# C_2004217EN.01001302.xml

| 28.8.2004 | EN | Official Journal of the European Union | C 217/13 |
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Reference for a preliminary ruling by the High Court of Justice, The Person Appointed by the Lord Chancellor under Section 76 of the Trade Marks Act 1994, on Appeal from the Registrar of Trade Marks, by order of that court dated 26 May 2004, in the case of Elizabeth Emanuel and Continental Shelf 128 Ltd

(Case C-259/04)

(2004/C 217/26)

Reference has been made to the Court of Justice of the European Communities by an order of the High Court of Justice, The Person Appointed by the Lord Chancellor under Section 76 of the Trade Marks Act 1994, on Appeal from the Registrar of Trade Marks, dated 26 May 2004, which was received at the Court Registry on 16 June 2004, for a preliminary ruling in the case of Elizabeth Emanuel and Continental Shelf 128 Limited on the following questions:

ARTICLE 3.1 (g) OF COUNCIL DIRECTIVE 89/104( 1 )

| 1. | Is a trade mark of such a nature as to deceive the public and prohibited from registration under Article 3.1 (g) in the following circumstances:
(a)
the goodwill associated with the trade mark has been assigned together with the business of making the goods to which the mark relates; (b)
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; (c)
after the assignment an application was made by the assignee to register the trade mark; and (d)
at the time of the application 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? | (a) | the goodwill associated with the trade mark has been assigned together with the business of making the goods to which the mark relates; | (b) | 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; | (c) | after the assignment an application was made by the assignee to register the trade mark; and | (d) | at the time of the application 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? |
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| (a) | the goodwill associated with the trade mark has been assigned together with the business of making the goods to which the mark relates; | | | | | | | | |
| (b) | 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; | | | | | | | | |
| (c) | after the assignment an application was made by the assignee to register the trade mark; and | | | | | | | | |
| (d) | at the time of the application 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? | | | | | | | | |

| 2. | If the answer to question 1 is not unreservedly yes, what other matters must be taken into consideration in assessing whether a trade mark is of such a nature as to deceive the public and prohibited from registration under Article 3.1 (g) and, in particular, is it relevant that the risk of deception is likely to diminish over time? |
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ARTICLE 12.2 (b) OF COUNCIL DIRECTIVE 89/104

| 3. | Is a registered trade mark liable to mislead the public in consequence of the use made of it by the proprietor or with his consent and so liable to revocation under Article 12.2 (b) in the following circumstances:
(a)
the registered trade mark and the goodwill associated with it have been assigned together with the business of making the goods to which the mark relates; (b)
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; (c)
after the assignment an application was made to revoke the registered trade mark; and (d)
at the time of the application a significant portion of the relevant public wrongly believed that use of the trade mark indicated that the particular person was still involved with 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? | (a) | the registered trade mark and the goodwill associated with it have been assigned together with the business of making the goods to which the mark relates; | (b) | 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; | (c) | after the assignment an application was made to revoke the registered trade mark; and | (d) | at the time of the application a significant portion of the relevant public wrongly believed that use of the trade mark indicated that the particular person was still involved with 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? |
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| (a) | the registered trade mark and the goodwill associated with it have been assigned together with the business of making the goods to which the mark relates; | | | | | | | | |
| (b) | 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; | | | | | | | | |
| (c) | after the assignment an application was made to revoke the registered trade mark; and | | | | | | | | |
| (d) | at the time of the application a significant portion of the relevant public wrongly believed that use of the trade mark indicated that the particular person was still involved with 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? | | | | | | | | |

| 4. | If the answer to question 3 is not unreservedly yes, what other matters must be taken into consideration in assessing whether a registered trade mark is liable to mislead the public in consequence of the use made of it by the proprietor or with his consent and so liable to revocation under Article 12.2 (b) and, in particular, is it relevant that the risk of deception is likely to diminish over time? |
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( 1 )  First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks. OJ L 40, 11.2.1989, p. 1-7.

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