Deha Magazacilik ev Tekstili Urunleri Sanayi Ve Ticaret Anonim Sirketi (hereafter “the applicant”) chose not to apply for a trade mark of the same name but instead made an application to register the trade mark MADAMECOCO back in January 2018.
Included in the specification was Class 35: “retail services connected with the sale of… tools and apparatus including in this class for shaving, epilation, manicure, pedicure and personal beauty care use…”.
Unsurprisingly Chanel Limited (hereafter “Chanel”) opposed the application based on section 5(3) of the Trade Mark Act 1994 (“the Act”) relying on a series of two marks No. 2284766 both of which are COCO MADEMOISELLE in different formats.
Chanel made the following points:
- The respective marks were similar, consisting of the COCO element and French female form of address and consequently the conceptual similarity was high;
- It has a substantial reputation in the UK
- “Coco” Chanel is the name of the founder and therefore COCO MADEMOISELLE has become intrinsically linked with Coco Chanel the brand.
- That a link will be created in the mind of the consumer
- That such a link will cause consumers to change economic behaviour
- Use of the mark will take unfair reputation of the Coco Chanel mark
- Use of the mark will be detrimental to the distinctive character
Chanel submitted evidence which was subject to a confidentiality order because it included sales figures and invoices which listed COCO MADEMOISELLE products as well as the advertising spend. Applying for such an order is worth considering for brands wishing to protect such information and not allow competitors a commercial advantage.
Other notable pieces of evidence were also set out. It was noted that Keira Knightly had been the face of COCO MADEMOISELLE for more than 10 years and during 2013 – 2017 COCO MADEMOISELLE was ranked as the number one female fragrance in the UK and received numerous awards.
The applicant argued that the word “Coco” has been widely used and how many trade marks are registered or under application. This argument included evidence showing that there were a number of meanings of the word Coco, including a name, a term or affection in French, a style of Brazilian music, a misspelling of cocoa and a number of place names.
Chanel was found to have the requisite reputation in respect of all the goods that it was entitled to rely on. In fact it was perhaps unsurprising that in the decision it was stated that Chanel had a significant reputation in respect of women’s perfume, but a somewhat less (but not insignificant) reputation in respect of women’s ancillaries (body cream, moisture mist, deodorant, body exfoliant, bath soap, body oils and hair mist).
It was noted that Chanel’s marks consist of the word COCO and a french form of address, usually used to address an unmarried woman. Whereas the applicant’s mark consisted of a French term of address, usually used to address a married woman, along with COCO. This time with the order of the words reversed. The visual and aural similarities were considered and visually, due to common elements and despite the reversed, the marks were considered to have a medium level of similarity. Aurally, the length of the marks and the difference in pronunciation as well as the different positions of the common syllables meant the marks remained similar to a medium degree only.
Conceptually, it was noted that there were two ways in which the marks could be perceived by the relevant public. In instances where “the opponent’s marks are perceived as a reference to a female person named “Coco”, the conceptual similarity to the applicant’s mark is high, but where the alternative meaning is perceived, the conceptual similarity is lower”.
It was decided that because there was a “significant jump from women’s perfume to tools and apparatus for shaving, epilation, manicure etc., and then yet a further leap to the retail of these tools and apparatus” the link, such as it was would only exist to a medium degree. This was despite the strong reputation Chanel had in respect of women’s perfume and the name Coco.
Detriment to distinctive character (dilution)
It was noted that in order for there to be detriment to the distinctive character of Chanel’s marks, “the use of the applicant’s mark would result in a change in the economic behaviour of the average consumer.” Both sides argued over whether the goods in question were for men and women, or for women alone. It was held that because the applicant’s services related to men and women, there would be a potential overlap of relevant consumers.
However, on the basis of the differences between the respective marks and the distance between the respective services, it was considered that it was not likely that there would be any detriment to the distinctive character of Chanel’s mark.
Detriment to reputation (tarnishment)
Chanel submitted that its marks would be tarnished by use of the applicant’s mark “in respect of low-end, heavily discounted items in line with its trading strategy in Turkey”. However, it was considered (again on the basis of the strength of the link and distance between respective goods and services) that it was unlikely that there would be a transfer of negative impression from the applicant’s mark to the marks of Chanel.
Unfair advantage of distinctive character or repute (free-riding)
Chanel argued that because of its high level of distinctive character and strong reputation, there would be a strong link between the marks. This argument was not successful and it was found that it would be unlikely for there to be an image transfer from Chanel’s mark to the applicant’s and therefore no unfair advantage.
It was held that because of the distance between the respective goods and services and the differences between the marks were such that “any link created will not be strong enough to result in such advantage occurring”. It was also noted that the marks’ similarity was nothing more than coincidental (something Chanel is bound to disagree with).
On the basis of the findings, it was held that Chanel failed to demonstrate that any form of injury would occur and as such the opposition failed on all grounds. Chanel need not worry though, fashion passes, style remains.