Chanel fails to stop 'Madamecoco' TM at UKIPO
French fashion house Chanel has failed in its bid to stop an individual from registering the trademark ‘Madamecoco’ before the UK Intellectual Property Office (UKIPO).
In a decision published on October 9, the UKIPO found that there was a significant distance between the goods covered by the applied-for mark and those covered by Chanel’s earlier Coco Mademoiselle trademark.
The dispute dates to January 2018, when Deha Sirketi applied to register the mark for classes 20 and 35, for goods including tools for shaving, epilation and personal beauty care use.
Chanel opposed the application, arguing that the mark would infringe on its earlier mark as it also contains the word element ‘Coco’, and that there is a similarity in the goods and services covered by both the applied-for mark and Chanel’s existing trademark.
Chanel’s existing trademark is registered in class 3 for goods such as preparations for application to the skin, scalp, hair or nails such as soaps and perfumes.
In its decision, the UKIPO said that while both the applied-for mark and Chanel’s trademark contain the word ‘coco’, in Chanel’s trademark it is the dominant and distinctive element.
However, it said in the applied-for mark the order of words is reversed and the ‘Madame’ and ‘coco’ elements are joined without a space.
“This has the effect of the two elements combining to create a single phrase. In addition, the words Madame and Mademoiselle are of noticeably different lengths and are different words,” the UKIPO said.
Additionally, the UKIPO said there is a “significant jump” from women’s soaps and perfumes, covered by Chanel’s trademark, to tools for shaving and epilation, covered by the applied-for mark.
It agreed with Sirketi about the “lack of strength of the link” between the goods covered by both marks.
“When taking account of the combination of the distance between the respective goods and services and the differences in the marks”, the UKIPO said it was not likely that Sirketi will unfairly benefit from Chanel’s trademark.
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