Chanel looses against Huawei: the relevant trademarks are not similar
With a recent decision, commented upon here (case T-44/20), the EU General Court dismissed the opposition to the registration of the below Huawei’s EU figurative trademark in class 9 of the Nice Classification, filed by the well-known fashion house Chanel.
More specifically, Chanel’s opposition was based on the following grounds:
Huawei’s trademark was similar to its earlier French trademark no. 3977077 registered in 2013 (reproduced below) and also the products claimed by the two signs in class 9 corresponded. Therefore, since such similarity determined a likelihood of confusion on the part of the relevant public, the Huawei trademark could not have been registered pursuant to Article 8 (2) (b) of the Regulation on EU Trademark (EUTMR);
Huawei’s trademark was also similar to Chanel’s earlier French trademark no. 1334490 (also reproduced below), registered in 1985 for products and services other than those claimed by Huawei. However, due to the acquired reputation of this trademark, and despite the fact that the classes of products and services claimed by the two trademarks were different, the Huawei trademark could not have been registered pursuant to Article 8 (5) EUTMR.
The EUIPO had initially rejected such opposition and its decision had been subsequently confirmed by the Board of Appeal, on the assumption that the disputed signs were neither identical nor similar. According to the EUIPO, in fact, from a visual point of view, the mere fact that each trademark was composed of two connected elements did not make them similar, although there were some similarities between them (for example, the circle around the graphic element). In addition, they were also different from a conceptual point of view.
Therefore, Chanel filed an appeal before the EU General Court claiming that the trademark applied for and the earlier trademarks were similar overall to an average degree, or even to an average to low degree when they were viewed in the orientation in which they had been applied for and to an average to high degree when the Huawei trademark was rotated by 90 degrees. Chanel therefore claimed that the EUIPO Board of Appeal had erroneously ruled out, as a matter of principle, any possibility of taking into account the mark applied for in an orientation other than that in which it had been filed.
In this regard, however, the EU General Court recalled that, as per established case law, when assessing whether signs are identical or similar, they must be compared looking at the form in which they are registered, while the actual or potential use of such signs in another form is irrelevant. In this case, according to the Judge, the visual comparison of the disputed trademarks highlighted the following similar elements: a black circle (for the Chanel trademark registered in 1985), two interlaced curves intersecting in an inverted mirror image, and a central ellipse resulting from the intersection of the curves. On the other side, the Court also pointed out the existence of significant differences that made the relevant signs visually not similar, namely: the more rounded shape of the curves in Chanel’s earlier trademarks; the stylization of the curves and their horizontal arrangement in Chanel’s earlier trademark, while vertical in the Huawei’s one; the vertical (for Chanel) and horizontal (for Huawei) orientation of the central ellipse resulting from the intersection of these curves; the greater thickness of the line of the curves in Chanel’s earlier trademarks; the way the curves intersected.
Finally, according to the General Court, the signs were also different from a conceptual point of view: although they all evoked letters of the alphabet, in the case of Chanel it was two “c”, while in the case of Huawei it was an “h” (or two “u”).
Therefore, the General Court fully dismissed the appeal and concluded that the EUIPO Board of Appeal had correctly found that the trademarks were dissimilar since they produced a different overall impression and, consequently, had correctly dismissed Chanel’s opposition.