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United Kingdom Intellectual Property Office Decisions |
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You are here: BAILII >> Databases >> United Kingdom Intellectual Property Office Decisions >> ELIZABETH EMANUEL (Trade Mark: Opposition) [2006] UKIntelP o31706 (3 November 2006) URL: http://www.bailii.org/uk/cases/UKIntelP/2006/o31706.html Cite as: [2006] UKIntelP o31706 |
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For the whole decision click here: o31706
Result
Section 3(3)(b): Opposition dismissed. Section 46(1)(d): Revocation refused.
Points Of Interest
Summary
This was a resumed hearing by the Appointed Person following a reference to the European Court of Justice and the issue of its judgement on 30 March 2006. Case C-259/04, Elizabeth Florence Emanuel v Continental Shelf 128 Ltd [2006] ETMR 56.
This case involves opposition and revocation proceedings but the same point is at issue in both sets of proceedings. By way of background Ms Emanuel is a well known, indeed famous fashion designer. She registered her name as her mark in Class 25 in respect of articles of clothing and then assigned it to a Company which she set up to run her business. It encountered financial difficulties and was taken over by a company which is now known as Continental Shelf 128 Ltd (Continental). Initially Ms Emanuel joined Continental but after a short period left that company. Subsequently Continental continued to trade under the EMANUEL name and applied to register it in Classes 3, 14, 18 and 25. Ms Emanuel opposed the application and applied to revoke the earlier registration on the basis that the public would assume that she had designed or been associated with the goods which Continental was selling and thus be deceived as this was not the case.
In the Registry the Hearing Officer had dismissed both the opposition and revocation application on the grounds that Ms Emanuel had assigned the rights in her name to Continental and while initially there might be deception that deception was a natural consequence of assignment of the registered mark. (BL O/424/02 and BL O/425/02). On appeal to the Appointed Person by Ms Emanuel, Continental made an application to have the proceedings referred to the Court but this was refused by the Appointed Person.
When the Appointed Person heard the appeal he decided that the extent of the confusion and deception was not clear-cut and made a reference to the European Court of Justice seeking clarification as to the approach in relation to the use of famous names as a trade mark when that mark was not owned by the person concerned, which could lead to deception and confusion of the public.
In its judgement dated 30 March 2006 the ECJ pointed out that personal names could be registered as trade marks. Secondly, that the deception envisaged within Section 3(3)(b)of the Trade Marks Act relates to something inherent in the mark itself which deceives the public as to the nature, quality or geographical origin of the product it designates [2006] ETMR 56.
At the resumed hearing before a different Appointed Person it was argued on behalf of Ms Emanuel that the ECJ judgement was not totally clear and that a further reference to the ECJ should be considered. The Appointed Person saw no need for such a reference as she considered that, overall, the ECJ’s guidance indicated the way forward. At paragraph 20 of her decision the Appointed Person applies the ECJ judgement to the relevant matters of the present dispute and went on to dismiss both the opposition and the revocation application.
