Can a transferee continue to use your name as a trademark if this misleads consumers?

Many fashion designers and founders of well-known brands sell their companies at some point, including the brand name, which is often their own family name. But can the new owner continue to use that name without restriction? The Court of Justice of the European Union had to consider this question in a ruling of 18 December 2025 (C-168/24). The key message is clear: if the new owner uses the trademarkd in such a way that consumers are misled into believing that the original designer is still involved in the design, the trademark may be declared invalid on the grounds of deception.

The facts and context: the PMJC case against designer [X]

This case concerns a dispute between the company PMJC and the fashion designer [W] [X]. In 2012, PMJC acquired the assets of the designer's bankrupt company, including the word marks consisting of his family name “[W] [X]”. The collaboration between the designer and the acquirer ended definitively at the end of 2015.

A few years later, a legal battle ensued. PMJC sued the designer for trademark infringement because he was active again through a new company. However, in a counterclaim, the designer demanded that the trademarks purchased by PMJC be declared invalid.

The designer's argument was that PMJC was using the trademarks in a misleading way. According to him, PMJC gave the public the impression that he himself was still the creator of the garments on which the trademarks were affixed. A crucial detail here was that PMJC had previously been convicted of infringing the copyright of [W] [X] by imitating recent works by the designer (which had not been transferred).

The French Cour de cassation referred a preliminary question to the European Court of Justice to determine whether a trademark can be declared invalid in these circumstances.

The decision of the Court of Justice

The Court bases its ruling on the European Trademark Directives (Directive 2008/95 and Directive 2015/2436). This stipulates that a trademark may be declared invalid if, through the use made of it by its proprietor, it is liable to mislead the public, particularly as to the nature, quality, or place of origin of the goods. For Benelux trademarks, a similar provision can be found in Article 2.27.1.b BTIP.

In its ruling of 18 December 2025, the Court ruled:

• The list of grounds for deception in the law is not exhaustive. Deception may also relate to the person who designed the product (the “stylistic authorship”).
• The mere fact that a trademark bears the name of a designer who is no longer associated with the company is not in itself sufficient grounds for revocation. After all, the average consumer knows that a designer can sell his name.
• However, if the trademark owner actively uses the trademark in a way that actually misleads consumers or creates a serious risk of misleading them about the designer's involvement, revocation is possible.

The Court confirms that trademark law provisions do not preclude a trademark from being declared invalid if the proprietor wrongly gives the average consumer the impression that the designer is still involved in the design.

Legal analysis and interpretation

This ruling refines the balance between the rights of the trademark owner and the protection of consumers (and the original designer).

The criterion of ‘Stylistic Authorship’ From a legal perspective, it is interesting that the Court interprets the concept of “origin” broadly. It is not just about geographical origin or commercial origin (which company does it come from?), but also about “stylistic authorship”. Consumers purchase certain luxury goods specifically because of a designer's creative signature. If that expectation is manipulated, this constitutes misleading advertising within the meaning of Article 12(2)(b) of Directive 2008/95 (and the equivalent article in the new directive).

Distinction with the Emanuel ruling In the earlier Emanuel ruling (C-259/04) the Court ruled that continuing to use the designer's name is not misleading in itself. This new ruling nuances that by focusing on the additional circumstances. In this case, the decisive factor was that the goods were decorated with designs that infringed the designer's copyright and belonged to his specific “creative universe.”

The Court emphasizes that the purpose of trademark law is to ensure genuine competition. A trademark should not become an unfair tool for “capturing” customers by pretending that the creative mind behind the brand is still on board, when this is not the case.

What this means in practice

This ruling has important consequences for both buyers of fashion brands and the designers themselves.

For brand owners and investors

If you have acquired a brand based on the name of a well-known person (e.g., a fashion designer, architect, or artist), you need to be careful with your marketing and design strategy.

• Avoid imitation: You may use the name, but you may not suggest that the founder is still actively involved.
• Risk associated with ‘look-alike’ collections: Launching products that imitate the style of the former designer (especially if this involves copyright infringement) significantly increases the risk of your trademark being declared invalid.

For designers and founders

Have you sold your name as a trademark? You are not powerless if the new owner abuses your reputation.

• Check usage: If the acquirer actively gives the impression that you designed the new collections (even though you no longer have anything to do with them), this could be grounds for challenging the acquirer's trademark rights.
• Copyright as leverage: As demonstrated in this case, a successful claim for copyright infringement can form the basis for demonstrating that the public is being misled about the origin of the goods.

Frequently asked questions (FAQ)

Can a company continue to use my name if I have sold the company?
In principle, yes. The sale of a trademark that consists of your family name is valid. Consumers are expected to know that not every product bearing your name has been personally designed by you. It only becomes problematic if the company actively employs misleading strategies.

When does the use of a person's name as a trademark become ‘misleading’?
The use becomes misleading when, taking all circumstances into account, the trademark owner wrongly gives consumers the impression that the original designer is still involved in the design. A concrete indication of this is when the trademark owner uses designs that infringe on the designer's copyright in order to copy their style.

Conclusion

The Court of Justice draws a clear line: buying a trademark does not give you carte blanche to mislead consumers about the creative origin of the products. When the link with the original designer has been severed, the trademark owner may not artificially maintain that illusion by imitating the style and signature. Doing so risks losing the valuable trademark right entirely.