Source: EURLEX
Language: en
Format: md

Provisional text

OPINION OF ADVOCATE GENERAL

EMILIOU

delivered on 27 March 2025 ([1](#Footnote1))

**Case C**‑**168/24**

**PMJC SAS**

**v**

**[W] [X],**

**[M] [X],**

**[X] Créative SAS**

(Request for a preliminary ruling from the Cour de cassation (Court of Cassation, France))

( Reference for a preliminary ruling – Trade marks – Directives 2008/95/EC and 2015/2436 – Grounds for revocation of the trade mark – Misleading use – Trade mark corresponding to the surname of the designer – Transfer of the trade mark – Acts of the new proprietor intended to make the consumer believe that the designer is still involved in designing the goods covered by the trade mark )

  
  
  
  

I.      **Introduction**

1.        Under EU law, a trade mark shall be liable to revocation if, inter alia, through its use by the proprietor, it is liable to mislead the public, particularly as to the nature, quality or geographical origin of the goods or services in respect of which it has been registered. ([2](#Footnote2))

2.        In the past, the relevance of that rule has been discussed in the context of trade marks that corresponded to the name of the initial designer and manufacturer of those goods, in a situation where that designer was no longer involved in the undertaking owning those trade marks. In that respect, the Court has made clear, in its judgment in *Emanuel*, ([3](#Footnote3)) that the mere severance of the link between the designer, on the one hand, and the proprietor of the trade mark, on the other, does not render, by itself, such trade mark misleading and therefore liable to revocation.

3.        However, the present case tests that conclusion against somewhat more complex circumstances.

4.        More specifically, the present case concerns the French company [W] [X], founded by Mr [W] [X] for the marketing of fashion clothing and accessories. Following its insolvency, the rights to two French trade marks – both corresponding to the surname of Mr [W] [X] (‘the trade marks in question’) – were assigned to PMJC, a *société par actions simplifiée* (simplified joint stock company) (‘PMJC’).

5.        At first, Mr [W] [X] continued to work with that company, but they later parted ways and became embroiled in litigation, which has led, inter alia, to the present request for a preliminary ruling. In the main proceedings, PMJC is suing Mr [W] [X] for unfair competition and alleges that he has infringed that company’s rights to the trade marks in question. By way of counterclaim, Mr [W] [X] is seeking the revocation of PMJC’s rights to those trade marks, on the ground that PMJC is leading consumers to believe that he is still involved in the design of the goods covered by the trade mark.

6.        Against that background, the Cour de Cassation (Court of Cassation, France), before which the case has been brought, asks whether, under EU law, it is possible to revoke a trade mark that corresponds to the surname of the initial designer, on the grounds that it is used, after its assignment to a third party, in such a way as to actually lead the public to believe that the initial designer is still involved in the design of the goods covered by the trade mark, when that is no longer the case.

II.    **Legal framework**

A.      **European Union law**

7.        Article 12(2) of Directive 2008/95 provided that ‘a trade mark shall be liable to revocation if, after the date on which it was registered:

…

(b)      in consequence of the use made of it by the proprietor of the trade mark or with his consent in respect of the goods or services for which it is registered, it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services’.

8.        That provision was, in essence, the same as the terms of Article 12(2)(b) of Directive 89/104, ([4](#Footnote4)) the legal predecessor of Directive 2008/95.

9.        Directive 2008/95 was, in turn, replaced by Directive 2015/2436. Article 20(b) of the latter directive is worded in terms that are, in essence, and again, the same as those of Article 12(2)(b) of Directive 2008/95 (and as the terms of Article 12(2)(b) of Directive 89/104) ([5](#Footnote5)).

10.      Indeed, pursuant to Article 20 of Directive 2015/2436 ‘a trade mark shall be liable to revocation if, after the date on which it was registered:

…

(b)      as a result of the use made of it by the proprietor of the trade mark or with the proprietor’s consent in respect of the goods or services for which it is registered, it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.’

B.      **National law**

11.      Under Article L. 714-6(b) of the Code de la proprieté intellectuelle (Intellectual Property Code), in the version applicable to the facts of the case, a 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.

III. **Facts, national proceedings and the question referred**

12.      It follows from the order for reference that the company [W] [X], founded in 1978 by Mr [W] [X] to market fashion clothing and accessories, became subject to insolvency proceedings. As a result of those proceedings, the company’s tangible and intangible assets, including, in particular, the rights to the trade marks in question, namely ‘[W] [X]’ No 1 640 795 ([6](#Footnote6)) and ‘[W] [X]’ No 3 201 616 ([7](#Footnote7)), were assigned to PMJC in 2012.

13.      Mr [W] [X] continued to work with PMJC until the end of the contractually agreed term, namely 31 December 2015.

14.      On 21 June 2018, PMJC brought an action against Mr [W] [X]. It claimed that, by pursuing his professional and artistic activities through a company, [X] Creative, a *société par actions simplifiée* (simplified joint stock company), Mr [W] [X] was engaging in acts of unfair and parasitic competition and infringed PMJC’s rights to the trade marks at issue. By way of counterclaim, Mr [W] [X] sought to have PMJC’s rights in those trade marks revoked, on the grounds that PMJC had been using them, from the end of 2017 to the beginning of 2019, in a deceptive manner, more specifically in such a way as to lead the public to believe that he is the creator of the goods to which those marks are affixed.

15.      While that counterclaim was rejected at first instance, the Cour d’appel de Paris (Court of Appeal, Paris, France) upheld it and, by its judgment of 12 October 2022, revoked PMJC’s rights to the trade marks in question.

16.      According to that judgment, EU law does not preclude the revocation of a trade mark based on a designer’s surname where, by its conduct, the assignee of that trade mark leads the public to believe that the designer is still involved in the design of the goods, or creates a sufficiently serious risk of such deception.

17.      The Cour d’appel de Paris (Court of Appeal, Paris) held that this was the situation *in casu*, noting, inter alia, that PMJC had twice been found guilty of infringing Mr [W] [X]’s copyright in recent works that had not been assigned to PMJC in 2012. Its judgment concludes that the trade marks in question have become misleading, as their use consists in affixing them to goods bearing decorations that constitute infringements of Mr [X] [Y]’s copyright.

18.      PMJC lodged an appeal on a point of law before the Cour de cassation (Court of Cassation), the referring court.

19.      Before that court, PMJC criticises the judgment of the Cour d’appel de Paris (Court of Appeal, Paris) by reference, in particular, to the judgment of the Court of Justice in *Emanuel*. According to PMJC, that judgment must be interpreted as meaning that conduct on its part, even if it were intended to make the consumer believe that Mr [W] [X] were still the designer of the goods bearing the trade marks in question or that he was involved in their design, could not affect the trade marks themselves.

