I was reading an article published on The Fashion Law this
morning about a recent decision in an EU trade mark opposition
between CHANEL and Simb D.O.O. relating to the marks 
/ 'No. 5' (of CHANEL) and 
(of Simb D.O.O.) and I think there are some
great lessons to be learnt here. This case highlights the
importance of evidence in trade mark opposition cases and is useful
to bear in mind for large fashion and cosmetics companies when
protecting and enforcing their brands. Even if a brand is super
well-known and its notoriety is self-evident in the 'real
world', it will not be assumed by a Trade Mark Office. Brand
owners cannot rely on 'expected' knowledge of a brand and
unless actual evidence is provided to prove this, the reputation or
'enhanced distinctiveness' of a brand will not be taken
into account.
In this case, CHANEL filed an opposition against Simb
D.O.O.'s trade mark application for the mark . This application covers a wide range of
class 3 goods including soaps, shower creams, cosmetics,
perfumed creams, all of which are either identical or highly
similar to the class 3 goods covered by CHANEL's earlier French
trade mark registrations for the marks and 'No. 5'.
The opposition was filed based on a likelihood of confusion and
whilst the goods were deemed identical, the marks were only
considered similar to a low degree. CHANEL argued that their prior
rights enjoyed a high degree of distinctiveness and filed evidence
to support this claim. The evidence included a printout from
Wikipedia relating to CHANEL's use of the marks in question, a
brochure and some photographs all bearing the / 'No. 5' marks. The EUIPO were,
however, unconvinced by this evidence. The main reason for this is
that CHANEL did not bolster the evidence with details of how and
where the materials were distributed or information about the
market share held by the earlier marks. In addition to this, no
evidence was submitted to show that goods bearing the / 'No. 5' trade marks (such as the
infamous perfume) had been sold or purchased in the relevant
territory, or how many consumers were exposed to these marks. The
Opposition Division stated that it 'must disregard any
private knowledge it might have of the enhanced distinctiveness of
the earlier trade marks and limit its assessment solely to the
evidence on file'. This point is super important to
remember because even though we all may know how infamous a brand
is – if you can't (or don't) demonstrate this via
evidence, this notoriety will not be assumed.
Ultimately I think CHANEL will appeal this decision and I look forward to seeing further updates on this matter!
'The Opposition Division must disregard any private knowledge it might have of the enhanced distinctiveness of the earlier trade marks and limit its assessment solely to the evidence on file'
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
We operate a free-to-view policy, asking only that you register in order to read all of our content. Please login or register to view the rest of this article.