Coco De Mer Ltd v Chanel Ltd [2004] EWHC 992 (Ch) (10 May 2004)

Coco De Mer Ltd v Chanel Ltd [2004] EWHC 992 (Ch) (10 May 2004)

The appeal was dismissed because the Hearing Officer was entitled to find that COCO is a strong and distinctive element in both marks, and that the similarity of the marks, combined with the identity of the goods, creates a likelihood of confusion or association in the mind of the average consumer. The additional elements DE MER and the device were not sufficient to negate the impact of COCO. The global assessment of visual, aural, and conceptual similarity justified upholding the opposition under s.5(2)(b) of the Trade Marks Act 1994.

Citation
[2004] EWHC 992 (Ch)
Parties
Applicant/appellant: Coco de Mer Limited; Opponent/respondent: Chanel Limited
Jurisdiction
England and Wales
Judgment Date
10 May 2004
Procedural Posture
Appeal Under Section 76 Trade Marks Act 1994 / High Court Appeal From Registrar of Trade Marks Decision
Outcome
Appeal dismissed
Legal Topics
Likelihood of Confusion, Similarity of Trade Marks, Trade Mark Registration Opposition, Distinctiveness of Marks
Intellectual Property Trade Marks Likelihood of Confusion Similarity of Trade Marks Trade Mark Registration Opposition Distinctiveness of Marks

Case Brief

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Parties

Coco de Mer Limited

Applicant/appellant

Chanel Limited

Opponent/respondent

Procedural Posture

Appeal Under Section 76 Trade Marks Act 1994 / High Court Appeal From Registrar of Trade Marks Decision

Legal Issues

  1. 1 Whether the mark COCO DE MER is sufficiently similar to the registered mark COCO to create a likelihood of confusion under s.5(2)(b) Trade Marks Act 1994
  2. 2 Whether the presence of the word COCO as a dominant element in the applied-for mark leads to an association with Chanel's mark
  3. 3 Whether the additional elements DE MER and the device in the applied-for mark are sufficient to avoid confusion

Ratio Decidendi

The appeal was dismissed because the Hearing Officer was entitled to find that COCO is a strong and distinctive element in both marks, and that the similarity of the marks, combined with the identity of the goods, creates a likelihood of confusion or association in the mind of the average consumer. The additional elements DE MER and the device were not sufficient to negate the impact of COCO. The global assessment of visual, aural, and conceptual similarity justified upholding the opposition under s.5(2)(b) of the Trade Marks Act 1994.

Court Disposition

Appeal dismissed

Orders

  • The appeal by Coco de Mer Limited is dismissed.
  • The decision of the Registrar of Trade Marks to refuse registration of COCO DE MER is upheld.