Opinion of the Advocate General — ECLI:EU:C:2025:221
Date: 2025-03-27
Language of the case: French

Summary of the applicable provisions 
20 Pursuant to Article L. 714-6(b) of the Intellectual Property Code as it read prior to 
ordonnance no 2019-1169 du 13 novembre 2019 (Order No 2019-1169 of 
13 November 2019), the proprietor of a trade mark which has become, as a result 
of its acts, misleading, in particular as to the nature, quality or geographical origin 
of the goods or services, may have its rights in the mark revoked. 
21 That provision successively transposed the provisions of Article 12(2)(b) of the 
First Directive 89/104/EEC of 21 December 1988 to approximate the laws of the 
Member States relating to trade marks, then the identical provisions of 
Article 12(2)(b) of Directive 2008/95/EC, and finally the identical provisions of 
Article 20(b) of Directive (EU) 2015/2436. 
22 Interpreting Directive 89/104/EEC in its judgment of 30 March 2006, Emanuel, 
C-259/04, the Court of Justice pointed out that the cases of refusal of registration 
referred to in Article 3(1)(g) of that directive presuppose the existence of actual 
deceit or a sufficiently serious risk that the consumer will be deceived. The Court 
then held that, even if the average consumer might be influenced in his act of 
purchase by imagining that the natural person had been involved in the design of 
the product bearing the trade mark, that circumstance alone could not be of such a 
nature as to deceive the public as to the nature, quality or geographical origin of 
that product (paragraphs 47 to 49). 
23 The Court added that if, in the presentation of the trade mark, there was an 
intention on the part of the undertaking to make the consumer believe that the 
natural person was still the designer of the goods bearing the mark or that that 
person was involved in their design, that would be conduct which might be held to 
be fraudulent but which could not be analysed as deception for the purposes of 
Article 3 of Directive 89/104/EEC and which, for that reason, would not affect the 
trade mark itself and, consequently, its prospects of being registered 
(paragraph 50). 
24 Finally, stating that the conditions for revocation laid down by Article 12(2)(b) of 
Directive 89/104 are the same as those for the refusal of registration under 
Article 3(1)(g) of that directive, the Court of Justice ruled that a trade mark 
corresponding to the name of the designer and first manufacturer of the goods 
bearing that mark is not, by reason of that particular feature alone, liable to 
revocation on the ground that that mark would mislead the public, within the 
meaning of Article 12(2)(b) of Directive 89/104, in particular where the goodwill 
associated with that mark has been assigned together with the business making the 
goods to which the mark relates. 
Grounds for the reference for a preliminary ruling 
25 Pmjc submits that that judgment must be interpreted as meaning that any conduct 
on its part intended to make the consumer believe that Mr [W] [X] is still the 
REQUEST FOR A PRELIMINARY RULING OF 28. 2. 2024 – CASE C-168/24 
 
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designer of the goods bearing his surname or that he is involved in their design 
cannot affect the trade mark itself, even if it were held to be deceptive. 
26 That was the position taken by the tribunal judiciaire de Paris (Court of Paris) in 
its judgment of 26 June 2020, overturned by the judgment of 12 October 2022. 
27 That is also how the Advocate General at the Court of Cassation interpreted the 
above-mentioned Emanuel judgment, citing in particular the majority of French 
legal writers. 
28 The Court of Appeal, Paris held that, although in paragraph 50 of the Emanuel 
judgment, cited above, the Court of Justice, interpreting Article 3(1)(g) of 
Directive 89/104/EEC, held that a trade mark bearing the surname of a designer 
cannot be regarded as deceptive merely because that designer is no longer 
involved in the design of the goods bearing trade marks consisting of his or her 
surname, it did not expressly extend the grounds of that paragraph to the 
interpretation of Article 12(2)(b) of that directive. The Court of Appeal held that 
the latter provision must be interpreted as meaning that it does not preclude the 
revocation of a trade mark on the grounds that it is used in such a way as to make 
the public actually believe that the designer is still involved in the design of the 
goods bearing trade marks consisting of his or her surname, when that is no longer 
the case. 
29 Moreover, in its judgment of 14 May 2009, Elio Fiorucci (T-165/06), the Court of 
First Instance of the European Union, applying Article 50(1)(c) of Regulation 
(EC) No 40/94 of 20 December 1993 on the Community trade mark, the 
provisions of which are substantially identical to those of Article 12(2)(b) of First 
Directive 89/104, dismissed the application for revocation based on deceptive use 
of the trade mark relating to the surname of a designer after registration, not on the 
ground that it could be ruled out that such deceptive use of the mark would lead to 
revocation on the grounds of deceit, but on the ground that the intervener had not 
adduced any evidence of use of the trade mark after its registration. 
The question referred 
30 The question thus arises as to whether Article 12(2)(b) of Directive 2008/95/EC 
and Article 20(b) of Directive (EU) 2015/2436 must be interpreted as meaning 
that they preclude the revocation of a trade mark relating to 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 the designer whose surname constitutes the 
trade mark is still involved in the design of the goods bearing that trade mark, 
when that is no longer the case. 
ON THOSE GROUNDS, the Court: 
dismisses the first ground of appeal; 
PMJC 
 
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before ruling on the second and third grounds of appeal: 
having regard to Article 267 of the Treaty on the Functioning of the European 
Union; 
refers the following question to the Court of Justice of the European Union: 
‘Must Article 12(2)(b) of Directive 2008/95/EC of 22 October 2008 to 
approximate the laws of the Member States relating to trade marks and 
Article 20(b) of Directive (EU) 2015/2436 of 16 December 2015 to approximate 
the laws of the Member States relating to trade marks 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?’ 
[…] [Points of procedure, procedural information]