20.      In the light of divergent views as to how the abovementioned judgment in *Emanuel* should be interpreted, the Cour de cassation (Court of Cassation) decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:

‘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?’

21.      Written observations have been submitted by PJMC, the French Government and the European Commission. No hearing was held.

IV.    **Analysis**

22.      The present case concerns the rule of EU law according to which a trade mark may be revoked if, ‘as a result of the use made of it by the proprietor of the trade mark … in respect of the goods or services for which it is registered, it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services’. ([8](#Footnote8))

23.      When it comes to the specific circumstances against which that rule should be examined, I note that the order for reference states that PMJC has twice been found guilty of infringing Mr [X] [Y]’s copyright. However, it follows from the wording of the question referred that the issue to be addressed is broader and concerns the question whether the rule above captures the situation in which the trade mark’s proprietor uses a patronymic trade mark in such a way that leads the public to believe that that designer is still involved in the design of the goods covered by the trade marks in question, even though he is not. The discussion in the present Opinion will, thus, rely on that (broader) hypothesis as defined in the question referred.

24.      I will start my analysis by examining the judgment in *Emanuel*, which constitutes the main element of the Court’s case-law on the matter (A). I will then explain why the applicable rule of EU law does not, in principle, preclude the revocation of a trade mark corresponding to the name of a designer when it is used as described above, provided, however, that that use effectively prevents the essential function of that trade mark from being fulfilled (B). Lastly, I will address PMJC’s argument derived from Article 17(2) of the Charter of Fundamental Rights of the European Union (‘the Charter’) (C).

A.      **The judgment in** ***Emanuel***

25.      In the present subsection I will identify the *ratio decidendi* of the above judgment (1) and explain why, contrary to what is argued by PMJC, that judgment does not provide an answer to the question referred (2).

1.      ***The*** **ratio decidendi**

26.      The case that led to that judgment concerned trade marks for fashion items incorporating the name of Elizabeth Emanuel, a designer of wedding dresses who rose to prominence after designing the wedding dress of Princess Diana. ([9](#Footnote9)) In so far as is relevant here, Ms Emanuel assigned her business to a third party, which, in short, involved the transfer of a registered trade mark bearing her name and, thereafter, the severance of links between Ms Emanuel and the proprietor of the trade mark. The new proprietor subsequently applied to register a revised version of that trade mark, which continued to feature Ms Emanuel’s name. At that stage, Ms Emanuel took the view that, since all ties between her and the new proprietor’s undertaking had been severed, the trade mark had become deceptive. Accordingly, she both opposed the registration of the amended trade mark and applied for the revocation of the initial trade mark.

27.      The questions put to the Court concerned whether, in essence, the fact that Ms Emanuel was no longer associated with the design of the goods bearing the trade marks comprising her name meant that those trade marks were deceptive (and were therefore not eligible for registration) and had become misleading (and therefore liable to revocation). ([10](#Footnote10))

28.      The Court replied in the negative on both of those accounts.

29.      It turned, first, to the issue of refusal of registration due to the deceptive nature of the trade mark.

30.      That specific matter was, and still is, governed by the rule that ‘trade marks which are of such a *nature* as to *deceive* the public, *for instance*, as to the *nature, quality or geographical origin of the goods or service*’, ‘shall not be registered or, if registered, shall be liable to be declared invalid’. ([11](#Footnote11))

31.      In that respect, the Court concluded, in essence, that the severance of the link between the designer and the undertaking which owns the trade mark comprising that designer’s name does not in itself render the trade mark deceptive and does not therefore affect, as such, its eligibility for registration. Although the Court acknowledged that a consumer might be influenced, when purchasing a particular garment bearing a patronymic trade mark, by the (mistaken) belief that a specific individual, such as Ms Emanuel in that case, designed it, that does not, per se, render that patronymic trade mark deceptive because the characteristics and qualities of the goods covered by the trade mark at issue in that case remained guaranteed by the undertaking that is the new owner of the trade mark. ([12](#Footnote12))

32.      That conclusion echoes the general premiss that the essential function of the trade mark is, in short, to serve as the indication of the origin of the goods covered by the trade mark and to guarantee that a single undertaking is responsible for the quality of the goods (or services). ([13](#Footnote13)) That premiss embodies the idea that the trade mark guarantees that the goods are manufactured (or designed) under the control of a specific undertaking, namely the proprietor of the trade mark. ([14](#Footnote14))

33.      *In casu*, the Court, first, relied on that rationale to explain why a patronymic trade mark *can* change hands (and effectively leave the sphere of control of the initial designer), without that fact alone rendering it deceptive (and preventing registration of its modified version).

34.      It applied, second, in paragraph 53 of the judgment in *Emanuel*, that conclusion to Ms Emanuel’s claim for revocation, by reference to the identity of the conditions for the relevant ground for revocation, on the one hand, and those underlying the respective ground for the refusal of registration, on the other.

35.      While I will come back to that last part of the reasoning later, the conclusion from the judgment in *Emanuel* is that it cannot be successfully claimed that a trade mark corresponding to the name of a fashion designer becomes deceptive simply because the connection between the designer and the undertaking supplying the goods under such trade mark is lost. Such dissociation, *in itself*, neither affects the eligibility of a trade mark to be registered nor constitutes grounds for its revocation.

36.      I note that a contrary solution would in fact undermine the very ability of a trade mark corresponding to the name of a natural person to constitute an autonomous object of commercial transactions. ([15](#Footnote15)) That said, that conclusion is neither unclear nor contested in the main proceedings.

37.      What is at issue are the implications of the Court’s subsidiary conclusion in paragraph 50 of that judgment. In essence, the Court observed in that paragraph that if it were established that the new proprietor intended to mislead consumers into believing that Ms Emanuel was still the designer of the goods covered by the trade mark, such conduct could potentially be deemed fraudulent but could not be tantamount to a deception and, therefore, could not ‘affect the trade mark itself and, consequently, its prospects of being *registered*.’ ([16](#Footnote16))

38.      PMJC relies on that statement to claim that, even if it were established that it sought to mislead consumers into believing that Mr [X] [W] was still involved in the design of the marked goods, that could not be a ground for *revoking* the trade marks in question. It follows, in essence, from that party’s submissions that although the statement in paragraph 50 of the judgment in *Emanuel* concerns a trade mark *registration*, it applies *mutatis mutandis* to *revocation* in the light of the Court’s observation in paragraph 53 thereof that the revocation aspect of the case had to receive the same assessment as its registration aspect, given the identity of the applicable conditions.

