Page 16 - Katten Kattwalk and Kattison Avenue - Winter 2026 - Issue 5

Designer Surnames as Trade Marks (continued)
original designer, the registered trade mark becomes
vulnerable to revocation for deceptive use.
Key Takeaways for Brand Owners and Designers
For brand owners:
• A designer’s name can continue to be used as a
trade mark after they depart from a successor
business.
• However, branding, advertising and product
styling should not falsely imply the designer’s
ongoing creative involvement with the successor
business.
• Borrowing from the designer’s distinctive
aesthetic, especially without ownership of
relevant intellectual property (IP) rights, increases
the legal risk of deceptive use of the designer’s
name, which can lead to the revocation of a
registered trade mark of the designer’s name
owned by the successor business (even where the
rights in the designer’s name have been assigned
to the successor business).
For designers:
• EU law accepts that, in certain contexts, the
identity of the designer may form part of the
characteristics of the goods for the purposes of
assessing whether trade mark use is misleading.
• If a successor company suggests ongoing creative
involvement where none exists, legal remedies
may be available.
• Evidence such as misleading marketing or
unauthorised use of signature designs may be
decisive.
Background: Change of Ownership and the
Dissolution of a Creative Relationship
The case involves the French design company
JEAN-CHARLES DE CASTELBAJAC (the Company),
which owns registered trade marks for “JC de
CASTELBAJAC” (the Trade Marks), reflecting the
name of its founder, fashion designer Jean-Charles
de Castelbajac (JCC). Following the insolvency of
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the Company, ownership of the Trade Marks was
transferred to a separate entity, PMJC. JCC continued
to work for PMJC for a short while before parting
ways. PMJC then sued JCC for infringement of the
Trade Marks.
In return, JCC applied to revoke the Trade Marks on
the basis that the PMJC was using the Trade Marks
deceptively to suggest that JCC still had a hand in
clothing sold by PMJC under the Trade Marks (it
being notable that such clothing included a design
for which JCC owned the copyright — the French
courts found two instances where PMJC infringed
JCC’s copyright in designs that had not been assigned
to PMJC with the Trade Marks — this reinforced the
impression that the clothing was still authentically
JCC’s, even though he was no longer involved).
Accordingly, the Paris Court of Appeal revoked the
Trade Marks for deceptiveness. On appeal, the Court
de Cassation asked the CJEU whether EU law permits
the revocation of a registered trade mark when the
use of a designer’s name leads the public to believe
the designer is still involved in the design of goods
bearing that trade mark, when that is no longer the
case.
Key Legal Principle: Deception Centres on Use, Not
the Name Alone
Under EU law, a trade mark can be revoked where
its use misleads the public, “particularly” as to the
nature, quality or geographical origin of goods. The
CJEU confirmed that the “creative origin” of a product
(i.e., who designed it) can be a relevant characteristic,
and misleading consumers as to the creative origin
can justify revocation.
Importantly, the CJEU then went on to reaffirm a
long-standing principle that the mere fact that a
label bearing a designer’s name has been separat-
ed from the designer does not, by itself, make the
mark deceptive. It is expected that most consumers
recognise and appreciate that not every eponymous
fashion label is still controlled by its namesake. That
said, if the designer’s name is used in a way that
creates a false impression or a sufficiently serious