BACKGROUND OF THE CASE

On 23 January 2014 Innovative Cosmetic Concepts LLC applied to the European Union for registration of the international trade mark ‘INCOCO’ (word mark), for Classes 3, 35 and 44. On 23 October of the same year Chanel filed a notice of opposition alleging likelihood of confusion with two earlier French marks under the word mark ‘COCO’, for the same Classes. On 27 November 2018, the Opposition Division upheld the opposition and the applicant filed an appeal against that decision. Thus, on 16 January 2021, EUIPO annulled the earlier decision and rejected the opposition in its entirety. Chanel filed an appeal against this decision before the General Court.

DECISION OF THE GENERAL COURT

As regards the visual comparison of the signs, EUIPO considered that since the applicant mark had “in” in front of “coco”, the latter would no longer be perceived as an autonomous distinctive element. Thus, it considered that the signs were similar to a less than average degree in that they differed considerably. However, the General Court considers that EUIPO erred on this point in finding that ‘coco’ did not occupy an autonomous distinctive position and that the relevant public would not be able to perceive it as a word element in isolation. Therefore, the General Court considers that the conflicting signs are visually similar to an average degree.

On the phonetic comparison, despite the presence of the ‘in’, the ‘co’ element is identical in both signs and has, due to its repetition, an important role in the pronunciation. The Court considers that the Opposition Division was right to find that there is an average degree of phonetic similarity in that they are not exactly identical, as Chanel claimed, having an element of phonetic distinction (“in”), nor are they completely different as the applicant claimed.

On the other hand, as regards the conceptual comparison, the Court concludes that the similarity in this respect is weak between the signs. The public will break the word down into parts, distinguishing ‘coco’ from the rest of the sign ‘in’. However, the use of the prefix ‘in’ for the word ‘coco’ is rather unusual and does not confer a meaning, thus diminishing the conceptual similarity.

In conclusion, the General Court considers that the Board of Appeal erred in its overall analysis of the signs at issue. Contrary to the Board of Appeal’s finding, it is apparent from the visual comparison of the signs that the two signs are similar to an average degree; the same conclusion is reached as regards the phonetic comparison of the signs, a fact which the Board failed to take into account in its final considerations; and as regards the conceptual comparison, the Court considers that the signs are not different as the Board of Appeal stated, but that there is a weak similarity between the two signs. Furthermore, the Board of Appeal failed to take into account in its decision that the goods and services for which the applicant sought to register its mark are partly identical and partly similar to the registered goods and services of one of Chanel’s earlier marks.

The General Court therefore annulled the decision of the Board of Appeal and found that there is a likelihood of confusion between the applicant’s mark and one of Chanel’s marks and that the opposition must therefore be upheld.

Judgement of the General Court, case T-196/20, 16 June 2021