39.      Below, I will explain why this position is not correct.

2.      ***The precise scope of the judgment in*** **Emanuel**

40.      To understand the precise scope of the judgment in *Emanuel*, it is necessary to take a closer look at its implications for the registration aspect of the case, on the one hand, (a) and for its revocation aspect, on the other (b).

(a)    ***Registration***

41.      It should be noted at the outset that the examination of the ground for refusal of registration due to the deceptive nature of the trade mark (whose content is given above in point 30 of the present Opinion) is made only in the light of the *sign* submitted for registration, based on its intrinsic characteristics ([17](#Footnote17)) (which are examined in relation to the goods or services in respect of which the registration is sought and based on the perception by the public ([18](#Footnote18))).

42.      In this context, the Court held that ‘in order to find that a mark had been registered in breach of the ground for refusal relating to the risk of deception, it must be established that the *sign* filed for the purposes of registration as a trade mark *creates per se* such a risk’. ([19](#Footnote19))

43.      Likewise, it follows from the case-law of the General Court on Article 7(1)(g) of Regulation 2017/1001 (the equivalent in the context of EU trade marks) that the applicability of the ground for refusal of registration on account of deception implies a *sufficiently specific designation* of potential characteristics of the goods or services covered by the trade mark under examination, which will be held to be deceptive where the target consumer is led to believe that the goods to which the given trade mark attaches possess certain characteristics which they do not in fact possess. ([20](#Footnote20))

44.      By contrast, the *use* of the trade mark by its proprietor is irrelevant for the purposes of the examination of eligibility for registration and cannot retrospectively lead to the invalidation of the registration. Indeed, the Court confirmed, in essence, that a trade mark cannot be declared invalid based on its management by its proprietor. ([21](#Footnote21)) For its part, the General Court explained that ‘in the case of invalidity, the question which arises is whether the mark should not have been registered *ab initio* for reasons already existing on the date of the trade mark application, since the consideration of subsequent evidence can serve only to clarify the circumstances as they were on that date’. ([22](#Footnote22))

45.      In that light, the statement made by the Court in paragraph 50 of the judgment in *Emanuel* (about the irrelevance of the fraudulent conduct for the purpose of registration) is perfectly compatible with the logic governing the examination of the eligibility of a sign for *registration* as a trade mark. Indeed, because that examination takes into account only the sign and its perception by the public in relation to the goods or services covered, then, quite logically, fraudulent conduct by the proprietor aiming at misleading the public as to who the true designer of the goods covered by the trade mark is, is irrelevant. That is also why the Court concluded, in that paragraph, that such manoeuvres could not affect the prospects of the sign of being registered.

46.      By contrast, and as I will explain now, that judgment does not allow for the conclusion that the same conduct is, as such, irrelevant in the context of the ground for revocation at issue here.

(b)    ***Revocation***

47.      The main source of confusion regarding the implications of the judgment in *Emanuel* for the present case originates from a combined reading of paragraphs 50 and 53 of that judgment. To recall, in the former, the Court held that possible fraudulent conduct does not affect the possibility of registration of a sign as a trade mark. In turn, paragraph 53 contains reasoning on the revocation of a trade mark to which the Court applies its earlier conclusion on the registration aspect of the case (irrelevance of the severance of the link), by reference to the identity of the conditions that apply in both contexts.

48.      I admit that, at first glance, those two passages may lead to the same conclusion as the one reached by PMJC. Indeed, one could argue that, because the Court excluded the relevance of fraudulent conduct for the propose of registration (paragraph 50), the same must hold true in the context of revocation, given that the Court reaches its conclusion on the revocation aspect on the basis of the explanation that the conditions applying in both contexts are the same (paragraph 53).

49.      However, a closer look leads to a different outcome.

50.      *First*, the judgment’s key finding on the registration aspect of the case does not feature in paragraph 50, but rather in paragraph 49, which, in essence and in combination with paragraph 48, establishes that the severance of the link between the designer and the new proprietor of the trade mark does not, in itself, affect the registration of a trade mark corresponding to the name of that designer. That conclusion is then crystallised in paragraph 51 of that judgment. By contrast, the statement in paragraph 50 supplements that main conclusion by commenting on a (hypothetical) case of fraudulent conduct by the proprietor (and on its irrelevance for the purpose of registration). Since paragraph 53, in essence, reproduces the main conclusion reached in paragraph 51 (to hold that the severance of the link is likewise irrelevant in the context of revocation), it is natural to consider that that conclusion on revocation refers to the main finding (irrelevance of the severance of the link) rather than to the additional statement in paragraph 50 (irrelevance of the fraudulent conduct).

51.      *Second*, regarding the reference, in paragraph 53, to the applicable conditions being the same, even a cursory comparison of the relevant provisions which apply, respectively, to the refusal of registration and revocation reveals a key distinction. Although the lists of the applicable *criteria* for examining the deceptiveness/misleading nature of a trade mark are, in both cases, the same (‘the nature, quality or geographical origin’), and those lists are both likewise open-ended (‘for instance’/’particularly’), the relevant *input data* for the examination of those criteria differ fundamentally, as the French Government and the Commission observe. In that respect, Article 20(b) of Directive 2015/2436 (and its legal predecessors) make it clear that the examination of the ground for revocation at issue here must take into account the *use* made of the trade mark (after its registration). By contrast, this element is not relevant at the stage of the registration for the reasons that I have provided in the previous subsection.

52.      Therefore, while it is unclear to me what precisely the Court meant when it observed that the conditions for revocation and refusal of registration under the respective legislative provisions were the same, I take the view that, had the Court intended to exclude the relevance of the fraudulent conduct described in paragraph 50 of the judgment *also* in the context of revocation, it would have provided an explicit explanation. That is because, unlike the stage of registration which relies solely on the characteristics of the sign per se, there is no obvious basis for disregarding any post-registration conduct in the revocation analysis.

53.      *Third*, the facts of the case did not involve any specific – and potentially fraudulent – acts by the new proprietor and both aspects of that case had to be examined *only* in the light of the (mere) dissociation of the link between the designer and the new owner of the trade mark. That again supports the conclusion that the scope of paragraph 53 of the judgment in *Emanuel* concerns the irrelevance of severance of the link in the context of revocation (by analogy to what the Court had stated in the *main* conclusion in respect of registration).

54.      Based on those considerations, and in agreement with the positions of the French Government and the Commission, I do not share PMJC’s view that the judgment in *Emanuel* determines the response to be provided to the question referred in the present case. Accordingly, the issue raised by that question must be examined anew.

B.      **Examination of the ground for revocation at issue**

55.      Before engaging in an examination of the scope of the ground for revocation at issue with a view to proposing a reply to the question referred (2), I will start this subsection by making preliminary comments on what precise rule applies *ratione temporis* (1).

