When are famous logos considered similar?
The EU General Court has upheld a Board of Appeal ruling in a dispute between Chanel and Huawei, finding that Huawei’s EUTM application for a figurative H/U shape was not similar to Chanel’s Double-C trade mark (Case T-44/20, 21 April 2021).
Huawei applied to register the EUTM for goods in class 9 in 2017 (far left). Chanel opposed the Huawei application based on two French trade marks (middle and right):
(1) a figurative mark for “Cameras, sunglasses, glasses; earphones and headphones; computer hardware” registered in class 9; and
(2) a mark registered for goods corresponding to “Perfumes, cosmetics, costume jewellery, leather goods, clothes” in classes 3, 14, 18 and 25, which Chanel claimed had a reputation.
The marks formed the basis of an opposition under Article 8(1)(b) (likelihood of confusion) and Article 8(5) (reputation) respectively.
In its judgment, the Court said the Board was right to find that the marks were visually different. It stressed that “the comparison between the signs can be carried out only on the basis of the shapes and orientations in which those signs are registered or applied for” and the marks should be compared in the form registered “irrespective of any possible rotation in their use on the market”.
Drawing attention to the differences between the marks, the Court said that “assessed globally, the marks at issue are visually different, despite the presence in each of them of two interlaced curves within a black circle, the latter being, moreover, a common geometric element”.
A phonetic comparison was not possible because the marks would not be pronounced, and they were also conceptually different.
As the marks were dissimilar overall, the Court said the Board of Appeal was right to reject both limbs of the opposition.
Chanel can apply to appeal the decision to the CJEU. But it must show that the appeal “is significant with respect to the unity, consistency or development of EU law”, which is a tough hurdle to overcome.