15 April 2019Trademarks

UKIPO sides with Chanel in TM opposition

Chanel has been successful in its bid to stop a trademark registration which it said would be confusing against one of its earlier marks.

On  April 10, the UK Intellectual Property Office (IPO) said Vietnamese retailer  Luong Quoi Coconut could not register the mark ‘CocoGoodsCo’ in class 3 because it would infringe Chanel’s trademark ‘Coco’ for the same class.

The goods covered by the applied for mark included soaps, shampoo, deodorant and perfume. While registration for these goods was denied, in a partial win for Luong Quoi the IPO said the registration could progress for “essential oil for hair used as cosmetics”.

In its decision, the IPO said the overall impression of Luong Quoi’s mark is the “unbroken presentation” of three words: Coco Goods Co.

“The conjoining of the three components adds almost nothing to the mark in terms of distinctive character because the words remain readily apparent; the impression created is barely greater than the sum of its constituent parts,” it said.

The IPO agreed with Chanel that the dominant and distinctive element of the applied-for mark was Coco.

“Of the three components that make up the holder’s mark, it is the COCO component that clearly bears the greatest weight in its trademark message,” the IPO said.

It said that since Chanel’s trademark is registered as a word mark, it may be used in different fonts or typeface including “precisely” the font used in Luong Quoi’s mark.

The IPO said confusion between the marks would likely be indirect.

It said it may be wrongly inferred there is a connection on the basis that Luong Quoi’s mark refers to a goods company that is in some way connected to Chanel.

The IPO said Chanel’s trademark does not cover “essential oil for hair used as cosmetics”, therefore there was no likelihood of confusion.

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18 December 2018   French fashion brand Chanel has accused almost 100 (94) online entities of producing and distributing counterfeit goods through internet-based stores.
17 October 2019   French fashion house Chanel has failed in its bid to stop an individual from registering the trademark ‘Madamecoco’ before the UK Intellectual Property Office.