Last Friday, the German Federal Constitutional Court issued its long-awaited decision on the validity of the ratification of the UPC by Germany. In their decision, the court rejected the ratification of the UPC because the necessary majority of two thirds was not reached. When the original vote to ratify the UPC was passed, all those who did vote were in favour but the total number voting did not meet the required two thirds of those eligible to vote.
In its recent decision, the UKIPO rejected in its entirety an opposition filed by Chanel Limited (Chanel) against an application made by Deha Magazacilik ev Tekstili Urunleri Sanayi Ve Ticaret Anonim Sirketi to register the trade mark MADAMECOCO. The opposition was directed against the following services covered by the contested application:
“retail services connected with the sale of … tools and apparatus included in this class for shaving, epilation, manicure, pedicure and personal beauty care use, … electric hand implements for hair curling, scissors, … shaving brushes, hair brushes, combs, …” in class 35.
Chanel based its opposition on Section 5(3) of the Trade Marks Act 1994, claiming that use of the mark MADAMECOCO without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the Chanel’s earlier marks, namely, COCO MADEMOISELLE (in two different minimally stylised formats) covering “preparations for application to or care of the skin, scalp, hair or nails; soaps; perfumes; … non-medicated toilet preparations” in class 3.
The Applicant admitted Chanel’s reputation in relation to “women’s perfume”. Furthermore, having considered the evidence filed by Chanel, the Hearing Officer made findings that that reputation in relation to women’s perfume was “strong” and that Chanel had also proved reputation, albeit to a lower degree, in respect of “women’s ancillaries” (this category included body creams, body exfoliants, body lotions, body oils, body and hair mists, bath foams, bath gels, deodorants).
Notwithstanding Chanel’s reputation in its earlier COCO MADEMOISELLE marks, the Hearing Officer found that the link between the contested mark MADAMECOCO and Chanel’s earlier marks was not sufficiently strong for a finding of unfair advantage and/or detriment to the repute and or distinctive character of Chanel’s marks.
Whilst both parties’ marks coincided in the element COCO (which the Hearing Office found to be the dominant and distinctive element of Chanel’s earlier marks) and included a French form of addressing a woman, the Hearing Officer noted that:
- the term MADEMOISELLE in Chanel’s marks was used to address an umarried woman and the term MADAME in the contested mark was used to address a married woman;
- the order of the words in the contested mark was reversed, COCO being positioned after the word MADAME;
- the words MADAMECOCO were joined without a space (having the effect of combining to create a single phrase); and
- MADEMOISELLE and MADAME were of noticeably different lengths.
On conceptual level, the Hearing Officer considered there be a high degree of similarity between the marks should Chanel’s mark be perceived as a reference to a female called COCO (i.e. MADEMOISELLE COCO), but the similarity would be lower if Chanel’s marks were to be perceived as a reference to a primary brand COCO and a secondary word MADEMOISELLE, indicating that the products are intended for young women. The Hearing Officer does not appear to have made a finding whether one or other of these perceived meanings was the more likely for the average consumer but instead has borne the possibility of either meaning in mind in the assessment.
The Hearing Officer then assessed the goods in issue. Notwithstanding Chanel’s reputation in its marks in relation to “women’s perfume”, the Hearing Officer found that there was “a significant jump” from such perfume goods to “tools and apparatus for shaving, epilation, manicure” etc, “and then yet a further leap to the retail of these tools and apparatus”.
In conclusion, despite likely strong conceptual similarities between the marks for at least a proportion of the relevant consumers, the Hearing Officer held that given the “difference between the respective marks and the distance between the respective goods and services”, it was unlikely that the use of the MADAMECOCO mark would result in detriment to the distinctive characterand/or repute of Chanel’s COCO MADEMOISELLE marks or that there would be any unfair advantage derived by the Applicant from Chanel’s marks. The contested mark was thus allowed to proceed to registration and an award of costs was made in the Applicant’s favour.
On the face of it, this decision has a slightly surprising result, given the reputation in the earlier marks, the similarities of the marks in issue and that the applicant was in the general field of beauty/beauty care. But the decision serves as a useful reminder that proving reputation in an earlier mark, even if that reputation is found to be strong, is insufficient on its own to succeed under Section 5(3) of the Act.