The risk of deceptiveness, even in trademarks, consists in the possibility that a trademark, although lawful at the time of registration, may subsequently become misleading to consumers as to the nature, quality or geographical origin of the product or service. In fact, a trademark is considered deceptive (or misleading) when it leads the public to believe that the product has characteristics that it does not actually possess, rendering it null and void or revoked from registration because it is contrary to the law.

This risk particularly affects geographical trademarks (which evoke a place) and patronymic trademarks (based on the names of individuals or families).

In particular, trademarks that evoke a geographical origin or the name of a natural person or family (patronymic) are exposed to a risk of misleading the target audience in the event of business discontinuity, transfer of the trademark or use that is inconsistent with the expectations and characteristics evoked. European Union case law has clarified that misleadingness derives not only from actual deception (Article 7(1)(g) EUTMR), which prohibits registration, but also from a potential risk, sufficient to justify the revocation of the trademark pursuant to Article 58(1)(c) EUTMR.

In particular, with regard to geographical deception, we recommend considering the following:

1. Ascertain whether the public perceives the trademark as indicative of a geographical location, whether it may believe that the products originate from that location or have some connection to it.
2. Next, it must be ascertained whether there is a discrepancy between the place and characteristics evoked and the actual origin of the goods. This should also take into account the fact that the apparent neutrality of the trademark with respect to the goods or services claimed may conceal a risk of deception, for example when the sign refers to a place known for a specific product.
3. On the previous point, two distinct interpretative approaches have been identified, which have essentially succeeded each other in their prevalence in European case law over time:
1. the first states that the trademark cannot be considered misleading if there is a real possibility of using it in a compliant manner, i.e. for products actually originating from the place evoked;
2. the second, more restrictive and current approach states that in the absence of an express limitation on the origin of the products, the trademark would also enjoy protection for goods not originating in the place evoked, with a consequent risk of misleading the public. From this perspective, the mere possibility of proper use is not sufficient to exclude misleadingness.
4. In summary, two cases are referred to:
   1. i) HUDSON (19/03/2018, R 173/2017-5) stated that the name of the river did not evoke any element connected to clothing for the European public;
   2. ii) POLONEZ (22/11/2022, R 1069/2022-4) in which the applicant requested the exclusion of products of Polish origin in classes 29-32 in order to overcome a refusal on the grounds of the descriptive character due to the meaning of the mark in Romanian (“of Poland”). The Board of Appeal considered that, if the limitation had been accepted, it would have rendered the mark misleading. This decision clarifies that even legal protection extended to goods that are not consistent with the origin evoked can give rise to misleadingness.

The above requires a strategic study phase prior to the filing of the trademark, which must be thoroughly examined and evaluated from a medium- and long-term perspective, in which the trademark must maintain a clear link with the territory it evokes and with the expectations that said territory conveys to the target audience.

With regard to patronymic deception, the following must be considered:
Trademarks consisting of personal or family names are subject to deception if the public mistakenly assumes a business or creative continuity that no longer exists, for example when the company – often a family business – is acquired by other entities such as financial institutions.

This possibility is comprehensively summarised in the case of Elizabeth Emanuel (C-259/04) following the designer's sale of her trademark. The EU Court ruled that:

1. actual deception is not necessary;
2. the risk that the public believes that the designer is still involved is sufficient;
3. there is no deception if the goodwill has been transferred with the trademark.

Goodwill is, in fact, the element that guarantees continuity with the family/surname that has been adopted as a trademark and that evokes values or expectations in the target audience that would not otherwise be perceived.

Conclusions

Both during registration and acquisition, it is therefore advisable to carry out a careful study (including clear planning, at least in the medium term) to ensure an effective and lasting link with the territory and/or with the names of individuals or families that comprise it.

This assumption applies not only to the validity of the trademark itself, but also when the trademark is evaluated to enhance its economic value, or during the due diligence or transcription phases.

Another consideration that must be made relates to the non-static nature underlying the use of the trademark, as it is an asset that may be subject to at least partially different uses.

It is advisable to periodically monitor the semantic evolution of the trademark and update or modify communication policies in order to avoid its misleading nature.