One interesting case from Lithuania shows how difficult registration of 3D trademarks can be.
Chanel filed сх 2014 a trademark application for their No. 5 perfume bottle in class 3 – perfumes:
Although the same sign was a successfully registered trademark in many other countries, that was not the case for Lithuania where the local Patent Office refused it based on absolute grounds – lack of distinctiveness.
The decision had been appealed several times before reaching the Supreme Court.
The Court considered the sign as three-dimensional and confirmed the lack of distinctive character. The EU Court practice was cited, according to which consumers don’t usually associate the shape of packaging with the origin of a product. Because of this more solid arguments and evidence are necessary in order for such signs to become valid trademarks.
In the case at hand, the Court found the submitted packaging as not diverging from what is customary for these types of products. Many other similar packagings were existing on the market so consumers would not perceive the sign applied for as a source of a particular trade origin.
Based on this the Court concluded that Chanel’s perfume bottle lacks inherent distinctiveness.
In regard to the evidence for acquired distinctiveness through market use, the Court dismissed them as insufficient.
The consumer survey offered by Channel targeted only France but not Lithuania. This was crucial for the Court which found the rest of the evidence, such as marketing data and materials, as insufficient for proving a distinctive character for a three-dimensional mark for packaging.
This case comes to shows again how difficult registration of such trademarks can be for every applicant even for a big company like Chanel. A good IP strategy is necessary way before applying for a trademark which to target all possible scenarios and to secure adequate facts and figures supporting the existence of distinctive character.
Source: Neil Wilkof, Marijus Dingilevskis за IPKats
The General Court of the European Union has ruled in case T-44/20 Chanel v Huawei Technologies which targets an issue with figurative trademarks.
The case concerns the following European trademark application in class 9 filed by Huawei:
Against this mark an opposition was filed by Chanel based on the following earlier French trademark in class 9:
In addition, the company claimed a trademark with reputation for the following another French trademark registered for dissimilar goods:
The EUIPO dismissed the opposition founding both signs as not confusingly similar. The fact that they share two connected elements in circle is not enough in order confusion to be established. What’s more both mark are completely dissimilar from conceptual point of view.
The decision was appealed. According to Chanel these marks were similar at least to low degree as they are applied for and to an average to high degree when the Huawei trademark was rotated by 90 degrees.
The Court disagreed reminding that a trademark comparison has to take into account the way signs are applied for not the way how they will be used after that. The Court considered both marks as not similar. They have connected elements but in different arrangements – one in horizontal and another in vertical. In addition, conceptually they are different. The later mark can be perceived as the letter H while the earlier marks can be viewed as letters C.
One interesting trademark dispute from Japan where the local company 196+ Inc. applied for a trademark “COCOMIST” in class 3 – cosmetics, perfumery, fragrances, incense, toiletry preparations, etc.
Against this application an opposition was filed by the well-known fashion company CHANEL SARL based on an earlier mark for COCO for the same goods. According to the French company both signs are similar and there is a likelihood for a consumer confusion especially taking into account the reputation of the earlier mark in Japan.
In addition, the company suggested that the COCO reputation is enhanced by the nickname of the French fashion designer “Gabrielle COCO CHANEL” who was the founder of the brand.
The Japanese Patent Office, however, wasn’t impressed enough from these arguments. According to the Office when compared both signs have to be taken in their entirety. From that point of view the signs are dissimilar. The Office couldn’t find any particular meaning when it comes to the mark applied for in order to conclude likelihood of confusion between both marks even though the earlier mark has a strong reputation in Japan.
Source: Masaki MIKAMI, Marks IP Law Firm.