O-223-17 TRADE MARKS ACT 1994 IN THE MATTER OF APPLICATION NO. 3139335 BY COCO’S LIBERTY LTD TO REGISTER THE TRADE MARK Coco’s Liberty IN CLASS 14 AND IN THE MATTER OF OPPOSITION THERETO UNDER NO. 406269 BY CHANEL LIMITED Background and pleadings 1) Coco’s Liberty Ltd (“the applicant”) applied to register under no 3139335 the mark “Coco’s Liberty” in the UK on 5 December 2015. It was accepted and published in the Trade Marks Journal on 18 December 2015 in respect of the following list of goods: Class 14: Jewellery, precious stones; Jewellery being articles of precious metals; Jewellery being articles of precious stones; Jewellery chain of precious metal for anklets; Jewellery chain of precious metal for necklaces; Jewellery coated with precious metal alloys; Jewellery coated with precious metals; Jewellery containing gold; Jewellery fashioned from bronze; Jewellery fashioned from non-precious metals; Jewellery fashioned of precious metals; Jewellery fashioned of semi-precious stones; Jewellery for personal adornment; Jewellery for personal wear; Jewellery in non-precious metals; Jewellery in semi-precious metals; Jewellery incorporating diamonds; Jewellery incorporating precious stones; Jewellery made from gold; Jewellery made from silver; Jewellery made of bronze; Jewellery made of non-precious metal; Jewellery made of precious metals; Jewellery made of precious stones; Jewellery made of semi-precious materials; Jewellery products; Jewellery rope chain for anklets; Jewellery rope chain for bracelets; Jewellery rope chain for necklaces; Jewellery plated with precious metals; Jewellery; Jewellery in precious metals; Jewellery of precious metals; Jewellery boxes. 2) Chanel Limited (“the opponent”) opposes the mark on the basis of section 5(2)(b), of the Trade Marks Act 1994 (“the Act”). It is based upon a claim that the applicant’s mark is in respect of a mark similar to those of the opponent, and in respect of identical or similar goods. It relies upon the following three earlier marks: 2 2584184 Mark: COCO Goods relied upon: Filing date: 9 June 2011 Class 14: Articles made of precious metals or coated Date of entry in register: therewith; jewellery; precious stones; charms; keyrings; 9 September 2011 horological and chronometric instruments, watches, clocks, watch bands, watch straps, watch bracelets; parts and fittings for all the aforesaid. 3099353 Mark: COCO CRUSH Goods relied upon: Filing date: 16 March 2015 Class 14: Jewellery; cases for jewellery and jewels; Date of entry in register: precious stones; precious metals; charms; cufflinks; 5 June 2015 decorative pins; tie pins; brooches; badges; medallions; medals; ornaments and ornamental figures; trophies; keyrings; horological and chronometric instruments; watches, clocks, watch bands, watch straps, watch bracelets; cases for watches and clocks; parts and fittings for all the aforesaid goods. 3109878 Mark: I LOVE COCO Goods relied upon are identical to those listed above in respect of 3099353 Filing date: 21 May 2015 Date of entry in register: 7 August 2015 3) The applicant filed a counterstatement denying the claims made and putting the opponent to proof of use of its earlier marks. However, the earlier marks all completed their registration procedures less than five years before the publication of the contested application. As a consequence of this, the opponent is not required to provide proof of use as set out in section 6A of the Act and is entitled to rely upon the full list of goods covered by these earlier marks (even though it has elected to rely only upon the Class 14 goods). 3 4) Both sides filed evidence. The opponent is represented by Withers & Rogers LLP and its Marisa Broughton represented the opponent at the hearing that took place on 6 April 2017. The applicant is unrepresented in these proceedings and its Elina Bergert attended the hearing. Opponent’s evidence 5) This takes the form of a witness statement by Lucy Kathryn Aboulian, Senior Intellectual Property Counsel of the opponent. Ms Aboulian provides a history of the opponent and what she describes as “its iconic COCO trade mark”. She states that the opponent was founded in the UK in 1925, originally as an haute couture fashion house but that it has become “extremely well known for its fragrance, beauty, watches and jewellery products”. It is claimed that, today (the witness statement is dated 24 August 2016), the opponent is “one of the leading fashion houses in the world”. 6) Ms Aboulian states that the opponent’s marks are a homage to its founder Gabrielle “Coco” Chanel. Ms Aboulian refers to numerous books, films and a musical documenting Coco Chanel’s life with the Broadway musical starring Katherine Hepburn being entitled “Coco”. 