Li Jing Zhou (a Spanish national) protected the following logo as a Community Design for ‘ornamentation’:
Chanel applied to invalidate the design on the basis of its iconic interlocking C’s monogram which has been protected in France as trade mark since 1989:
The grounds relied on in the action for invalidity were that the disputed design lacked both novelty and individual character because Chanel’s monogram had been protected in France as a trade mark since 1989 and used extensively.
The case was initially reviewed by the EUIPO’s Cancellation Division, which found that the respective signs were fundamentally different in appearance. The Third Board of Appeal also rejected Chanel’s appeal on the basis that the earlier trade mark did not negate the novelty or individual character of the disputed design, despite Chanel’s extensive reputation in and use of its trade mark.
The case was then heard by the General Court which overturned the Board of Appeal’s decision. The General Court concluded that the EUIPO and the Board of Appeal had erred in the assessment of the disputed design as against Chanel’s monogram and found that disputed design should be declared invalid on the basis that it lacked individual character. As part of its decision, the General Court reiterated the four step test for assessing individual character which must consider:
- The relevant sector of the products on which the design is to be applied;
- The informed user of the products (including their knowledge of the relevant prior art and their level of attention);
- The designer’s level of freedom when creating the design in question;
- The result of the comparison between the designs taking the above factors into account.
Applying these criteria to the design in question, the General Court found that:
- The disputed design could be applied to large numbers of products because it had been protected as ‘ornamentation’;
- The designer had a high level of creative freedom;
- Under the above assessment, the disputed design and Chanel’s monogram could create the same overall impression on an informed user since they both incorporated two interlocking C’s, with a centralised ellipse element. When the disputed design is rotated by 90 degrees (as below), the differences between the two are far less perceptible to an informed user and the two devices appear very similar.
The General Court also took into account Chanel’s extensive reputation for its monogram and the fact that the mark is well known.
An important factor in Chanel’s success was the fact that, since the disputed design had been protected for ‘ornamentation’, it could be applied to a multitude of products, in any size and, crucially, in any orientation. Unlike in the test for likelihood of confusion between trade marks, a design does not have to be applied to the product in the form in which it is registered and the assessment of individual character must allow for this. When rotated, the similarities between the disputed design and Chanel’s trade mark are much more striking:
Designs are very easy to register and not as easy to police as trade marks, making them an attractive form of IP protection for counterfeiters. Although Li Jing Zhou’s design was registered in 2010, Chanel did not dispute the registration until 2013. Had Li Jing Zhou applied for a trade mark instead of a design, the application would have been flagged to Chanel via its trade mark watch when published for opposition purposes, meaning Chanel would have been made aware of the filing much sooner. The case serves as a reminder of the importance of a comprehensive watching programme which takes into account not only trade marks but also designs, which can be harder to watch.