In 2017, Huawei applied for trademark registration of its logo bearing two vertical interlocking semi-circles for use on computer hardware and software programs at EU Intellectual Property Office (EUIPO). The Luxury brand Chanel opposed the trademark claiming that it is very much similar to its famous registered figurative trademark as displayed above.
The opposition was based on following grounds:
- The basis of opposition by Chanel was its figurative mark, filed on 24 January 2013 and registered on 17 May 2013 under Application No 3977077, for goods in Class 9: Cameras, sunglasses, glasses; earphones and headphones; computer hardware’.
- The figurative mark is a well-known mark registered under no. 1334490 for goods in Classes 3, 14, 18 and 25 and therefore protected under Article 8(5) of Regulation (EU) 2017/1001 and Article 8(1)(b) of Regulation (EU) 2017/1001.
- That if the EUIPO allows for the registration of Huawei’s trademark, it would enable them to inappropriately piggyback on the fame of Chanel’s figurative mark.
Article 8(5) of Regulation No 2017/1001, states that upon opposition by the proprietor of a registered earlier trade mark, the trade mark applied for is not to be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the European Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark
Article 8(1)(b) of Regulation (EU) 2017/1001 states that upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
DECISION BY OPPOSITION BOARD AND APPEALET BOARD:
The opposition board did not agree with Chanel and held that there was no similarity and thus no likelihood of confusion between the two trademarks.
Aggrieved by the order Chanel appealed to the Fourth Board of Appeal of EUIPO, the board also sided with the opposition board holding that there exists no likelihood of confusion on part of the relevant public among both the trademarks and further observed that:
For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation No 2017/1001, three conditions must be satisfied:
- the marks at issue must be identical or similar;
- the earlier mark cited in opposition must have a reputation; and
- there must be a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
These three conditions are cumulative and failure to satisfy one of them is sufficient to render that provision inapplicable.
The board therefore observed that “from a visual point of view the marks had a different structure and were composed of different elements, the mere presence, in each of the marks at issue, of two elements that are connected to each other does not render the marks similar even though they share the basic geometric shape of a circle surrounding those elements. Whilst a phonetic comparison of the marks at issue is impossible, those marks are also not similar from a conceptual point of view.” As Board of Appeal found the subject marks to be dissimilar and not even the first of the cumulative conditions was satisfied the board held that the examination of rest of the conditions of provisions was unnecessary and the appeal was rejected on that ground alone.
DECISION BY EU GENERAL COURT:
Chanel appealed the said order in the EU General Court, arguing that the mark applied for and its figurative mark are similar “overall to an average to low degree when they are viewed in the orientation in which they are applied for and to an average to high degree when the mark applied for is rotated by 90 degrees”. Chanel further claimed that “it is permissible, by contrast, to take account of the different orientation of one of the signs if it corresponds to the perception which, irrespective of the intentions of its proprietor, the public may have of it when the mark is affixed to goods on the market.”
The court upholding the decision of Board held that it is necessary to compare the figurative mark of Chanel in the form in which it was registered and the mark applied for in the form in which it was applied for, irrespective of any possible rotation in their use on the market. With respect to several specific comparisons court held:
That there is no visual and conceptual similarity between the two trademarks:
- Because Chanel mark has the more rounded shape of the curves, resembling the image of two letters ‘c’ while, applied mark has with the image of the letter ‘h’.
- Because of the different stylisation of those curves and their arrangement, that is horizontally in the Chanel mark and vertically in applied mark
- And lastly because of the orientation of the central ellipse, resulting from the intersection of those curves, vertical in the Chanel’s mark and horizontal in the applied mark coupled with, the greater thickness of the line of those curves in the Chanel mark as compared with the line of the curves in the applied mark.
- With respect to conceptual similarity of the marks at issue, the Board of Appeal’s observed that merely because they have the geometric shape of a circle cannot make them conceptually similar. The court further observed that while the founder company’s name can be detected in the image of Chanel’s mark, it is the stylised letter ‘h’ or the two interlaced letters ‘u’ that could be perceived in the image of the applied mark therefore the marks at issue are conceptually different.
Thus, the court dismissed the Chanel’s appeal under Article 8(1)(b) of Regulation No 2017/1001 and Article 8(5) of Regulation No 2017/1001, and allowed for the registration of the Huawei’s mark.
The last remedy that Chanel has now is to appeal to Court of Justice, it would be interesting to see what view the EU’s Highest Court might hold if such appeal is filed.