The CFI ruled in the trademark dispute on similarity and likelihood of confusion between two well-known names: it was about the Huawei trademark vs. the Chanel trademark – both figurative trademarks with a stylised letter. The essential difference is the circle.
The plaintiff in this case is the famous French company Chanel, the defendant is the technology company Huawei (China).
Huawei figurative mark: stylised H in a circle
In 2017, Huawei had filed an application for a European figurative mark showing a stylised H in a circle. The Huawei figurative mark claimed goods and services in the field of software and technology from Nice Class 9.
In this, the French company Chanel saw overlaps with goods for which its own earlier French Chanel mark also claimed, including cameras, sunglasses, eyeglasses; earphones and headphones – and also computer hardware in Nice Class 9.
However, the Chanel mark is protected twice. The figurative mark asserted against the Huawei mark shows the famous 2 intertwined Cs – without a circle. Moreover, Chanel has been protecting this famous sign since 1985 as a national French trade mark for goods in the field of perfume, cosmetics and clothing, namely as 2 intertwined Cs in a circle.
In principle, therefore, the European Court of Justice (Court of First Instance, CFI) emphasised that the earlier mark, as registered, and the mark applied for, as filed, must be compared, irrespective of any rotation of their use on the market.
This was because the CFI had to rule on the similarity and likelihood of confusion caused by the Huawei figurative mark in the trademark dispute. It was therefore necessary to review the Board of Appeal’s assessment of the similarity and likelihood of confusion between the Huawei mark and the Chanel mark, which the Board of Appeal had denied.
No conceptual similarity
The CFI’s findings on the conceptual similarity of the two trade marks, which both consist of a circle with a stylised letter in the middle, are interesting.
The mere fact that they have the geometric shape of a circle does not make the marks conceptually similar, the Board of Appeal had ruled. The CFI added that the stylised letters (“h” in the Huawei mark, “u” in the earlier mark) could be perceived as such, and therefore the two marks were conceptually different.
No visual similarity
The two marks are also visually different, the CFI ruled.
Even though the opposing marks have common features, namely two black intertwined curves that intersect in mirror image and a central ellipse resulting from the intersection of the curves, the absence of a circle in the earlier mark and a corresponding arrangement preclude any visual similarity, the CFI ruled.
Reality of the use of the sign on the market
Indeed, the highest European court (ECJ) has already ruled several times that elements not included in the representation of the original trademark application are also relevant for the proper identification of the essential characteristics of a sign – if these elements correspond to the reality of the use of the sign on the market (see ECJ judgments of 2014 Pi-Design and others v Yoshida Metal Industry EU:C:2014:129; Simba Toys EU:C:2016: 849 of 2016).
But this was not relevant to the present case, the CFI explained. The ECJ case law concerned absolute grounds for refusal or revocation, but it was not relevant in the context of the examination of the present relative ground for refusal.
As a phonetic comparison was not possible – the parties to the dispute agreed on this – the CFI dismissed the similarity claim. The Board of Appeal had rightly decided that the two marks were not similar.
In this respect, the applicant also failed with its second head of claim, alleging likelihood of confusion between the marks. This is because, according to general case law, there is no likelihood of confusion without similarity between the marks. Other relevant factors in the assessment of the likelihood of confusion can in no way offset and compensate for the dissimilarity, the CFI affirmed and dismissed the action in its entirety.
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