BACKGROUND OF THE CASE

On 28 September 2017, Huawei filed an application for registration of a EUTM for some of the goods in Class 9. Registration as a mark was sought for the following sign:

On 28 December 2017, Chanel filed a notice of opposition which was based first on Article 8.1(b) of the European Union Trade Mark Regulation, and on an earlier French figurative mark, covering, inter alia, goods in Class 9. The opposition was based also on Article 8.5 of the Regulation and on a French figurative mark, covering goods in Classes 3, 14, 18 and 25.

The Opposition Division rejected the opposition in its entirety, and on 14 May 2019 Chanel filed an appeal against such decision. On 28 November 2019, the Fourth Board of Appeal dismissed the appeal as it considered that there was no likelihood of confusion on part of the general public, in regards to Article 8.1(b); and that the condition of similarity of the signs at issue that must be met in order for Article 8.5 to be applied was not satisfied. Against this decision Chanel filed an appeal before the General Court.

DECISION OF THE COURT

Chanel argues before the General Court that the signs are similar overall to an average degree, or even to an average to low degree when they are viewed in the orientation in which they are applied for and to an average to high degree when the mark applied for is rotated by 90 degrees. In short, it is claimed that it is permissible to take into account the different orientations of the signs if it corresponds to the impression which, irrespective of the intention of the proprietor, the general public may have when it its inserted on the goods which are being placed in the market.

However, the General Court, following the view from the Fourth Board of Appeal, states that the assessment of the signs at stake must be done taking into account the form in which they are registered. The actual or potential use of the signs in another form is irrelevant for the comparison as the orientation used in the registration may have an impact on the scope of protection and in order to avoid any uncertainty and doubt, the comparison must be done according to that orientation and shape.

The General Court states that the signs are different when assessed globally, even though they share some traits as having a black circle surrounding two letters which interlace each other. Regarding the conceptual similarity, it was found that despite both being a black circle containing stylised letters, that is not sufficient to state that both marks are conceptually similar. So, in conclusion, the General Court held that both marks are different, from the perspective of Article 8.5 concerning the reputation of the earlier trademark as well as from the likelihood of confusion parameters stated in Article 8.1.

In conclusion, the General Court dismisses the appeal as it found that the assessment on the similarity of the signs made by the Board of Appeal was correct and thus, neither Article 8.1(b) nor Article 8.5 of the European Union Trade Mark Regulation could be applied.

Judgement of the General Court, case T – 44/20 dated 21 April 2021