COCO SEDATES SEX SHOP COMPETITOR

Coco de Mer Ltd v Chanel Ltd [2004] EWHC 992 (Ch), decided yesterday by Mr Justice Patten in the Chancery Division of the English High Court, is an interesting example of the strategic use of trade mark opposition to delay the inevitable encroachment of a competitor.

Coco de Mer applied to register the mark COCO DE MER in a number of classes, including class 3 (perfumery, essential oils, cosmetics) and class 18 (travelling bags). The term "coco de mer" was the name of a species of palm tree which grew in the Seychelles. Chanel, a well-known retailer of luxury goods, owned the word mark COCO for perfume and fashion accessories. "Coco" was also the name by which Chanel's founder was affectionately known. Chanel successfully opposed registration of Coco de Mer's mark under s 5(2)(b) of the Trade Marks Act 1994 on the ground that the respective marks were similar and that, by reason of their similarity, there was a likelihood of confusion: the hearing officer considered that there would be an association between the two marks which, in the case of the identical classes of goods concerned, would lead consumers to believe that the goods came from the same or economically linked undertakings. Coco de Mer appealed and argued that, in the mind of the average consumer, there would be no perception of any one feature of the applied-for mark which would be dominant and that, therefore the consumer, taking the marks as a whole, would make to association between them.

The judge dismissed the appeal, holding that the hearing officer had been entitled to conclude that COCO was a strong and obvious element in the applied-for mark, when the combination of the conceptual, aural and visual characteristics were taken together. He held that (i)If the average consumer did not have an understanding of what the COCO DE MER mark described, or an ability to translate the words as a complete phrase, the significance of the applied-for mark largely depended upon the impact it made as an invented phrase or words; (ii) The average consumer's lack of understanding also diminished the ability of the words "de mer" to control the impact of what was otherwise the most eye-catching word in the phrase; (iii) The need to consider the mark as a whole did not require the court to give each part of the mark the same weight or significance. The identification of the distinctive features of the mark was part of the function of the global appreciation and a highly relevant factor in determining the likelihood of confusion. In this context the existence of the words "de mer" was unlikely to be sufficient to negative the effect of COCO in the applied-for mark when used on identical types of goods, particularly in a single retail outlet. The average consumer might assume that an economic link existed between the two products and that the goods bearing the COCO DE MER mark were simply a brand or variant of those marked COCO. Accordingly, no proper grounds had been established on which a challenge to the officer's conclusions could be based.

The IPKat considers that the failure of Coco de Mer to register their mark does not mean that they can't necessarily register it in the long run. Chanel opposed the COCO DE MER trade mark application, but it is notable that they have not commenced trade mark infringement or passing off proceedings. On the assumption that Coco de Mer carries on using its COCO DE MER sign as a trade mark, it may eventually be able to gain registration by arguing that that mark has coexisted with COCO in the market without there being any evidence of actual confusion. He also notes that the Court of First Instance of the European Communities has regularly (but not invariably) held that, when considering whether a likelihood of confusion is likely to result from the similarity of two word marks, the relevant consumer is likely to pay particular attention to the beginning of each mark. Thus COCO and COCO DE MER might be regarded as likely to confuse while COCO and MER DE COCO might be regarded as less likely to do so.

Other Coco sites here, here and here
Sex and coco here; Sex and cocoa here