world following on from their design of the wedding dress of Lady Diana Spencer in her marriage to Prince Charles.

However, Ms Emanuel was subsequently divorced from her husband and in 1990 Ms Emanuel began trading solely under the trade mark ELIZABETH EMANUEL. In 1996, together with a company called Hamlet International Plc, Ms Emanuel formed a company called Elizabeth Emanuel Plc (EE Plc). Ms Emanuel assigned to EE Plc her business of designing and selling clothing, all assets in the business including its goodwill and an application to register the mark ELIZABETH EMANUEL which was registered in 1997.

In September 1997, EE Plc assigned its business, goodwill and the registered trade mark to Frostprint Ltd, which immediately changed its name to Elizabeth Emanuel International Ltd (EE International). EE International employed Ms Emanuel, who left their employment after one month. In November 1997, EE International assigned the registered trade mark to another company, Oakridge Trading Limited (Oakridge). On 18 March 1998, Oakridge lodged an application to register the trade mark ELIZABETH EMANUEL, which was subsequently assigned, together with the earlier registration and associated goodwill to Continental Shelf 128 Ltd (CSL).

Ms Emanuel opposed the trade mark application in the name CSL and applied to revoke the earlier trade mark registration on the basis that the public would be deceived and confused into thinking that she was in some way associated with CSL. On 17 October 2002, the Hearing Officer of the opposition and revocation actions rejected the actions in the first instance on the ground that whilst the public may well have indeed been deceived and confused, such deception and confusion was lawful and the inevitable consequence of the sale of the business and goodwill previously conducted under the name of the original owner, Ms Emanuel.

Ms Emanuel appealed the Hearing Officer's decision to the Appointed Person, who subsequently referred a number of questions to the European Court of Justice (ECJ) for reference.

‘The following shall not be registered or if registered shall be liable to be declared invalid:

(g) trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service.’

‘A trade mark shall…be liable to revocation if, after the date on which it was registered,

(b) in consequence of the use made of it by the proprietor of the trade mark or with his consent in respect of the goods and services for which it is registered, it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.’

These were the articles upon which Elizabeth Emanuel based her opposition and revocation action against the trade mark application and registration for ELIZABETH EMANUEL in the name of CSL.

Following her appeal of the original opposition decision to the Appointed Person, the Appointed Person asked the ECJ to ascertain the circumstances in which a trade mark may be refused registration, or a subsequent registration invalidated on the ground that it is of such a nature as to deceive the public, within the meanings of Articles 3(1)(g) and 12(2)(b), where the goodwill associated with the trade mark has been assigned together with the business making the goods, where that trade mark corresponds to the name of the designer and the first manufacturer of those goods.

Ms Emanuel pointed to the public interest in the protection of consumers from deception enshrined in Article 3(1)(g). She submitted that for the article to apply, it suffices that there at least is a genuine risk that the use of the trade mark in issue misleads the average consumer of the goods or services as to their origin, and influences that consumer's purchasing decisions. Whether or not such a risk exists is a question of fact, so that all the circumstances which make that deception probable should be taken into consideration. She submitted that if deception is occurring, it does not matter that the goodwill and the trade mark have been assigned to the undertaking which believes it can use the trade mark.

CSL submitted that consumers are aware, especially in the field of fashion, that a trade name remains associated with the goods or services produced by an undertaking and that undertaking may have been assigned those rights. Such a principle applies equally to bakers, wine makers and the manufacturers of luxury goods. Thus, the assignment of a trade mark cannot in itself automatically give rise to confusion, whether or not the assignment was subject to publicity. CSL stressed that if Ms Emanuel's argument was upheld, it would be impossible to assign a business together with the goodwill and the trade mark for the goods which the business produces. Very often the value of the assignment of a business lies especially in the trade mark assigned.

One of the guiding principles of European trade mark law is that the essential function of a trade mark is to guarantee the identity of origin of marked goods or services to consumers or end users by enabling them, without the possibility of confusion, to distinguish the goods or services of one undertaking from those of another. A trade mark must offer a guarantee that all the goods or services carrying the trade mark have been manufactured or supplied under the control of a single undertaking which is responsible for their quality.

The ECJ held that in the case of a trade mark such as ELIZABETH EMANUEL, which corresponds to the name of a person, the public interest ground which justifies the prohibition laid down by Article 3(1)(g) of the Directive, must raise the question of the risk of confusion which such a trade mark may engender in the mind of the average consumer, especially where the person to whose name the mark corresponds originally personified the goods bearing the mark.

Nevertheless, the circumstances for refusing registration referred to in Article 3(1)(g) presupposes the existence of actual deceit or a sufficiently serious risk the consumer will be deceived. In the present case, even if the average consumer might be influenced in his act of purchasing a garment bearing the trade mark ELIZABETH EMANUEL by believing Ms Emanuel was involved in the design of the product, the characteristics and qualities of that product remain guaranteed by the undertaking which now owns the trade mark. Thus, the essential function of the trade mark is maintained.

Consequently, the name ELIZABETH EMANUEL could not be regarded in itself as being such a nature to deceive the public as to the nature, quality or geographical of origin of the product it designates.

The ECJ's decision is undoubtedly correct and as if the decision had gone in favour of Ms Emanuel, as CSL stressed, it would be impossible to assign a business together with the goodwill and the trade mark for the goods for which the business produces, without the risk of the assignee attempting to reclaim the rights at a later date. Although not explicitly dealt with by the ECJ, it will be interesting to see how Ms Emanuel will trade in the future.

Although she will probably be able to use her own name Elizabeth Emanuel to indicate that she is behind any business venture, presumably any main branding she uses will have to incorporate another distinctive mark other than her name to avoid confusion with CSL. In fact this has been borne out with Ms Emanuel launching a new brand called ‘Art of Being’. Further, CSL will have to be careful, as the ECJ stressed, not to imply in any way that Ms Emmanuel is still associated with its business. Life was no doubt much more straightforward in 1981.