A registered trade mark can have several benefits for a brand owner, it can be used to prevent other traders from using signs that are similar to the registered trade mark or it can be used as a method to fight against counterfeit goods. However, as the upmarket adult shop Coco de Mer discovered, in a recent High Court judgment, obtaining a registered trade mark is not necessarily straight forward.
There are a number of legal obstacles to overcome in the registration process. Under the Trade Marks Act 1994 (the “Act”), the owner of an earlier mark can prevent the registration of an application for a later trade mark in a number of ways. In one particular ground of objection permitted under the Act, the owner of the registered trade mark can oppose registration if they can demonstrate that there exists a likelihood of confusion on the part of the public between the two marks. There are two key elements to this test: (i) assessing whether the marks are similar and, (ii) assessing the likelihood of confusion.
The prohibition that prevents the registration of marks that are the same (or similar) to registered trade marks (where the goods or services are the same or similar) is designed to prevent consumers becoming confused about the origin of particular goods or services. This may well happen where a prior registered trade mark and a new candidate for registration, are confusingly similar.
Coco de Mer was started and is run by Samantha Roddick, the daughter of Anita Roddick the founder of Body Shop. The shop applied to the UK Trade Mark Office for a registered trade mark (see the representation of the sign) in respect of certain classes of goods which included jewellery, perfumery, travel bags and clothing. The effect of a successful application would have meant that Coco de Mer would have had the right to prevent any third party from using their sign (or one that was confusingly similar) on goods or services that were the same (or similar) to those for which it sought registration, i.e. a legal monopoly.
However Chanel, the famous French fashion house, opposed the application for registration on the basis of its own COCO registered trade mark. Chanel succeeded in persuading the hearing officer at the UK Trade Mark Office to refuse registration on the grounds that there would be a likelihood of confusion between the two. Coco de Mer appealed this decision to the High Court of Justice.
In assessing the similarity between the two the Judge looked at the degree of visual, aural or conceptual similarity between the marks. He held that the word “Coco” in Coco de Mer was the part of the mark most likely to attract a consumer’s attention even thought it was part of the sign that also included two other words (de and Mer), a symbol and the fact that the whole sign was in a particular stylised font. The Judge, agreeing with the hearing officer, felt that the second two elements of the Coco de Mer sign would be lost to the vast majority of the public.
There is case law that directs that the correct approach in making the assessment of likelihood of confusion is one based on the commercial reality of the market place, bearing in mind the distinctiveness, resemblance and proximity of trading. What was crucial was whether the public could believe that, because of the use made of the trade narks, the two sets of goods, or services, come from the same “economically-linked undertakings”. Given that the most distinctive element in the application by Coco de Mer was found to be the word Coco, the Judge agreed with the hearing officer. Coco de Mer therefore lost their application to register the mark. The Judge came to this view in the absence of any actual evidence of confusion.
This does not meant that Coco de Mer can not use its name. It only means that they can not obtain a registered trade mark in this form with all the benefits that a registered trade mark brings. To prevent Coco de Mer from using its name, Chanel would need to bring a trade mark infringement action and probably have to demonstrate real evidence of confusion.