Jean-Charles filed a counterclaim and sought to have PMJC’s rights in the JC marks revoked on the grounds that PMJC had been using the marks in a deceptive manner from the end of 2017 to the beginning of 2019. Jean-Charles alleged that the company had used the JC marks in a way to make the public believe that Jean-Charles was the creator of the goods to which the marks were attached.

In October 2022, the Court of Appeal in France, issued a judgment where PMJC’s rights were partially revoked. The court considered that EU law did not prevent the revocation of a trade mark referring to a designer’s surname in a situation where “the assignee of that trade mark leads the public actually to believe that the designer is still involved in the design of the goods, or creates a sufficiently serious risk of such a deception”.

According to the Court of Appeal, PMJC had on two occasions had been found guilty of infringing Jean-Charles’ copyright in his recent works, which were not assigned to PMJC. The company had implied that Jean-Charles was still involved in the design of its goods through its use of the JC marks for clothing, which also incorporated a design, the copyright of which was owned by Jean-Charles.

The Court of Appeal held that the JC marks had become deceptive.

PMJC appealed to the Court of Cassation, which referred the following question to the Court of Justice of the European Union (CJEU): “Must Article 12(2)(b) of Directive [2008/95] and Article 20(b) of Directive [2015/2436] be interpreted as precluding the revocation of a trade mark consisting of the surname of a designer on the grounds that it is used after the assignment in such a way as to make the public actually believe that that designer is still involved in the design of the goods bearing the mark, when that is no longer the case?”

The CJEU decision

With reference to the Advocate General’s Opinion and Emanuel, C 259/04, the CJEU considered that a trade mark consisting of the name of a fashion designer used by an undertaking with which that designer is no longer connected is not sufficient alone, to justify revocation of that mark. The average consumer, who is reasonably well informed and reasonably observant and circumspect, is aware that not all goods bearing a trade mark which refers to the name of a designer, have been created by that designer.

Revocation on the grounds at issue, presumes either actual deception or that it is proven that there is a sufficiently serious risk of deception.

The question regarding whether use of the trade mark is misleading to the public must be considered regarding all the relevant circumstances of that case. In this case, the court held that “the presence of decorations pertaining to the specific creative universe of a designer and infringing his or her copyright, on the goods covered by the trade marks consisting of the name of that fashion designer”, might constitute an applicable circumstance given that it increases the risk that the public may mistakenly discern the creative origin of the goods covered by the trade marks.

The CJEU therefore answered the referred question as follows: “Article 12(2)(b) of Directive 2008/95 and Article 20(b) of Directive 2015/2436 must be interpreted as not precluding the revocation of a trade mark consisting of the name of a fashion designer on the ground that, having regard to all the relevant circumstances, it is used by the proprietor of the trade mark, or with his or her consent, in such a way as to lead the average consumer who is reasonably well informed and reasonably observant and circumspect to believe, mistakenly, that that designer was involved in the design of the goods bearing that mark.”

In short

It is important for fashion companies and other businesses to carefully consider the use they make of any trade marks which bear a former designer’s name which they are authorised to use, to ensure that they are not used in conjunction with any of the designer’s other IP rights which they do not own, in order not to deceive consumers as to the creative origin of goods. 

Case details at a glance

Jurisdiction: EUIPO
Decision level: CJEU
Parties: PMJC SAS v [W] [X], [M] [X] and [X] Créative SAS
Date: 18 December 2025
Citation: C-168/24
Decision: dycip.com/cjeu-c-168-24