What just happened?
On 21st April 2021, the luxury fashion label Chanel lost in an EU court battle1 against the Chinese technology firm Huawei over its well-known logo.2
What does this mean?
A trademark infringement is an unauthorised use of a trademark or service mark by a third party3. In this case, Chanel filed a notice of opposition to Huawei’s registration of the above pictured left-hand mark, on the grounds that it bore visual similarity to their own mark.
However, the court found that there were sufficient differences between the two logos and the judges in the EU General Court argued that "The figurative marks at issue are not similar. The marks must be compared as applied for and registered, without altering their orientation”. Factors considered in the assessment included that Chanel’s logo had more rounded curves and thicker lines.4 Although, Chanel could appeal to the Court of Justice, there are only limited and specific grounds to do so.5
This trademark dispute demonstrates how important intellectual property (IP) rights are for luxury brands in particular, who are willing to go to lengths to ensure that their logos are kept exclusive. For example, this battle dates back to 2017, when Chanel first objected to Huawei’s request to the EU Intellectual Property Office (EUIPO) to register its computer hardware trademark.6
How does this impact the legal industry?
In this case, the General Court confirmed that when assessing similarity of signs, they must be compared in the form in which they are registered. This acts as a reminder to brands that in the assessment of similarity, only the protected version of a mark is to be considered. The actual or hypothetical use of registered marks in another form, in this case Huawei’s logo rotated at 90 degrees, is irrelevant.7 As a result, it is expected that global fashion houses will continue to be careful in protecting their brand identity.8
IP lawyers assist in filing trade marks in the UK, EU and internationally, but also aid in deciding which of the 45 ‘classes’ to register trade marks in.9 These are particularly important because this choice will directly influence the protection afforded. For example, in this instance, Chanel’s registrations included “computer hardware” in Class 9.10 Due to the importance of IP rights in the fashion industry, law firms have sought to distinguish themselves further, such as by launching their own brand management business.11
Despite Chanel’s loss, arguably they may have a case against Huawei under the tort of passing off in the UK. The tort of passing off, whilst similar to trademark infringement applies instead to protect unregistered rights of a business. The underlying principle being that “A man is not to sell his own goods under the pretence that they are the goods of another man” as established in Perry v Trufett (1842).12 This is particularly useful where registered rights are not owned and the court is able to consider the commercial reality (logos being rotated), instead of the strict requirements outlined above.13 If this is successfully pursued by Chanel, then other brands may follow suit, resulting in a rise of claims for ‘passing off’. However, evidence in such claims can be costly where pursing litigation, as businesses are required to prove goodwill and evidence misrepresentation.14
Written by Sheelpa Maroo
Assessing Firms:
#Bird&Bird #MishcondeReya #FoxWilliams #DLAPiper #Fieldfisher
References:
[1] Case T-44/20 Chanel SAS v EUIPO [2021] EGC <https://curia.europa.eu/juris/document/document.jsf?text=&docid=240167&pageIndex=0&doclang=EN&mode=req&dir=&occ=first&part=1&cid=4208077> accessed 23 May 2021
[2] BBC News, ‘Chanel loses EU court battle over Huawei logo’, (BBC, 21 April 2021) <https://www.bbc.co.uk/news/business-56833244> Accessed on 14 May 2021
[3] Winston & Strawn LLP, ‘What is the Definition of Trademark Infringement’ (Winston & Strawn LLP) <www.winston.com/en/legal-glossary/trademark-infringement.html> accessed 23 May 2021
[4] Ibid (n2)
[5] Tom Sharman & Filippa Evans, Reddie & Grose LLP ‘Lookalike Logos: Chanel loses trademark dispute with Huawei’ (Lawyer Monthly, 30 April 2021) <https://www.lawyer-monthly.com/2021/04/lookalike-logos-chanel-loses-trademark-dispute-with-huawei/ > Accessed on 15 May 2021
[6] Foo Chee, ‘Chanel loses European court fight in trademark dispute with Huawei’ (Reuters, 21 April 2021) < https://www.reuters.com/business/chanel-loses-european-court-fight-trademark-dispute-with-huawei-2021-04-21/#:~:text=French%20luxury%20house%20Chanel%20on,fight%20with%20Huawei%20Technologies%20(HWT.&text=The%20French%20luxury%20house%20subsequently,at%20issue%20are%20not%20similar.> Accessed on 14 May 2021
[7] Amy Reynolds, ‘Chanel unsuccessful before General Court in preventing registration of Huawei Logo’ (Fieldfisher, 28 April 2021) < https://www.fieldfisher.com/en/services/intellectual-property/intellectual-property-blog/chanel-unsuccessful-before-general-court-in-preven > Accessed on 15 May 2021
[8] Ibid (n4)
[9] Clarke Willmott, ‘Trade mark registration’ (Clarke Willmott) <www.clarkewillmott.com/legal-services/intellectual-property-lawyers/trade-mark-registration/#:~:text=Advising%20on%20trade%20mark%20registrability,directly%20in%20each%20country%20of > Accessed on 15 May 2021
[10] Ibid (n6)
[11] Mishcon de Reya,‘Brands’, (Mishcon de Reya) <www.mishcon.com/services/brands > Accessed on 16 May 2021
[12] Clarke Willmott, ’Passing off’ (Clarke Willmott) <www.clarkewillmott.com/legal-services/intellectual-property-lawyers/passing-off/> Accessed 23 May 2021
[13] Ibid (n10)
[14] Andy Lee, ‘The value of registered trademarks to a business’ (Financier Worldwide Magazine, January 2020) < https://www.financierworldwide.com/the-value-of-registered-trademarks-to-a-business#.YKlgT2ZKg1I > Accessed on 16 May 2021
Disclaimer: This article (and any information accessed through links in this article) is provided for information purposes only and does not constitute legal advice.