1.      ***Preliminary comments***

56.      By its question, the referring court seeks interpretation of both Article 12(2)(b) of Directive 2008/95 and Article 20(b) of Directive 2015/2436.

57.      I note that the latter directive took effect as of 15 January 2019. It follows from the Court’s case-law that, in essence, the relevant date to determine which of the two directives applies is the date on which the action for revocation was brought. ([23](#Footnote23))

58.      On that point, while it follows from the order for reference that the main action was brought by PMJC in 2018, I understand that the action for revocation results from the counterclaim lodged by Mr [X] [Y]. However, no date is given for that counterclaim. The indication, in the order for reference, that in that counterclaim Mr [X] [Y] alleges misleading use of the trade marks at issue ‘from the end of 2017 to the beginning of 2019’ suggests that that counterclaim post-dates, at any rate, ‘the beginning of 2019’. That in turn seems to indicate that the applicable directive might be Directive 2015/2436, although that is, of course, for the referring court to verify.

59.      Nevertheless, the question as to which of the two directives applies appears, in the present context, moot because the resulting rule is, in essence, the same.

60.      In that regard, I am not convinced by the Commission’s suggestion that the change in the French-language version of Article 20(b) of Directive 2015/2436, namely the replacement of the previous wording ‘est propre … à induire le public en erreur ([24](#Footnote24))’ (which reflects the English wording ‘it is liable to mislead’) with the wording ‘risque … d’induire le public en erreur’ (meaning ‘risks misleading the public’), reflects the legislature’s intention to broaden the scope of the provision to encompass situations that may not have fallen within its ambit previously, including a situation where there is simply an eventuality of the public being misled.

61.      Contrary to that view, I consider, on the one hand, that the previously used French wording ‘est propre à’ already conveyed the notion of a risk that the public may be misled (as opposed to the idea of actual deceit).

62.      On the other hand, quite early on, the Court made clear that the scenario of revocation at issue in fact presupposes ‘actual deceit or a sufficiently serious risk that the consumer will be deceived’. ([25](#Footnote25))

63.      That means that although the actual deceit is not the only scenario that would lead the revocation ground at issue to be triggered, the resulting test is rather strict, and that a mere possibility of the public being misled about a particular feature of the product is not enough. Rather, to the contrary, the concept of a serious risk used by the Court conveys, in my view, that there should be a high degree of probability that the actual deceit will occur.

64.      Lastly, a change similar to the one in the French-language version does not seem to have occurred in other language versions. ([26](#Footnote26)) In that light, the resulting test under the two directives must be considered to be the same and understood in the sense given previously by the Court. Indeed, that change (for which I could not identify any explanation) cannot be viewed as evidence of an intention on the part of the legislature to relax the rule, when all the other language versions remained, in the relevant part, the same. ([27](#Footnote27))

65.      In the analysis below I will therefore refer, for the sake of simplicity, only to Article 20(b) of Directive 2015/2436 (noting that my conclusion will be equally valid should the referring court determine that the applicable act is Directive 2008/95).

2.      ***The scope of the applicable rule***

66.      To determine whether the revocation ground at issue here may cover a situation such as the one described in the question referred, I will examine the wording of Article 20(b) of Directive 2015/2436 (a) and the context in which that provision appears and the objectives that that directive pursues (b).

(a)    ***Wording***

67.      Turning, first, to the text of the applicable provision, I note that the test laid down in Article 20(b) of Directive 2015/2436 (and its legal predecessors) is defined by the *use*, by the proprietor or with its consent, *of the trade mark* that *is liable to mislead the public* about the nature (and so on) of the covered goods and services. The French-language version of the directive is likewise explicit when it states that a trade mark is to be considered as misleading when its use risks *inducing the public into error*.

68.      I note that the language of that provision is very open-ended.

69.      First, it refers to the use of the trade mark by its proprietor without any specific limitation beyond the fact that it must concern the trade mark and must lead to the trade mark being liable to mislead the public. The definition of such a use is therefore not given.

70.      Second, it also follows from that provision that the misleading use does not have to concern, necessarily, the quality, nature or geographic origin of the covered goods and services, as manifested by the open-ended nature of the listed criteria. For that matter, the open-ended nature of that list, in my view, renders unnecessary a discussion on whether an ‘error *in persona*’, as considered in the present case, can be linked to one of those listed criteria and which specific criterion it relates to.

71.      Thus, and similarly to what is agued by the French Government, I fail to see why the subject matter of the error, which can trigger the application of the ground for revocation at issue here, would have to be limited, as PMJC argues, to any specific aspects of the goods covered by the trade mark, such as those related to their composition or to a specific way in which they have been produced (that party provides the example of a trade mark referencing gold that would be used for goods not containing any gold, or a trade mark referencing organic production for goods that would in fact be of industrial origin).

72.      It is true that, in the context of Article 58(1)(c) of Regulation 2017/1001, which is identical, in essence, to Article 20(b) of Directive 2015/2436, EUIPO’s practice indicates that the misleading use of a trade mark arises when the characteristics of the goods do not align with the clear message conveyed by the sign. This would apply, for instance, to a trade mark containing the word elements ‘goat’ and ‘cheese’ and a figurative element depicting a goat affixed to a cheese not made of goat’s milk, or a trade mark ‘Pure New Wool’ registered for clothing that would be used for clothing made from artificial fabric. ([28](#Footnote28)) Moreover, for trade marks consisting of, or containing, a geographical indication, misleading use will be established if, in short, the goods are not manufactured in the place corresponding to the trade mark. ([29](#Footnote29))

73.      In that vein, PMJC seems to be arguing that a possible misrepresentation on its part as to the specific designer behind the goods covered by the trade mark cannot lead to the revocation of the trade marks in question because such a misrepresentation would not affect the message conveyed by the trade mark and would constitute an element external to the trade mark and to the product.

74.      I recall, first, that taking into account the elements external to the sign is precisely what differentiates the ground for revocation at issue from the ‘parallel’ ground for refusal of registration due to the deceptiveness of the sign, as already explained.

75.      Second, the only possible message that could arguably be conveyed by a trade mark corresponding to the name of a fashion designer is the fact that the goods covered by the trade mark have been designed by, or in some association with, that designer (at some point in time), as seems to have been acknowledged by the Court in the judgment in *Emanuel*. ([30](#Footnote30)) However, the relevance of such perception for the purposes of revocation (or registration) has been precisely, and for good reason, excluded in that judgment. Similarly, the General Court upheld the finding that ‘the use of patronymic marks is a widespread practice in all sectors of commerce and the public concerned is well aware that, behind every patronymic mark, there is not necessarily a fashion designer of that name’. ([31](#Footnote31))

76.      Be that as it may, accepting the arguments of PMJC would mean that a patronymic trade mark, such as those at issue here, could hardly ever become deceptive, as the French Government observes in essence. Indeed, the mere fact that the designer whose name the trade mark corresponds to has not been involved in the design of the goods covered by the trade mark does not make that trade mark liable to revocation, as made clear in the judgment in *Emanuel*, and, nor, at the same time, does any act of the proprietor creating a false impression to the contrary (because such an act would concern an element external to the trade mark and to the goods, to follow PMJC’s arguments ).

