Chanel succeeds in opposition to COCO DE MER registration
In Coco de Mer Ltd v Chanel Ltd, the High Court of England and Wales has upheld Chanel Ltd's opposition to the registration of COCO DE MER for goods in various classes of the Nice Classification. The court held that when considered as a whole the mark's dominant element was the word 'Coco' and this made it confusingly similar to Chanel's prior registered COCO mark.
Coco de Mer, a fashionable retailer of upmarket adult products based in the United Kingdom, applied to register COCO DE MER as a trademark for, among other things, goods in Classes 3 (perfumery, essential oils, cosmetics) and 18 (travelling bags). Chanel, the well-known retailer of luxury goods and owner of the word mark COCO for perfume and fashion accessories, opposed registration on the grounds that COCO DE MER was confusingly similar to its COCO mark.
A hearing officer at the UK Trademark Registry agreed. He noted that consumers would make an association between the two marks, believing that they came from the same or economically linked undertakings. Coco de Mer appealed and argued that the word 'Coco' would not dominate the relevant consumers' perception of its mark. As a result, when considering the marks as a whole, consumers would make no association between them.
In dismissing Coco de Mer's appeal, the High Court held that the hearing officer had grounds on which to conclude that the word 'Coco' was a strong and obvious element of the COCO DE MER trademark, taking into account the combination of that mark's conceptual, aural and visual characteristics. The court stated that following a global appreciation of the COCO DE MER mark, the relevant consumers would immediately notice the word 'Coco', this being the most eye-catching word in the phrase. They would not, however, place much weight on the addition of the words 'de mer' (a French term meaning 'of the sea'), since they would not know what those words meant. The court added that the need to consider the mark as a whole did not require it to give each part of the mark the same weight or significance: the identification of a mark's distinctive features was part of the function of assessing it on a global basis and a highly relevant factor in determining the likelihood of confusion.
This decision need not result in Coco de Mer never being able to register COCO DE MER as a trademark for the goods in question. Although Chanel opposed the COCO DE MER trademark application, it does not appear to have commenced trademark infringement or passing off proceedings against Coco de Mer in respect of the sale of products bearing that mark. On the assumption that Coco de Mer carries on using its COCO DE MER sign as a trademark, it may eventually be able to gain registration by arguing that its mark has coexisted with COCO in the marketplace without there being any evidence of actual confusion.
Jeremy Phillips, Slaughter and May, London
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