7) At Exhibit LKA1, Ms Aboulian provides examples of use of the opponent’s mark in relation to a fine jewellery collection and also costume jewellery and other goods between 2011 and 2015. The mark CHANEL appears prominently on each page and the mark COCO also appears separately on the pages. Bracelets, rings, pendants, necklaces and charms are shown. The origin of the illustrations is unknown, but at least one is marked as “internal use only” (page 19). 8) Ms Aboulian states that, as a result of significant sums being invested in advertising and promoting the mark COCO, the mark is instantly recognisable by the trade and by consumers in the UK as indicating the origin of luxury goods. 9) Ms Aboulian states that the COCO mark was first used in the UK in relation to costume jewellery “at least as early as 2005” and in relation to fine jewellery “since at 4 least as early as 1997”. Exhibit LKA3 includes a copy of an article from Marie Claire magazine in 1997 about the opponent and its founder and makes reference to the opponent’s “new fine jewellery collection”; it refers to the use of the opponent’s “double C” mark but makes no mention of the COCO mark. A further fine jewellery collection was launched in 2012 and, at Exhibit LKA4, Ms Aboulian provides a copy of an article from Harper’s Bazaar magazine, dated January 2012, that refers to the collection. It makes reference to the opponent’s founder as “Coco” but does not mention the COCO mark. Copies of advertisements for the opponent’s COCO fine jewellery collection are shown at Exhibit LKA5. These are from 2009 and 2010 and appeared in Harper’s Bazaar, Condé Nast Traveller and Apollo magazines. 10) The following annual UK wholesale figures for the COCO fine jewellery collection (these figures do not include sales of costume jewellery) are: Year GBP significantly in excess of 2010 150,000 2011 300,000 2012 40,000 2013 70,000 11) The opponent’s fine jewellery are sold only from its own boutiques numbering six in London and one in Manchester. These include concessions within Harrods and Selfridges. 12) Ms Aboulian states that on 14 April 2015, the opponent launched a six piece jewellery collection under the mark COCO CRUSH. Both COCO and COCO CRUSH marks appear on the screenshot of the Net-a-Porter website, dated 23 April 2015, promoting the collection and provided at Exhibit LKA6. Ms Aboulian states that £130,000 has been invested in advertising the launch of the collection. Print advertisements were placed in Elle, Dazed & Confused, I-D Magazine, In-Style, Harper’s Bazaar, Marie Claire, Red, Tatler, Traveller and Vogue in issues that were published in October and November 2015. 5 13) Ms Aboulian states that the launch of the collection attracted significant media interest and was covered by many leading publications including the Telegraph, Vogue, the Independent and the Observer. Examples of this coverage are provided at Exhibit LKA10. Applicants’ evidence 14) This takes the form of a witness statement by Elina Bergert, founder Director and Designer of the applicant. Ms Bergert explains that the applicant’s mark was inspired from her childhood nickname “Coco” and how she set up a retail outlet in London in January 2014 to sell the applicant’s goods. 15) Ms Bergert provides information regarding the nature of the applicant’s use in the field of affordable design jewellery and has received publicity by being referred to in Condé Nast Traveller, The City Magazine and Elle, copies of which are provided at Exhibit A3. Annual wholesale figures are provided, rising from £25,000 in both 2014 and 2015 to approximately £80,000 in 2016. DECISION 16) Section 5(2)(b) of the Act is as follows: “5(2) A trade mark shall not be registered if because- (b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected, or there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark”. Comparison of goods 17) In the judgment of the Court of Justice of the European Union (“the CJEU”) in Canon, Case C-39/97, the court stated at paragraph 23 of its judgment that: 6 “In assessing the similarity of the goods or services concerned, as the French and United Kingdom Governments and the Commission have pointed out, all the relevant factors relating to those goods or services themselves should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary”. 18) The relevant factors identified by Jacob J. (as he then was) in the Treat case, [1996] R.P.C. 281, for assessing similarity were: a) The respective users of the respective goods or services; b) The physical nature of the goods or acts of services c) The respective trade channels through which the goods or services reach the market d) In the case of self serve consumer items, where in practice they are respectively found or likely to be found in supermarkets and in particular whether they are, or are likely to be, found on the same or different shelves; e) The extent to which the respective goods or services are competitive.