Opinion of the Advocate General of the Eu in Case C-168/24

Can a trademark made up of a surname be misleading?

Advocate General Nicholas Emiliou has delivered his long-awaited Opinion in Case C-168/24, and its reading invites an in-depth reflection on the use of patronymic trade marks after assignment.

The matter referred by the Cour de cassation (Court of Cassation, France) for a preliminary ruling questions the limits of Article 12(2)(b) of Directive 2008/95 and Article 20(b) of Directive 2015/2436: can a trade mark consisting of the surname of its creator be revoked when,  after assigning it to a third party, it is used in a manner that may mislead the public into believing that the creator is still involved with the design of the products?

Until now, the Emanuel judgment has served as guiding precedent: the mere separation of the creator is not enough to declare revocation. AG Emiliou, however, clarifies with legal precision that if an owner, through specific acts, effectively creates deception or a sufficiently serious risk that the public may believe in a non-existent relationship, the cause for revocation by deception may be met.

In the present case, the Advocate General reminds us that patronymic trade marks do not enjoy special immunity: if subsequent use prevents the trade mark from fulfilling its essential function – to indicate and guarantee the commercial origin of the goods – its protection may lapse. The deception does not have to be about the composition of the product, rather if it affects the stylistic or creative origin and this influences the consumer’s decision, that is enough.

The burden of proof, however, is high: it must be proven that the conduct is intense enough that it is no longer reasonable to expect that the public does not believe that the creator, usually the designer, is still involved. In other words, what is punished is the deliberate use of the prestige of another to sell those products.

In summary, this case reminds us that when a trademark has a proper name, it must be managed carefully because if it is exploited in such a way that distorts the reality of who´s behind the product, even a legitimately acquired trademark can be annulled.

Pending the CJEU’s ruling, this Opinion opens the door to a more balanced interpretation between the legitimate transfer of intangible assets and protecting the consumer against confusing or misleading uses.

Link to the decision: click here

July 30, 2025