Applying to register a trade mark can often be a straightforward and relatively inexpensive exercise.
However, should your application be opposed during the two-month publication period, then the costs and complexity of the process will quickly increase; with the result being that your trade mark will not be registered until the dispute has been resolved. In some cases this might be many months or even years down the line.
This was the case for Huawei Technologies when, in September 2017, they applied to register the below trade mark (on the left) at the European Union Intellectual Property Office (EUIPO) for computer hardware:
Huawei’s application was opposed in December 2017 by French fashion label Chanel on the grounds that it was similar to Chanel’s own earlier mark (above and on the right) which was registered for perfumes, cosmetics, clothing, accessories and other similar foods.
In 2019, the EUIPO dismissed Chanel’s objection on that basis that there was no similarity and confusion was unlikely to occur amongst the public in relation to the two marks. However, Chanel challenged the ruling in April 2021 at the General Court of the European Union; which dismissed the appeal.
In dismissing the appeal, the tribunal of judges at the General Court stated:
"…the marks at issue must be compared in the form in which they are registered and applied for, irrespective of any possible rotation in their use on the market.”
…
"…Chanel's marks have more rounded curves, thicker lines and a horizontal orientation, whereas the orientation of the Huawei mark is vertical. Consequently, the General Court concludes that the marks are different."
Whilst the decision of the General Court can be appealed by Chanel, it is expected that this will be the end of the road after a four- year dispute.
Conclusion
This case illustrates the lengths which firms will go to in order to protect their reputation and branding. It also provides an extreme example of the time, cost and effort that it can take to register one’s trade mark.
It also proves how useful searches are in giving the applicant the ability to spot obvious conflicts between marks and allows for possible rethinks.
To reduce the risk of receiving opposition to a trade mark application, it is recommended that thorough due diligence is carried out prior to filing the application. This includes researching whether a similar trade mark (whether registered or unregistered) is currently being used by another person or business. However, big businesses might oppose applications even when the similarity is low, as costs are not so much of an issue for them. Identifying those marks might be more difficult, especially if the search does not extend to a wide range of Classes.
Finally, this case assists those businesses applying for marks which, whilst not similar in the form applied for, might become so if they were to be rotated. Here the Court made it clear that is not the way to compare the marks and they should be viewed “as is”.
If you are looking to register a trade mark and would like advice on the application process and the merits of your trade mark, then please contact George Duncan at george.duncan@ilaw.co.uk.
