ELIZABETH EMANUEL: THE AG SPEAKS

Advocate General Ruiz-Jarabo Colomer gave his Opinion earlier today in Case C-259/04 Elizabeth Florence Emanuel v Continental Shelf 128 Ltd, the first-ever reference to the European Court of Justice from a Lord Chancellor's Appointed Person in the UK. This case arises from the assignment by fashion designer of a trade mark (above, right) containing a prominent representation of her own name. Can her name be validly registered or used as a trade mark by others if that registration or use causes members of the public erroneously to think that she is in some way connected with the business that owns and uses it?

The AG has advised the ECJ to rule that

"(1) Article 3(1)(g) of Council Directive 89/104 must be interpreted as meaning that a sign comprising, at least partially, a proper name, assigned together with the goodwill of which it forms part, does not deceive the public, even if it evokes the mistaken impression that that person took part in the design and creation of the goods for which it is used.

(2) In the same circumstances, the mere use of the registered mark does not deceive the public within the meaning of Article 12(2)(b) of the said directive. It is for the national judicial authority to consider the particular features of the case in evaluating the influence which the use of that mark may have had on the impression received by the public".

The IPKat thinks this is correct in terms of trade mark law, but feels some sympathy with the poor consumer too. Still, he will reserve judgment till he sees what the ECJ decides when it gives its ruling this summer.