European Justice rules in favour of Chanel in conflicting design case
The judgment of the General Court of the European Union in case T-57/16 is good news for the owners of well-known trademarks.
Unfortunately, in recent times we have witnessed the rising trend consisting of filing Community designs bearing a suspicious resemblance to luxury brands. Infringers have discovered that registering a design is a quick, simple and cost-effective process and also a highly profitable one on account of the false image of validity that holding a title issued by the European Union Intellectual Property Office (EUIPO) confers. These designs are shrewdly created to resemble famous trademarks without exactly reproducing them in every minor detail; as a result it is not easy to successfully seek their invalidity.
In the case in question, the contested design was registered as an “ornament” to be applied to any type of product. EUIPO concluded that the contested design and the Chanel monogram differed fundamentally in the intersection of the two elements composing the conflicting signs, and therefore rejected the request for the declaration of invalidity filed by Chanel and the subsequent appeal it filed against the decision of the Cancellation Division.
However, if we rotate the contested design in 90º there is no question that the similarities with the Chanel monogram become much clearer. For instance, if the contested design were reproduced as an “ornament” on the arm of a pair of sunglasses, would it be possible to tell at first glance which is the original product and which is the knockoff?
Unsatisfied with the decision of EUIPO’s Board of Appeal, Chanel requested that the General Court annul that decision on the grounds that it was vitiated in that it was based on an incorrect analysis of the individual character of the contested design, which for an informed consumer, would produce an identical overall impression as the Chanel monogram.
Although it would have been desirable for the court to have acknowledged the relevance of taking into consideration the actual manner in which the offending designs were used in trade, we trust that this judgment will encourage the owners of reputed and well known marks to continue their fight against the registration of parasitic designs.
Garrigues Intellectual Property department
