In proceedings ongoing since 2017, French luxury fashion house Chanel has sought to prevent Chinese technology company Huawei from registering a trade mark with the European Union Intellectual Property Office (EUIPO) for use on computer hardware (amongst other goods) on the basis that the mark is too similar to its iconic interlocking double "C" logos. In its recent decision, the EU General Court has agreed with the EUIPO that, since the marks must be compared in the form registered, without altering their orientation, the marks in question are not similar.
Background
Huawei filed an application for registration of the following figurative mark as an EUTM for goods such as computer hardware and computer software programs in international Class 9:
Chanel opposed the application relying on its following earlier marks:
- Its famous interlocking double "C" logo, also registered for goods in Class 9 including "cameras, sunglasses" and "computer hardware". Chanel argued that the Huawei mark was confusingly similar and a likelihood of confusion would arise as a result.
- Another of its famed "C" logos (this time with the circle surrounding the interlocking double "C"), registered for goods including "perfumes, cosmetics, costume jewellery, leather goods, [and] clothes". Chanel argued that, in light of its earlier mark's longstanding reputation, Huawei's mark would take unfair advantage or damage the distinctive character and reputation of its earlier mark.
The EUIPO rejected Chanel's opposition, on the basis that the marks lacked similarity. This decision was upheld by the Board of Appeal.
General Court Decision
Chanel argued before the General Court that the marks are similar and particularly so "when [Huawei's mark] is rotated by 90 degrees":
Chanel's marks (left and centre) and Huawei's mark applied for (right)
The General Court's judgment focuses on a discussion of the similarities and differences of the marks. An example of a similarity was that the three marks all include "two curves" as an "inverted mirror image" which "cross and intersect to form a central element" constituting an "ellipse". However, the differences outweighed the similarities: the Chanel marks have thicker lines and rounded curves and resemble two interlocking "C"s causing a "horizontal" ellipse, vis-à-vis Huawei's mark, which resembles two interlocking "U"s causing a "vertical" ellipse. Huawei's mark can now proceed to registration with the EUIPO, unless Chanel is able to appeal to the Court of Justice.
Comments
Most interesting here is the General Court's confirmation that, in opposition proceedings, the marks at issue must be compared in the form in which they are registered and applied for, without altering their orientation (and without taking into account actual or possible use of the mark). In its judgment, the General Court discusses earlier case law on the topic, including cases where the Court of Justice had held that elements other than the representation as applied for may be taken into account, if those elements correspond to the reality of use of the sign on the market. However, here the Court distinguished those cases by explaining that that case law could not apply to a comparison between two marks in opposition proceedings. The General Court also held that, in any event, where such an exercise has been carried out in the past (e.g. in the field of designs in an earlier General Court case involving Chanel – see here) this was nevertheless a "surplus examination criterion".
As is often the case, this decision appears driven by the (important) need for clarity on the scope of protection of registered trade marks and confirms that the comparison of marks in opposition proceedings must proceed on the basis of the mark as registered, without any rotation or change in orientation.
This case therefore highlights the impact that orientation can have on the protection afforded by registered trade marks; if a mark will be rotated when affixed to goods put on the market e.g. on clothing, one possible option is to consider additionally applying for registration of the mark as rotated.