COCO CHANEL’s independent distinctive role

One of the most sophisticated concepts in EU trade mark law is the independent distinctive role of an element of a complex trade mark. It started with the THOMSON LIFE case (discussed here) where the earlier mark ‘LIFE’ has been combined with the company name ‘THOMSON’ to ‘THOMSON LIFE’ in the later mark. Both trade marks concerned identical goods.

This concept has been extended quite significantly over time. It also applies to situations where:

• The common element is a well-known trade mark (THOMSON LIFE at para. 34);
• The earlier mark is combined with a non-distinctive element (General Court, T-427/22 at paras. 34 et seq.);
• The additional elements in the contested mark give further meaning to the common element (General Court, T-359/15 at para. 46).

The German Patent Court recently applied the concept of an independent distinctive role to a situation where the earlier mark is essentially descriptive but acquired a low level of distinctiveness through extensive use.

Background

On 6 March 2020, a private individual filed for registration of German word mark no. 302020101825 ‘HiCoco’. It covered goods in class 3 (inter alia ‘personal care products; oral hygiene preparations; perfumery and fragrances’) and wholesale as well as retail services in class 35 for the goods in class 3.

CHANEL opposed the trade mark on the basis of IR no. 363419 ‘COCO’ designating the Federal Republic of Germany and the former Democratic Republic of Germany. The IR is registered inter alia for ‘perfumery products’ in class 3. CHANEL claimed an increased level of distinctiveness and a reputation of its mark. CHANEL relied, inter alia, on a survey from 2015 concerning the following product and claiming that 77 % of respondents in Germany recognized the trade mark.

The German Patent and Trade Mark Office rejected the opposition. CHANEL appealed.

The German Patent Court’s decision

The German Patent Court upheld the appeal for ‘perfumery and fragrances’ of the contested trade mark and dismissed it for the other goods and services (case 30 W (pat) 70/21).

No direct confusion

The judges did not accept that there was direct confusion between the trade marks even for identical goods because of the earlier mark’s degree of distinctiveness. Inherently, it is very low due to its descriptive nature. The English word ‘COCO’ was considered to be a well-known descriptive term for goods in class 3, including cosmetics and perfumery. It designates their ingredients or scent. As a consequence, the scope of protection of the earlier mark is very narrow.

CHANEL’s claim of an at least average degree of distinctiveness acquired through use was rejected. The 2015 survey mentioned above was disregarded because it did not show the use of ‘COCO’ in isolation but with the word ‘CHANEL’.

CHANEL submitted a new survey in the appeal proceedings regarding the public’s knowledge of the brand ‘COCO’. The survey was conducted with respect to ‘cosmetics’. The judges considered this term to be too broad and to encompass too many different goods to be the subject of a survey.

Nevertheless, the Court considered it to be a well-known fact that the sign ‘COCO’ has been used intensively for perfumes together with the word ‘CHANEL’ for decades. Due to this use, the judges accepted a low (instead of a very low) degree of distinctiveness of the earlier mark for ‘perfumes’.

On this basis, the signs were not considered to be sufficiently similar to cause direct confusion. Due to the additional element ‘Hi’ in the contested mark, the Court saw sufficient differences in word length, number of syllables, vowel sequence as well as the rhythm of speech and intonation. Also, the differences relate to the beginning of the signs, to which consumers pay more attention. The overall impression of the contested mark is not dominated by the element ‘Coco’ because of its descriptive character. Descriptive elements usually do not dominate the overall impression of a sign.

The Court was also not convinced of the General Court’s judgment in case T-196/20, in which an average degree of visual and phonetic similarity as well as a likelihood of (direct) confusion were accepted between the earlier mark ‘COCO’ and the later mark ‘INCOCO’. Based on the principle that the overall impression is decisive, the mere fact that the earlier mark is entirely included in the later mark was not deemed sufficient by the German Patent Court to find direct confusion.

Indirect confusion

The Court accepted indirect confusion because of an independent distinctive role the element ‘Coco’ plays in the mark ‘HiCoco’. The independent distinctive element must appear like a ‘trade mark within the trade mark’. This condition is only fulfilled in special circumstances. The judges found such circumstances to exist because:

• The goods are identical.
• The element ‘Hi’ is not a company name, a well-known trade mark or the common component of a series of marks. Further, it is not sufficiently separated from the word ‘Coco’ in order to obtain an independent distinctive position. Rather, both elements equally dominate the contested mark. However, the slightly increased level of distinctiveness of ‘COCO’ through longstanding use strengthened the perception of the element ‘Coco’ in the contested mark as a separate distinctive element.
  
• The word ‘Coco’ is identical to the earlier mark.
• ‘Coco’ is not fully integrated in ‘HiCoco’. The capital ‘C’ separates the words ‘Hi’ and ‘Coco’ to some extent.

These circumstances would lead the public to believe that ‘HiCoco’ is a separate product line of the ‘COCO’ perfume brand.

There is, however, no indirect confusion as regards the other goods and services because the earlier mark does not enjoy a (slightly) increased degree of distinctiveness for other goods than perfumes. The Court found that a likelihood of confusion based on an independent distinctive role requires identical or highly similar goods/services. The other goods and services are not highly similar to ‘perfumes’.

Trade mark with a reputation

Finally, the judges held that the evidence submitted by CHANEL was not sufficient to establish a reputation of the earlier mark. Since ‘COCO’ had a very low degree of inherent distinctiveness, the threshold for acquiring a reputation is higher than for averagely distinctive marks. This threshold was not reached.

Comment

There does not seem to be consensus on the conditions that need to be fulfilled for finding a likelihood of confusion based on an independent distinctive role:

• Some decisions suggest that the earlier mark must be fully and identically reproduced in the contested mark (e.g. General Court, T-628/18 at para 40). Others consider a similarity of the signs to be sufficient (e.g. General Court, T-8/22 at para. 68).
• In some cases, like the one discussed above, a low degree of distinctiveness of the earlier mark was sufficient for accepting an independent distinctive role (see also General Court, T-5/08 at paras. 60 and 65). In other cases, an at least average degree of distinctiveness was required (e.g. General Court, T-102/14 at para. 50 and T-755/20 at para. 53).
• The degree of similarity of goods and services is also unclear. Some decisions consider any similarity to be sufficient (e.g. General Court, T-591/20 at para. 29) while other suggest that an independent distinctive role can only exist for identical goods (General Court, T-558/13 at para. 58). German case law requires at least highly similar goods and services.

These uncertainties about the concept of an independent distinctive role allow for argumentation in either way.