COCO vs. INCOCO: Chanel wins in the likelihood of confusion

COCO vs. INCOCO: Chanel wins in the likelihood of confusion

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On 23 October 2014, Chanel, a French luxury fashion house that was founded by Mrs. Coco Chanel in 1910, filed an opposition against a trademark registration (No.1189828) “INCOCO” of Innovative Cosmetic Concepts LLC (USA) based on the earlier protected trademark No.1438544 and 1571046, “COCO”.

However, the Chanel opposition is rejected by the decision of the EUIPO Board of Appeal on 16 January 2020 due to a below-average degree of similarity.

Thus, Chanel appealed against this decision before the European Court (CJEU) and was upheld based on the following arguments:

-  The goods and services of marks are identical/similar;

- The relevant public for the two marks are the same being general public and/or professional customers with specific professional knowledge or expertise in France;

- Same overall impressions of marks with:

  • Visual similarity due to the doubling of “co” forming “coco” that highlights the word element. The last four of six letters making up the opposed sign correspond perfectly to the four letters of the earlier mark. Two-thirds of the opposed mark, therefore, corresponds identically to the entirety of the earlier mark.
  • High phonetic similarity due to the structure, numbers of syllables, and rhythm of the opposed mark, taken as a whole, were comparable.
  • Average conceptual similarity due to separating the word “INCOCO” into two verbal elements, “coco” referred to (i) the common word of the French language “coconut” or (ii) a well-known nickname, Ms. Coco Chanel, and the verbal element “in”.

In conclusion, Chanel won the allegation of likelihood of confusion against INCOCO relating to its own national marks COCO. Noteworthy, this special case marks a success thanks to Ms. Coco Chanel’s reputation.

Trademark “Coco” is named after Ms.Coco Chanel, a French fashion designer who ruled Parisian haute couture for almost six decades. She was called by nickname “Coco” from the time she was a singer in tea rooms. In 1919, Chanel had a major turning point in the field of perfumery. By creating a new perfume with a lasting, evocative, and mysterious fragrance. By the late 1920s, the Chanel industries were reportedly worth millions, which includes perfume’s profits. The whole world rushed to search for this fragrance. The trademark “COCO” became the most famous perfume in the world. Dubbed the "queen of perfumes", “COCO” is still the best-selling perfume of all time. It is estimated that every 30 seconds a bottle of perfume is sold.

Celebrities' names can be registered for protection in the form of trademarks. If they fully meet the protection criteria: the visible sign and the ability to distinguish. Word reputation of Ms.Coco - makes her name highly distinguishable. People can immediately associate “Coco” with perfume without confusing the origin with any other brands. Thus, based on the distinctiveness, a trademark comprising of a celebrity's name creates a big advantage in the trademark dispute.

Christian Dior S.A and YSL (Yves Saint Laurent), two French designers – are good examples with their names as trademarks.

Similarly, in Vietnam, famous singer My Tam has registered a trademark for her name "My Tam" with cosmetic products, buying and selling, designing fashion goods, and organizing art performances. Comedian Truong Giang has a registered trademark composing his nickname “Muoi Kho” for the restaurant to have exclusive rights to this name.

There is no doubt that using a celebrity's name as a trademark for products or services is a way to build a strong brand as well as hold great advantages in the trademark dispute resolution process.

IPAC IP.,JSC

Mai Phuong

Source:

https://madrid.wipo.int/documentaccess/documentAccess?docid=852979801

https://curia.europa.eu/juris/document/document.jsf?text=&docid=242952&pageIndex=0&doclang=FR&mode=req&dir=&occ=first&part=1&cid=1126549

https://euipo.europa.eu/eSearch/#details/trademarks/W01189828

https://legal-patent.com/trademark-law/coco-vs-incoco-chanel-wins-in-likelihood-of-confusion/

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