Chanel polices online use of CHANEL marks
Fashion and perfume company Chanel S de RL has filed a claim in the Federal Court of Canada against a resident of Toronto who is allegedly infringing the CHANEL word mark, logo and perfume bottle design by (i) using domain names that incorporate the mark CHANEL, and (ii) displaying on her website a perfume bottle bearing a blurred CHANEL logo.
Leslie Simone Richards, a resident of Toronto, offers escort services under the aliases 'Chanel' and 'Chanelle'. She registered the domain names 'sexychanel.com' and 'sexychanelle.com' on September 18 2000 and February 18 2004 respectively. Both domain names direct internet users to the same website, which Richards uses to advertise her services. The site's main page displayed for a while a woman (purportedly Richards) and a large perfume bottle sporting a blurred CHANEL logo above the word 'escort' in bold.
Chanel owns a variety of registered trademarks in Canada. One trademark covers a particular perfume bottle design, while other CHANEL marks are used in conjunction with cosmetics, toiletries, apparel and other items. The trademarks are licensed to Chanel Inc, which operates boutiques in Calgary, Montreal, Toronto and Vancouver.
On September 21 Chanel filed a statement of claim in the Federal Court of Canada alleging that Richards "offered for sale, sold, advertised, promoted, displayed or otherwise dealt in personal escort services under trademarks identical or confusingly similar to" the registered bottle design and the CHANEL mark. Chanel also alleges that Richards offered for sale 'sexychanel.com', which comprises the CHANEL trademark. Accordingly, Chanel has also requested that Richards be enjoined from using or selling the domain name, and using or owning a domain name that is likely to be confused with CHANEL trademarks. The statement of claim specifies variations on the CHANEL mark that, Chanel claims, would be likely to cause confusion. These include:
- 'Channelle'; and
Interestingly, while Chanel requested an order for Richards to transfer the domain name 'sexychanel.com', no such request has been made for 'sexychanelle.com'.
While Richards has yet to file a defence, she has already amended her website and has (i) removed the perfume bottle, and (ii) included the disclaimer: "This site is in no manner affiliated with Chanel Inc".
If the matter proceeds to trial, the court will have to determine whether there is a likelihood of confusion. This determination would be based upon a careful consideration of the surrounding circumstances, including those factors described in Section 6(5) of Canada's Trademarks Act:
- the inherent distinctiveness of the trademarks;
- the length of time they have been in use;
- the nature of the goods, services or business;
- the nature of the trade; and
- the degree of resemblance between the marks.
The court may also consider the case of United Artists Corp v Pink Panther Beauty Corp, in which the defendant applied to register the trademark PINK PANTHER for use with its line of beauty supplies. The plaintiff argued that the defendant's mark would be confusing with its own trademark THE PINK PANTHER, which was made famous in a series of popular films. However, the Federal Court of Appeal disagreed. Given the "gaping divergence in the nature of the wares and in the nature of the trade", likelihood of confusion was minimal. A similar analysis could have a significant impact on the outcome of the dispute between Chanel and Richards.
Gordon J Zimmerman and David Faye, Borden Ladner Gervais LLP, Toronto
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