77.      I am of the view that such a conclusion must be rejected. This is not only because, as argued by the French Government, there is no reason to treat patronymic trade marks differently from other trade marks (by excluding the possibility that their use may become misleading), but also because, as already observed, it follows from the wording of Article 20(b) of Directive 2015/2436 that what matters for the examination to be conducted under that provision is whether the use of such a trade mark misleads the public about a particular feature of the product (or creates a sufficiently serious risk of such deceit). In other words, the fact that the patronymic trade mark itself cannot convey any flawed message about a particular feature of the goods covered by the trade mark does not answer the question as to whether a particular use of that trade mark may do so.

78.      I fail to see, therefore, why misleading use of the trade mark could not concern the actual designer of the goods or, more broadly perhaps, the stylistic origin of the product, if it were to be concluded that the use of a trade mark implies falsely that the goods covered by the trade mark have been created in association in some way with a given designer, with the result that the public is in fact deceived on that precise matter (or if there is a sufficiently serious risk of such deceit).

79.      To my mind, the fact that such a situation can fall within the scope of Article 20(b) of Directive 2015/2436 is further confirmed by the examination of the context in which the above provision appears and of the objectives that Directive 2015/2436 follows.

(b)    ***Context and objectives***

80.      As regards the context, I note that the provision at issue forms part of Section 4 of Chapter 2 of Directive 2015/2436, which provides for three distinct revocation scenarios (which were similarly laid down in Article 12 of Directive 2008/95).

81.      The *first* scenario concerns revocation due to, in short, ‘absence of genuine use’ of the trade mark. In that respect, Article 19(1) of Directive 2015/2436 provides that a ‘trade mark shall be liable to revocation if, within a continuous five-year period, it has not been put to genuine use in the Member State in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.’

82.      I note that, while this rule aims at reducing the total number of trade marks registered and protected in the European Union (and therefore at reducing the possible conflicts between them), it also expresses, more broadly, the concept that ‘trade marks fulfil their purpose of distinguishing goods or services and allowing consumers to make informed choices only when they are actually used on the market.’ ([32](#Footnote32)) In that vein, the Court in particular has explained that the concept of ‘genuine use’ must be understood ‘to denote actual use, consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin’. ([33](#Footnote33))

83.      With regard to the *second* scenario, Article 20(a) of Directive 2014/2436 provides for revocation when ‘as a result of acts or inactivity of the proprietor, [the trade mark] has become the common name in the trade for a product or service in respect of which it is registered’. That scenario thus aims at removing protection in respect of trade marks which have become a generic reference and, as a consequence, have lost their distinctive feature (often due, in short, to a particular commercial success) ([34](#Footnote34)) and therefore their capacity to fulfil its function as an indication of origin. ([35](#Footnote35))

84.      The *third* revocation scenario is the one at issue in the present case.

85.      While each of those three scenarios obviously applies to a distinct situation, it follows from the Court’s case-law that they must all be understood as implementing the logic and objectives underpinning trade mark rules which dictate that the rights conferred upon the trade mark proprietor are protected only in so far as the trade mark continues to fulfil its essential function of indicating the origin, ([36](#Footnote36)) reflected in its very definition, which describes it as any sign that is, inter alia, capable of ‘distinguishing the goods or services of one undertaking from those of other undertakings’. ([37](#Footnote37)) When that function is no longer fulfilled, the rights of the trade mark proprietors may be revoked. ([38](#Footnote38))

86.      Therefore, it would appear incoherent to interpret the scope of the third ground for revocation at issue here as categorically excluding, in all circumstances, the possibility to revoke a patronymic trade mark although its *use* conveys a false message about the stylistic origin of the covered goods or services that prevents the mark from serving as a guarantee that the goods covered by the trade mark have been developed under the control of the proprietor’s undertaking.

87.      I recall at this juncture that the main conclusion reached by the Court in the judgment in *Emanuel* was justified by the fact that the severance of the link between the patronymic trade mark and the designer did not affect the essential function of the trade mark because it was the new proprietor of that patronymic trade mark that guaranteed the quality of the goods covered by the trade mark. That is why the Court refused the idea that a mistaken belief on the part of the consumer as to who designed the respective garments (which, as the Court acknowledged, is however factually plausible) may affect the registration or lead to revocation.

88.      It would seem to me incoherent, with that conclusion, to suggest that because the severance of the link is, *as such*, unproblematic for the registration and irrelevant for revocation, no use of such a ‘severed’ patronymic trade mark can ever lead to revocation. Indeed, such a conclusion would amount to ensuring potentially permanent protection for a trade mark despite the fact that its use by the proprietor runs counter to the above logic, impeding the possibility for the consumer to distinguish the goods covered by the trade mark easily from those produced under the control of another entity (by possibly taking an undue advantage of the work of another undertaking).

89.      For that matter, I observe that the General Court has already embraced the same position as the one I advocate here in its judgment in *Fiorucci.*  To explain, when it rejected the claim that the trade mark corresponding to the name of a fashion designer should be revoked, it relied on the fact that the claimant had failed to adduce sufficient evidence to that effect, but not because such a claim could not be entertained on the ground for revocation due to misleading use of the trade mark. ([39](#Footnote39))

90.      A similar position was also embraced by Advocate General Ruiz-Jarabo Colomer in his Opinion in *Emanuel*. Recalling, in essence, that the severance of the link between the trade mark and the designer does not affect the essential function of the trade mark for the purpose of revocation, he added that ‘in order to give a decision on such deception of the public as may have occurred, it is [however] incumbent on the national court to weigh up the specific circumstances of the case, in order to verify the precise consequences of using the mark’. ([40](#Footnote40))

91.      Lastly, I recall that it follows from the Court’s conclusion in the judgment in *Emanuel* that the severance of the link between the designer and the patronymic trade mark proprietor does not per se (‘by reason of that particular feature alone’) make a trade mark liable to revocation. However, that element of the reasoning quite logically indicates that such severance, if combined with other factors, may lead to the opposite outcome, as also argued by the French Government.

