Lingerie and sunglasses: how do we wear them?

The Hungarian Intellectual Property Office (HIPO) held in an opposition proceeding last year that: “Chantelle luxury women’s lingerie has a good reputation in the relevant part of the EU, especially in France, Germany and Spain, and therefore deserves broader trademark protection.”

A Hungarian trademark application was filed for the designation ‘Chantelle Eyewear’ in class 9 for spectacles, sunglasses, spectacle frames, spectacle cases and related accessories.

Chantelle Société Anonyme, a French lingerie company, subsequently filed an opposition against the application; its mark ‘Chantelle’ has become widely known and grown into an iconic brand for premium quality lingerie since it was founded in the 1950s.

The opponent is the owner of several Community trademarks (CTMs) containing the word ‘Chantelle’. As these marks, however, do not cover class 9 nor goods listed within that class but rather classes 3, 25 and 35, the opponent decided to base the opposition on different legal grounds.

First, the opposition was based on the confusing similarity of the marks and of the goods and second, the opponent referred to the good reputation of its earlier trademarks in the EU.

Which products are similar?

The similarities between the marks in question were easily recognisable, thereby leading the HIPO to establish their confusing similarity.

The HIPO then had to decide whether the products in class 9, namely sunglasses, glasses, spectacle frames and related accessories, could be considered similar to the goods protected by the earlier CTMs.

The opponent argued that in class 25 a number of its Chantelle marks cover swimsuits and that most consumers consider swimsuits as belonging to the category of lingerie. Swimsuits may be directly connected to sunglasses as accessories worn by women during summer, and as such these products are regularly sold together or displayed next to each other in shops.

The opponent emphasised that sunglasses are accessories worn by women with any outfit and are usually chosen to create a given style or complement particular apparel. There is therefore a strong link between sunglasses and other fashion clothing items.

The HIPO accepted the opponent’s arguments in part, stating that goods belonging to class 25 are to be considered similar to sunglasses in so far as the function, target group and method of distribution of such products are very similar. However, other goods apart from sunglasses (eg, spectacles) in class 9 were not held to be confusingly similar to clothing and underwear.

The likelihood of association was also cited as grounds for the opposition. In this respect, the HIPO found that in business there is a trend towards the distribution of cosmetics, sunglasses and spectacle frames by the larger fashion houses, and went on to establish that there were sufficient grounds to believe that the average customer may erroneously create an association between the products protected by the opponent’s mark and the products manufactured by the applicant.

As such, the marks were considered as being confusingly similar with respect to all other goods listed within class 9.

Chantelle’s good reputation in the EU

Concerning the applicability of the reputation of the earlier right to extend protection to the list of goods covered by this older right, the problem lay in the fact that this older trademark was not in extensive use in Hungary. The HIPO had to acknowledge good reputation and its legal consequences based on the famous nature of the Chantelle brand in other member countries.

The reputation of the opponent’s CTMs was proved by a number of documents (sales and marketing data, opinion polls, catalogues and the covers of magazines such as Elle and Vogue featuring famous models promoting Chantelle lingerie) and accepted by the HIPO, the office holding that the Chantelle trademarks had a reputation in Germany, France and Spain, and that the good reputation of the brand in these countries constituted sufficient grounds for acknowledging good reputation.

The office also referred to the risk that the average consumer’s memory of the marks may be imperfect, and that they may therefore assume a link between the marks or simply confuse them with one another, giving rise to the potential for the applicant to gain an unfair advantage given the significant amount of time and money the opponent had invested in establishing its good reputation and building its brand image in Europe.

The HIPO also pointed out that the applicant could not provide a good reason for using the mark in the form in which it was indicated in the application. Thus there was a risk that the use of the applicant’s designation may take unfair advantage of, or be detrimental to, the distinctive character or the reputation of the earlier trademark.

Basing the opposition on different grounds proved worthwhile given that the HIPO considers these grounds separately, and if the list of goods of the earlier right did not cover all the goods of the later one, the burden of proof supporting the opponent was very strong.

Judit Lantos is assistant manager of trademark operations at Danubia Patent & Law Office LLC and founding partner at Sár and Partners, a law firm working in close cooperation with Danubia. She can be contacted at: judit.lantos@danubia.hu