What brands can learn from Chanel’s logo defeat
Trademark filing activity worldwide has enjoyed a steady rise in the last few years, growing 13% last year, based on data from SAEGIS, the global trademark database from Clarivate.
It is hardly surprising that increased filing activity has been accompanied by a growing number of infringement cases and similarity disputes. In a recent Trademark Ecosystems report, 89% of respondents reported trademark infringement last year, a new record high. Safeguarding valuable brands across all channels, whether it is against infringement or similarity, is paramount to brand owners, for reputational and commercial reasons.
The April ruling on the Chanel trademark dispute placed brand similarity disputes under the spotlight. Such cases generally do not create ripples beyond their sector-specific audiences. However, the companies at the centre of the dispute—French luxury house Chanel and telecoms and mobile phone manufacturer Huawei—are both high-profile and well-known brands.
As a result, the issue of trademark similarity has received a broader focus than normal. In this instance, the issue of the subjectivity of similarity comes to the fore, particularly in relation to device or logo marks where the guideless for determining similarity have less clarity than those established for text (word) marks. A look at a handful of previous similarity cases illustrates this point.
In the dispute between Lingjuli Communication Technology Company, a telecoms company from Shenzhen, mainland China and automaker Volvo, Shenzhen Lingjuli Communication Technology Company’s ‘Vovo’ trademark was found to be similar to Volvo’s trademarks by the Beijing High People’s Court.
This is in contrast to the Beijing IP Court previously ruling that there was no similarity as there were “significant differences between the trademark in dispute and the cited trademarks in overall visual effects”.
A further example is the case of Starbucks Coffee and a Belgian applicant over a ‘coffee rocks’ logo. After the EU Intellectual Property Office (EUIPO) dismissed Starbucks’ similarity claim, the company appealed the case to the EU General Court.
The EU General Court ruled in agreement with Starbucks, that the figurative mark featuring the word ‘coffee rocks’, infringed Starbucks’ logo as there were “three sets of visual similarities between the signs at issue,” including similar “circular devices consisting of two parts” and “the use of the same font for the word elements ‘starbucks coffee’ and ‘coffee rocks’” (see figure 1).
Determining similarity between device marks, and in particular, if similarities outweigh differences, is often in the eye of the beholder.
Figure 1: ‘Coffee rocks’ and ‘Starbucks coffee’ marks