92.      At the same time, and as the Commission observes in essence, the findings of the judgment in *Emanuel* must still, in my view, be understood as the *main* rule that applies in a situation where the link is severed between a patronymic trade mark and the designer whose name that trade mark corresponds to. In that vein, I recall again the observation made subsequently that ‘the use of patronymic marks is a widespread practice in all sectors of commerce and the public concerned is well aware that, behind every patronymic mark, there is not necessarily a fashion designer of that name’. ([41](#Footnote41))

93.      Consequently, a finding that the use of a severed patronymic trade mark has become deceptive must necessarily be based on a solid body of evidence demonstrating that the trade mark has lost its capacity to fulfil its essential function, due to a deceit, or a serious risk thereof, on the part of the trade mark proprietor regarding the stylistic origin of the goods that was caused by use of the trade mark.

94.      More specifically, I consider that, in order to trigger the revocation of a trade mark embodying a name of a designer, the evidence must show conduct on the part of the proprietor that aims at establishing, in the minds of the consumers, a false impression of links between the goods covered by the trade mark and the initial designer, and that that conduct has to be of such intensity, extent or logic so as to lead to the conclusion that the target public *can no longer* be reasonably expected *not to assume* that the given designer has been involved in the design of the specific goods (or services).

95.      Whether the conduct such as that described by the referring court ultimately warrants revocation on the grounds of misleading use of the trade marks in question is, of course, a matter of factual assessment to be dealt with by the national court. In that respect, I am nevertheless of the view that elements relevant for such examination could involve, for instance, an advertising campaign by the trade mark proprietor that would feature the designer and falsely imply his actual involvement in the artistic supervision of the concerned goods, as the Commission proposes, in essence, or other types of communications on the part of the proprietor stating that specific goods have been designed in collaboration with the designer, or indeed the use, on the goods covered by the trade mark, of the decorations that pertain to, or are characteristic of, the specific creative universe of the designer, not covered by the proprietary rights transferred together with the trade marks in question, resulting in a false perception, on the part of the consumer, as to the (stylistic) origin of the goods covered by the trade mark.

96.      In the light of the considerations above and in agreement with the positions expressed by the French Government and the Commission, I am of the view that Article 20(b) of Directive 2015/2436 must be interpreted as not 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. Moreover, I am of the view that to determine whether such use of a trade mark must be considered as misleading, within the meaning of the above provision, it must follow from the evidence adduced that the trade mark at issue can no longer fulfil its essential function of indication of origin, in particular because the conduct of its proprietor actually creates a false impression, in the mind of the target public, of association between the goods covered by the trade mark and the designer or when the use of the trade mark brings about a sufficiently serious risk of such deceit, and where the target public can no longer be reasonably expected not to assume that the given designer has been involved in the design of the specific goods covered by the trade mark.

97.      Furthermore, it remains for me to consider PMJC’s argument that the general conclusion above – that the conduct described in the question referred falls within the scope of the ground for revocation at issue and may, depending on the circumstances, lead to the revocation of a patronymic trade mark – constitutes a ‘disproportionate sanction’ infringing its right to property, guaranteed under Article 17(2) of the Charter, because such conduct would be more appropriately addressed under the rules of other areas of law.

C.      **Article 17(2) of the Charter, the revocation of a trade mark and the applicability of rules of other areas of law**

98.      I would start this subsection by noting that trade marks are subject to protection under Article 17(2) pursuant to which ‘intellectual property shall be protected.’ ([42](#Footnote42))

99.      In that respect, I agree with PMJC that the revocation of a trade mark has serious consequences for the trade mark proprietor, for whom the trade mark may represent a valuable commercial asset. ([43](#Footnote43))

100. However, that right is not absolute and must be viewed in relation to its social function. ([44](#Footnote44)) Consequently, its exercise may be restricted, in compliance with the conditions set out in Article 52(1) of the Charter.

101. Turning now to PMJC’s arguments, that party appears to claim that should the revocation of a trade mark be the consequence of its acts of misleading the public as to the actual designer behind the goods covered by the trade marks in question, that would be a disproportionate consequence because such conduct is already addressed by the rules of other areas of law such as misleading advertisement or unfair competition. Those rules, according to that party, do not bring about consequences as drastic as the revocation of a trade mark.

102. I understand the arguments of PMJC as meaning that the conclusion reached in the previous section informs an interpretation of Article 20(b) of Directive 2015/2436 that is at odds with Article 17(2) of the Charter, in that it leads to a disproportionate restriction to its right to property, going beyond what is necessary under the circumstances.

103. I recall, first, that provisions of secondary legislation, such as Article 20(b) of Directive 2015/2436, must of course be interpreted in such a way that is not in conflict with the fundamental rights protected by the legal order of the European Union. ([45](#Footnote45))

104. Additionally, when it comes to the specific requirement of necessity forming part of the proportionality test embodied in Article 52(1) of the Charter, I am of the view that the legal consequences triggered by the rules of other areas of law, such as those referred to by PMJC or, for that matter, the rules of copyright referred to in the order for reference, cannot be seen as alternative measures which would be as effective as the revocation of a trade mark, in the light of the objective that the respective rules of EU law on trade marks follow, namely to preserve the legal protection associated with a given trade mark only in so far as that trade mark’s essential function is maintained, as previously explained.

105. Indeed, while those specific rules pursue objectives that are specific to the given area of law, none of them allows for the drawing of conclusions from the proprietor’s conduct when that conduct affects the very essential function of the trade mark as the indication of origin.

106. In that vein, the Court explained that while EU rules on trade marks confer certain rights on the proprietor of a trade mark, they also require conclusions ‘to be drawn from the proprietor’s conduct’, ([46](#Footnote46)) which may involve the removal of the protection associated with a trade mark, when the essential function of the trade mark is compromised. By contrast, such a result could not be achieved should the legal conclusions to be drawn from the proprietor’s conduct be limited to those provided for in other areas of law, such as those referred to by PMJC.

107. Moreover, concerning proportionality *stricto sensu*, namely the question as to whether the disadvantages caused by the interpretation of the provision at issue are disproportionate to the aims pursued, the Court has already explained that by adopting the respective grounds for revocation, the EU legislature struck a balance between the protection of the interests of undertakings as proprietors of trade marks, on the one hand, and the public interest in maintaining protection afforded to a trade mark only as long as it can perform its essential function of the indicator of origin, on the other. ([47](#Footnote47))

108. I am of the view that the interpretation suggested above is in keeping with that balance. Indeed, it follows from the previous analysis that, while an infringement by the proprietor of other rules of law may be a relevant element for the examination as to whether the trade mark should be revoked, such a simultaneous infringement cannot lead to an automatic revocation decision without a broader assessment as to whether the trade mark has lost its capacity to fulfil its essential function.

