On 18 December 2025, the CJEU handed down a judgment clarifying when the continued use of a designer’s name as a trade mark can be considered deceptive once the designer is no longer involved with the brand.

The dispute concerned Jean‑Charles de Castelbajac, who owned the fashion company JEAN-CHARLES DE CASTELBAJAC, and PMJC SAS (‘PMJC’). Following insolvency proceedings, the company transferred its trade marks to PMJC in 2011/2012, while Mr. Castelbajac continued to work as the brand’s designer until the end of 2015. In 2018, PMJC initiated proceedings in France against Mr. Castelbajac, claiming that he infringed the transferred trade marks and engaged in unfair competition. In response, Mr. Castelbajac filed a counterclaim seeking revocation of PMJC’s trade mark rights, on the basis that their use of the marks could mislead the public into believing he was still involved in designing the goods.

The case was referred by the Court of Cassation, France, to the CJEU to clarify whether a trade mark consisting of a designer’s surname can be revoked under Article 20(b) of Directive 2015/2436 if, after the assignment, its use leads the public to believe that the designer is still involved. The CJEU emphasised that simply using a designer’s name when the designer is no longer involved is not sufficient on its own to justify revocation. The average consumer recognises that a designer’s name on a product does not necessarily mean the designer personally created it.

However, revocation is possible if the use of the name misleads the public or creates a serious risk of deception, assessed in light of all relevant circumstances. In the PMJC case, the CJEU noted that the products not only bore the designer’s name, but also included decorative elements characteristic of the designer’s specific creative universe, which also infringed his copyright. These circumstances increase the risk that consumers believe, mistakenly, that the designer was involved in the design of the goods bearing that mark.

The judgement is not surprising in light of the Court of Justice’s earlier judgment in the Emanuel case (C-259/04). It emphasises that a designer’s name carries commercial value and can continue to be used even after she or he leaves the brand – provided the use is not misleading. The risk of revocation only arises if the brand’s use of the name actively misleads consumers about the designer’s involvement, highlighting the importance of transparency in branding and marketing.

At the same time, designers are generally entitled to use their own name in business, provided such use complies with honest practices in industrial or commercial matters and does not create a risk of misleading consumers. In other words, while a brand can continue to benefit from the commercial value of a designer’s name, the designer does retain, to some extent, the personal right to use his/her own name commercially (subject of course to any contractual restrictions agreed by the designer), while Article 20(1)(c) of the EU design regulation also ensures that a designer can still reproduce a registered design for the purpose of making citations or of teaching (say by showcasing her or his portfolio of past works), provided again that such acts are compatible with fair trade practice and do not unduly prejudice the normal exploitation of the design and that mention is made of the source.

Bear & Wolf regularly acts for creatives and right owners in the product design field. If you require any assistance or further information, please don’t hesitate to get in touch with us.