Coco Chanel was a French fashion designer most famous, perhaps, for her perfume entitled “Chanel No. 5”. Chanel Limited (the Opponent in this matter), the haute couture business she established and which perpetuates her name, also sells high end jewellery.
On 8 March 2013, Tessa Sullivan (the Applicant) filed in Australia an application to register the trade mark “Coco Bird” (the Trade Mark) covering both goods pertaining to cleaning preparations for use on jewellery, and for a wide variety of jewellery.
The application was opposed on 4 September 2013 by the Opponent citing grounds under s44 (in essence, that there are prior registrations which should block the application) and s60 (explained further below) of the Australian Trade Marks Act 1995.
Under the s44 ground, the Opponent relied upon several of its registered Australian trade marks for the term COCO covering amongst other things goods the subject of the Application, and all of which have significantly earlier priority dates compared to the Applicant’s trade mark.
The Hearing Officer noted that the Applicant differentiate her jewellery as “low cost jewellery”. As such, it is marketed differently from the high end designer jewellery offered by the Opponent and has different trade channels. But these considerations were deemed irrelevant, with the Hearing Officer (with respect, quite correctly) stating that for the purpose of s44, the basis is not whether the particular use will cause deception or confusion, but on what the applicant can do if registration is obtained. Potential use of the brand within the scope of its protection is the issue.
Section 60 of the Trade Marks Act 1995 allows an opposition on the basis that the application is “contrary to law”. This almost always means that there is something about the trade mark which will constitute misleading and deceptive conduct contrary to the Australian Consumer Law. The Hearing Officer noted that the Opponent’s COCO trademark is a self-contained word with no specific meaning in the context of any of the goods or services covered by their registration, which makes it distinctive and memorable in the context of jewellery. Further, the Hearing Officer deemed that the addition of the word BIRD does not necessarily create a different impression of the word when used within the same context. This meant that in spite of the two trade marks being distinguishable from each other, there is still a likelihood of confusion as to whether they have originated from the same trade source, and that this could lead to potential purchasers being caused to wonder whether goods bearing the Applicant’s trade mark came from the Opponent.
Having found the Opponent successful in establishing the s44 grounds (for at least two of the trade marks), the Hearing Officer refused registration of the COCO BIRD trade mark.
Since this application was filed by Ms Sullivan, Chanel Limited has rushed to file three new application in Australia containing the word “COCO” in class 14:
- COCO CRUSH
- Coco Chanel
- CODE COCO
This is no doubt to help arm itself in respect of two other potential Australian oppositions, one in respect of “COCO88” filed by a Dutch company called Ron Offenbach BV, and another for “madam coco” filed by Ms Kylie Brown of Gymea Bay in New South Wales. Ms Brown’s trade mark is unlikely to make it through examination. But a dispute about whether “COCO88”, a brand used in a variety of countries, is capable of registration is much more likely.