Date: 10 June 2021
In Chanel SAS v EUIPO, the EU General Court ruled that the logo used by Chinese technology firm Huawei for computer hardware bears no similarity to the famous double “C” logo used by the luxury French fashion brand Chanel to sell make-up, perfumes, clothing and accessories.
Link to case: Chanel SAS v EUIPO
According to Chanel, “when [Huawei’s] mark is rotated by 90 degrees” it is “at the very least, visually similar to an average degree” to Chanel’s earlier trade mark. The court disagreed, finding that the respective parties’ marks “must be compared as applied for and register, without altering their orientation”.
In September 2017, Chinese technology company Huawei applied to register the figurative mark shown below as an EU trade mark for goods in Class 9 corresponding to, amongst other things, computer hardware.
Chanel filed a notice of opposition to the registration of Huawei’s mark.
First, Chanel argued that Huawei’s mark was confusing similar to Chanel’s earlier French figurative mark (shown below), which was registered for, amongst other things, “Cameras, sunglasses, glasses; earphones and headphones; computer hardware” in Class 9 ( i.e. the same class in which Huawei sought to register its logo).
Secondly, Chanel’s opposition was based on the similarities between Huawei’s mark and Chanel’s earlier trade mark registered in France since the mid-1980s for, amongst other things, goods in Classes 3, 14, 18 and 25 corresponding to the following description: “Perfumes, cosmetics, costume jewellery, leather goods, clothes” (“the allegedly reputed mark” shown below).
EUIPO’s Opposition Division rejected the opposition in its entirety. That decision was upheld by the Fourth Board of Appeal. Chanel applied to the General Court to annul the Board’s decision.
According to Chanel, “when [Huawei’s] mark is rotated by 90 degrees”, it was “at the very least, visually similar to an average degree” to Chanel’s existing mark.
However, the court disagreed and explained that the orientation of signs, as set out in the application for registration, could have an impact on the scope of their protection and consequently, contrary to what Chanel claimed, in order to avoid any uncertainty and doubt, the comparison between the signs could only be carried out on the basis of the shapes and orientations in which those signs were registered or applied for.
This meant that it was necessary to compare Chanel’s marks in the form in which they had been registered with Huawei’s mark in the form in which it had been applied for, irrespective of any possible rotation in their use on the market.
The court held that the Board had correctly found that the opposing marks were dissimilar overall. It followed that the Board of Appeal had correctly rejected the opposition and, therefore, Chanel’s appeal was dismissed.
This is not the first time Chanel have opposed a monogram similar to their double “C” monogram. In Case T-57/16, Chanel opposed the Community design registration of a similar monogram consisting of two inverted 3s connected together to form an infinity symbol as shown below.
That time Chanel were successful, with the General Court finding that the two monograms presented strong similarities. Interestingly, the General Court found that the differences between the designs were less likely to be perceived by the informed user when the contested design is used at a 90-degree orientation; the argument Chanel tried to run in their latest case against Huawei’s mark. The decision in Case T-57/16 seemingly broadened the protection granted to Chanel's monogram at the European level and suggested that throughout the EU, strong protection was now available to the owners of well-known brands consisting of monograms. As a result of the judgment in Case T-57/16 a question arose as to whether the EU approach was beginning to become aligned with that of the French courts, which allow broad protection for well-known logos.
This latest judgment arguably goes some way to clarifying the situation around the level of protection afforded monograms when they are used as trade marks. In particular, it confirms that any comparison between marks at issue in opposition proceedings has to be performed on the basis of the form in which the marks are registered; the actual or possible use of those marks in other forms or orientations is irrelevant. The orientation of signs, as set out in an application for the registration of a trade mark, can impact on the scope of protection afforded. However, it remains to be seen whether Chanel will appeal further and give the Court of Justice the opportunity to resolve the tension between this decision and Case T-57/16.
From a practical point Chanel’s latest case suggests that when registering trade marks comprising monograms and abstract geometrical shapes that may be viewed on products in multiple different orientations, each of those respective orientations are worth registering.
Our full article on this case will appear in Entertainment Law Review.
For more information on our team's work on Trade Marks and brand protection, see our page: Trade Marks