Don’t Give Me Five: Chanel Fails to Prevent Registration of Simb DOO’s ‘5’ Mark

Chanel argued that the marks were too similar and would cause confusion among cosmetic consumers. The European Union Intellectual Property Office (EUIPO) disagreed and found that Chanel failed to produce sufficient evidence to support a finding that Chanel’s N^o 5 marks were distinctive enough to refuse registration.

Simb’s “5” mark is pictured below on the right.

Source: European Intellectual Property Office, Opposition No. B 3 203 223.

In the opposition, Chanel claimed that Simb’s mark would confuse cosmetics consumers, particularly as Simb’s mark is a combination of both the digit “5” and the letter “n,” which makes up Chanel’s N^o 5 mark. However, the EUIPO disagreed, finding that, although the possibility cannot be disregarded, it is unlikely the public would perceive Simb’s mark as a combination of a “5” and an “n.” Therefore, the EUIPO found the degree of visual and aural similarity between the marks to be “below average.”

The EUIPO then proceeded to consider whether Chanel’s marks are distinctive enough to prevent registration, regardless of the lower degree of similarity. To support distinctiveness, Chanel submitted four pieces of evidence: (1) a Wikipedia page about Chanel N^o 5, (2) an English brochure discussing the use of Chanel’s mark on a perfume, (3) advertisement photographs dating between 1957 and 2014, and (4) a photograph of a store showing the number 5 in one of the store’s windows. The EUIPO was unconvinced.

First, the EUIPO disregarded the Wikipedia page, finding that the website “lacks certainty as a source of information.” The EUIPO also found the advertising materials irrelevant because there was no indication of whether (1) the advertisements were distributed in key territories, (2) Chanel’s marks were in use at the time of the opposition, and (3) consumers purchased products bearing the marks, let alone in sufficient quantities to justify distinctiveness.

The EUIPO rejected Chanel’s claim that its marks were distinctive enough to prevent Simb’s mark from registering. In its decision, the EUIPO made it clear that companies must rely on more than their reputation and instead provide concrete evidence sufficient to support their opposition claims. The EUIPO noted, “the Office is restricted in its examination to the facts, evidence and arguments provided by the parties… In other words, the Office must disregard any private knowledge it might have of the distinctiveness of the earlier trademarks and limit its assessment solely to the evidence on file.”

Takeaway

The key lesson here is that regardless of how well known a brand may be to the consuming public, companies should never assume their reputation is self-evident and will be considered in official proceedings. Instead, brands should be prepared to support any claims they make with substantial, tangible evidence and should not rely upon user-generated information such as Wikipedia.