CHANEL vs. Simb DOO: A High-Five for Trade Mark Evidence

I was reading an article published on The Fashion Law this morning about a recent decision in an EU trade mark opposition between CHANEL and Simb D.O.O. relating to the marks / ‘No. 5’ (of CHANEL) and (of Simb D.O.O.) and I think there are some great lessons to be learnt here. This case highlights the importance of evidence in trade mark opposition cases and is useful to bear in mind for large fashion and cosmetics companies when protecting and enforcing their brands. Even if a brand is super well-known and its notoriety is self-evident in the ‘real world’, it will not be assumed by a Trade Mark Office. Brand owners cannot rely on ‘expected’ knowledge of a brand and unless actual evidence is provided to prove this, the reputation or ‘enhanced distinctiveness’ of a brand will not be taken into account.  

In this case, CHANEL filed an opposition against Simb D.O.O.'s trade mark application for the mark . This application covers a wide range of class 3 goods including soaps, shower creams, cosmetics, perfumed creams, all of which are either identical or highly similar to the class 3 goods covered by CHANEL's earlier French trade mark registrations for the marks and ‘No. 5’.   

The opposition was filed based on a likelihood of confusion and whilst the goods were deemed identical, the marks were only considered similar to a low degree. CHANEL argued that their prior rights enjoyed a high degree of distinctiveness and filed evidence to support this claim. The evidence included a printout from Wikipedia relating to CHANEL’s use of the marks in question, a brochure and some photographs all bearing the / ‘No. 5’ marks.  The EUIPO were, however, unconvinced by this evidence.  The main reason for this is that CHANEL did not bolster the evidence with details of how and where the materials were distributed or information about the market share held by the earlier marks.  In addition to this, no evidence was submitted to show that goods bearing the / ‘No. 5’ trade marks (such as the infamous perfume) had been sold or purchased in the relevant territory, or how many consumers were exposed to these marks. The Opposition Division stated that it ‘must disregard any private knowledge it might have of the enhanced distinctiveness of the earlier trade marks and limit its assessment solely to the evidence on file’. This point is super important to remember because even though we all may know how infamous a brand is – if you can’t (or don’t) demonstrate this via evidence, this notoriety will not be assumed.  

Ultimately I think CHANEL will appeal this decision and I look forward to seeing further updates on this matter!