109. In the light of those considerations, I am of the view that the interpretation that I suggest of Article 20(b) of Directive 2015/2436 is not at odds with Article 17(2) of the Charter.

V.      **Conclusion**

110. In the light of the above, I suggest that the Court reply to the Cour de Cassation (Court of Cassation, France) as follows:

Article 12(2)(b) of Directive 2008/95/EC of the European Parliament and of the Council 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 the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks

must be interpreted as not 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.

To determine whether such use of a trade mark must be considered as misleading, within the meaning of those provisions, it must follow from the evidence adduced that the trade mark at issue can no longer fulfil its essential function of indication of origin, in particular because the conduct of its proprietor actually creates a false impression, in the mind of the target public, of association between the goods covered by the trade mark and the designer or when the use of the trade mark brings about a sufficiently serious risk of such deceit, and where the target public can no longer be reasonably expected not to assume that the given designer has been involved in the design of the specific goods covered by the trade mark.

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[1](#Footref1)      Original language: English.

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[2](#Footref2)      As provided in Article 20(b) of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (OJ 2015 L 336, p. 1) (‘Directive 2015/2436’) and in Article 12(2)(b) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25) (‘Directive 2008/95’).

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[3](#Footref3)      Judgment of 30 March 2006 (C‑259/04, ‘the judgment in *Emanuel*’, EU:C:2006:215).

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[4](#Footref4)      First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) (‘Directive 89/104’).

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[5](#Footref5)      I will explain later that that is not entirely true for the French-language version of Article 20(b) of Directive 2015/2436, but that does not have any bearing on the resulting rule.

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[6](#Footref6)      For ‘cosmetics and beauty products’ and ‘clothing’.

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[7](#Footref7)      For ‘clothing for women, men and children’ and ‘dress designing; styling (for clothing)’.

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[8](#Footref8)      That is the content of, currently, Article 20(b) of Directive 2015/2436, and, in essence, of two legal predecessors of that provision, namely Article 12(2)(b) of Directive 2008/95 and Article 12(2)(b) of Directive 89/104.

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[9](#Footref9)      Opinion of Advocate General Ruiz-Jarabo Colomer in [Emanuel](http://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX:62004CC0259)(C‑259/04, ‘the Opinion in *Emanuel*’, EU:C:2006:50, points 3 and 4).

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[10](#Footref10)      The applicable rules of EU law use the term ‘deceit’ in the context of the relevant ground for *refusal of registration* of a trade mark, while they use the term ‘to mislead’ in the context of the relevant ground for *revocation* of a (registered) trade mark. Without there being a need to explore that linguistic choice in any more depth, I note that the Court has used the term ‘deceit’ to refer to both scenarios (registration *and* revocation). Judgment of 4 March 1999, *Consorzio per la tutela del formaggio Gorgonzola* (C‑87/97, ‘the judgment in *Gorgonzola*’, EU:C:1999:115, paragraph 41).

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[11](#Footref11)      Emphasis added. The rule, today, in Article 4(1)(g) of Directive 2015/2436 is in essence identical to Article 3(1)(g) of Directive 89/104 at issue in the judgment in *Emanuel.* That ground of refusal of registration constitutes one of a number of absolute grounds for refusal or invalidity of trade marks listed, today, in Article 4 of Directive 2015/2436, which preclude the registration of a trade mark and, if a trade mark is mistakenly registered, may lead to it being declared invalid.

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[12](#Footref12)      The judgment in *Emanuel*, paragraphs 48 and 49.

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[13](#Footref13)      See, for instance, judgments of 8 June 2017, [W.F. Gözze Frottierweberei and Gözze](http://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX:62015CJ0689)(C‑689/15, ‘the judgment in *Gözze Frottierweberei*’, EU:C:2017:434, paragraph 41 and the case-law cited), and of 13 May 2020, [SolNova v EUIPO – Canina Pharma (BIO-INSECT Shocker)](http://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX:62019TJ0086)(T‑86/19, EU:T:2020:199, paragraph 72 and the case-law cited).

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[14](#Footref14)      Opinion of Advocate General Cruz Villalón *in Backaldrin Österreich The Kornspitz Company* (C‑409/12, ‘the Opinion in *Kornspitz*’, EU:C:2013:563, point 27).

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[15](#Footref15)      See the Opinion in *Emanuel*, points 35 to 40. In the context of EU trade marks, Article 20(1) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1) (‘Regulation 2017/1001’) provides that ‘an EU trade mark may be transferred, separately from any transfer of the undertaking, in respect of some or all of the goods or services for which it is registered.’ Similarly, Article 21 of the Agreement on Trade-Related Aspects of Intellectual Property Rights, constituting Annex 1C to the Agreement establishing the World Trade Organisation, signed at Marrakesh on 15 April 1994 and approved by Council Decision 94/800/EC concerning the conclusion on behalf of the European Community, as regards matters within its competence, of the agreements reached in the Uruguay Round multilateral negotiations (1986-1994) (OJ 1994 L 336, p. 1), states that ‘Members may determine conditions on the licensing and assignment of trademarks, it being understood that … the owner of a registered trademark shall have the right to assign the trademark with or without the transfer of the business to which the trademark belongs.’

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[16](#Footref16)      Emphasis added.

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[17](#Footref17)      The Opinion in *Emanuel*, point 57. See also, for instance, judgment of 29 June 2022, [Hijos de Moisés Rodríguez González v EUIPO – Ireland and Ornua (La Irlandesa 1943)](http://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX:62020TJ0306), T‑306/20, ‘the judgment in *La Irlandesa*’, EU:T:2022:404, paragraph 27).

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[18](#Footref18)      See, for instance, judgment of 22 March 2018, [Safe Skies v EUIPO – Travel Sentry (TSA LOCK)](http://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX:62017TJ0060) (T‑60/17, EU:T:2018:164, paragraph 63 and the case-law cited), and the judgment in *La Irlandesa*, paragraph 71.

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[19](#Footref19)      The judgment in [Gözze Frottierweberei](http://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX:62015CJ0689), paragraph 55 and the case-law cited. Emphasis added.

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[20](#Footref20)      Judgment of 14 December 2022, [Devin v EUIPO – Haskovo Chamber of Commerce and Industry (DEVIN)](http://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX:62020TJ0526)(T‑526/20, EU:T:2022:816, paragraph 119 and the case-law cited), or of 29 November 2023, [Myforest Foods v EUIPO (MYBACON)](http://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX:62023TJ0107) (T‑107/23, EU:T:2023:769, paragraph 30 and the case-law cited). By way of illustration, deceptiveness was confirmed in the case of the sign ‘WINE OH!’, used in relation to ‘mineral and aerated waters and other non-alcoholic drinks’, due to the contradiction between the sign and the nature of the goods supposed to bear it, a perception further reinforced by the use of the exclamation mark. That trade mark was nevertheless considered eligible for registration for other goods and services, Decision of the Fourth Board of Appeal of 7 March 2006, R 1074/2005-4 – WINE OH!, paragraphs 20 to 24.

