The European Union Intellectual Property Office’s (EUIPO) Opposition Division recently rejected Chanel’s opposition to a European trademark application using the number “5” to protect cosmetic products. But how? And why? Here’s how.
The sometimes complicated relationship between intellectual property and the world of perfume has a bright future ahead of it*. Chanel, which recently obtained the registration of two international designs protecting the new limited-edition bottle of its N° 5 perfume, opposed the application for European Union figurative mark 5 n°18 872 562 filed by a Slovenian company to cover cosmetic products (notably perfumed creams and lotions). In a decision dated June 17, 2024, the EUIPO dismissed the opposition, considering that the earlier trademarks invoked by Chanel had normal distinctive character, and ruled out any likelihood of confusion with the contested trademark application.
While we find the EUIPO’s conclusion questionable, the opposition filed by Chanel raises as many questions as it raises lessons, which will be addressed in this article.
Questions and lessons learned from the EUIPO’s recognition of normal distinctiveness for Chanel’s earlier trademarks
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*A previous column, published on December 4, 2023, already presented The world of perfume under the test of intellectual property law.
** EUIPO, 2nd Board of Appeal, July 22, 2020, No. R2688/2019-2 confirming the Opposition Division’s decision of September 30, 2019. It should be noted, however, that the Board of Appeal dismissed CHANEL’s appeal against products for lamps, despite the reputation of its earlier trademarks for perfume products.
*** The EUIPO had stated that the “evidence demonstrates the success achieved by the ‘N° 5’ trademark for perfumes over the last few decades through a selection of advertisements and press articles providing information on the opponent’s products. […] The opposing party has produced a considerable number of press releases from various French magazines and newspapers that constantly refer to the “N° 5” perfume as “myth”, “indeterminate” or “legend” over the years. The earlier mark has been the subject of intensive and long-lasting use and is generally known on the relevant market, where it enjoys a consolidated position among the dominant marks, as various independent sources attest”. (EUIPO, 2nd Board of Appeals., July 22, 2020, No. R2688/2019-2 confirming the decision of the Opposition Division of September 30, 2019).
**** This is all the more important when the opponent claims a high degree of distinctiveness, or even the reputation of an earlier trademark. In fact, we devoted a previous column to the subject of the reputed trademark, entitled “The reputed trademark: a formidable weapon, but difficult to wield”.
***** In its decision, the Office states that “a Wikipedia extract lacks certainty as a source of information, since it is taken from a collective encyclopedia established on the Internet, the content of which can be modified at any time and, in some cases, by any visitor, even anonymously”. Furthermore, with regard to the advertising material, the EUIPO points out that a brochure enclosed by Chanel is written in English, and that the common style of the French annotations on the photographs shows that they were added a posteriori, so that they cannot serve as proof of the distribution of the promotional material in France.
© ALERION (lawyer)
Read also> [CHRONICLE] THE WORLD OF PERFUME PUT TO THE TEST OF INTELLECTUAL PROPERTY LAW
Featured photo : © Chanel
Corinne Thiérache
Admitted to the Paris Bar in 1994, Corinne Thiérache is a partner at Alerion, in charge of the Technology and Digital Law / Intellectual Property departments. Corinne Thiérache has been advising and litigating with her clients for 30 years.
Adrien Bansard
Admitted to the Paris Bar in February 2019, Adrien Bansard is an associate at Alerion. He advises and litigates on intellectual property law and technology and digital law for French and foreign clients.