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[21](#Footref21)      The judgment in [Frottierweberei and Gözze](http://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX:62015CJ0689), paragraphs 56 and 57.

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[22](#Footref22)      The judgment in *La Irlandesa*, paragraph 68.

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[23](#Footref23)      See, to that effect, judgment of 10 March 2022, [Maxxus Group](http://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX:62021CJ0183) (C‑183/21, EU:C:2022:174, paragraph 30).

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[24](#Footref24)      Featuring in the previously applicable Article 12(2)(b) of Directive 2008/95.

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[25](#Footref25)      The judgments in *Gorgonzola*, paragraph 41, and in *Emanuel*, paragraph 47. That observation was made in the context of Directive 89/104 whose Article 12(2)(b) was the equivalent provision of Article 12(2)(b) of Directive 2008/95. In the context of the EU trade mark, see the judgment in [La Irlandesa](http://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX:62020TJ0306), paragraph 55 and the case-law cited or judgment of 22 June 2022, [Unite the Union v EUIPO – WWRD Ireland (WATERFORD)](http://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX:62020TJ0739)(T‑739/20, EU:T:2022:381, paragraphs 46 to 49).

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[26](#Footref26)      I would also note that with only two exceptions, in respect of the Finnish- and Hungarian-language versions, it would seem that all language versions of Directive 2008/95 already relied on the idea of a (mere) risk (or even a possibility) of the public being misled.

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[27](#Footref27)      See, for instance, judgment of 29 April 2004, [Björnekulla Fruktindustrier](http://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX:62002CJ0371) (C‑371/02, ‘the judgment in *Björnekulla*’, EU:C:2004:275, paragraph 16).

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[28](#Footref28)      European Union Intellectual Property Office (EUIPO), Guidelines for Examination in European Union Trade Marks, Part D Cancellation, Section 2 Substantive Provisions, 31 March 2024, available at <https://guidelines.euipo.europa.eu/>, p. 1465, paragraph 2.4.4.

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[29](#Footref29)      Ibid. The trade mark ‘Mövenpick of Switzerland’ was revoked because the goods in question were produced in Germany. Decision of the First Board of Appeal of 12 February 2009, R 697/2008‑1, *Biscosuisse – Chocosuisse* v *Mövenpick Holding*, paragraphs 17 to 19.

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[30](#Footref30)      The judgment in *Emanuel*, paragraph 48, and point 31 of the present Opinion.

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[31](#Footref31)      Judgment of 14 May 2009, [Fiorucci v OHIM – Edwin (ELIO FIORUCCI)](http://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX:62006TJ0165)(T‑165/06, ‘the judgment in *Fiorucci*’, EU:T:2009:157, paragraphs 30 and 31). See also the Opinion in *Emanuel*, point 63.

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[32](#Footref32)      Recital 31 of Directive 2015/2436. See also judgment of 22 October 2020, [Ferrari](http://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX:62018CJ0720) (C‑720/18 and C‑721/18, EU:C:2020:854, paragraph 32 and the case-law cited).

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[33](#Footref33)      Judgment of 15 January 2009, [Silberquelle](http://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX:62007CJ0495) (C‑495/07, EU:C:2009:10, paragraph 17 and the case-law cited).

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[34](#Footref34)      See the Opinion in *Kornspitz*, point 30. The examples of ‘walkman’, ‘cellophane’ and ‘aspirin’ are given in the Opinion of Advocate General Léger in [Björnekulla Fruktindustrier](http://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX:62002CC0371)(C‑371/02, EU:C:2003:615, point 50).

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[35](#Footref35)      Judgment of 6 March 2014, [Backaldrin Österreich The Kornspitz Company](http://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX:62012CJ0409) (C‑409/12, ‘the judgment in *Kornspitz*’, EU:C:2014:130, paragraph 22 and the case-law cited).

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[36](#Footref36)      See the judgments in *Kornspitz*, paragraph 22, and in *Björnekulla*, paragraph 22.

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[37](#Footref37)      Article 3 of Directive 2015/2436. See also recital 13 of Directive 2015/2436 to the same effect and recital 16 thereof referring to ‘the function [of a trade mark being] in particular to guarantee the trade mark as an indication of origin’. See the judgment in *Kornspitz*, paragraph 21 and the case-law cited.

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[38](#Footref38)      The judgment in *Kornspitz*, paragraph 22 and the case-law cited.

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[39](#Footref39)      The judgment in *Fiorucci*, paragraphs 36 and 37, in the context of EU trade mark.

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[40](#Footref40)      The Opinion in *Emanuel*, point 70.

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[41](#Footref41)      The judgment in *Fiorucci*, paragraphs 30 and 31.

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[42](#Footref42)      For application to trade marks, see judgment of 30 January 2019, [Planta Tabak](http://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX:62017CJ0220)(C‑220/17, ‘the judgment in *Planta Tabak*’, EU:C:2019:76, paragraphs 91 to 100) or ECtHR, 11 January 2007, *Anheuser-Busch Inc. v. Portugal*, CE:ECHR:2007:0111JUD007304901, § 72 in the context of Article 1 of the First Additional Protocol to the Convention for the Protection of Human Rights and Fundamental Freedoms, which guarantees the right to the protection of property.

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[43](#Footref43)      As has also been acknowledged, for instance, in the Opinion of Advocate General Jacobs in [Parfums Christian Dior](http://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX:61995CC0337)(C‑337/95, EU:C:1997:222, point 39). For the acknowledgment of serious consequences of the revocation, see the Opinion in *Kornspitz*, point 30.

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[44](#Footref44)      The judgment in *Planta Tabak*, paragraph 94 and the case-law cited.

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[45](#Footref45)      See, to that effect and for example, judgment of 30 January 2024, *Landeshauptmann von Wien (Family reunification with a minor refugee)* (C‑560/20, EU:C:2024:96, paragraph 48).

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[46](#Footref46)      Judgment of 27 April 2006, [Levi Strauss](http://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX:62005CJ0145) (C‑145/05, EU:C:2006:264, paragraph 27).

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[47](#Footref47)      See, to that effect, ibid., paragraph 29, and the judgment in *Kornspitz*, paragraph 32 and the case-law cited. See also the Opinion in *Kornspitz*, point 31. I note that that balance is further strengthened by the rule, following from Article 21 of Directive 2015/2436, that when the reasons for revocation exist only in respect of the specific goods or services, the revocation must concern only them.

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