The EU Court on the Chanel vs Huawei case: no similarity between the signs compared

The European Union Court, by judgment of 21 April 2021, rejected Chanel’s appeal for the annulment of the decision of the Board of Appeal which had accepted the decision of the Opposition Division rejecting the opposition promoted by the famous French fashion house against the registration of the trademark applied by Huawei Technologies Ltd.

In particular, Huawei applied for the registration of the sign in Class 9 of the Nice Agreement before the EUIPO (European Union Intellectual Property Office).

Chanel objected to the registration of such sign.

The objection was based on the risk of confusion under Article 8(1)(b) of Regulation 2017/1001 and on the ground referred to in Article 8(5) of that Regulation (reputation of the earlier mark).

The earlier French trademarks in support of the opposition were: (registered for Class 9) and the registered trademark for perfumes, cosmetics, trinkets, leather goods and clothing.

The opposition against the registration of , however, was rejected on the ground that no similarity was found among the marks in comparison.

Chanel, unsuccessful, appealed the rejection to the EU Court.

In particular, the French fashion house argued that by rotating by 90 degrees the trademark mark applied for, then the marks in comparison turned out to be similar to an average grade.

Against this argument, the Court recalled that the signs must be compared in the form in which they are protected, i.e. how they were registered or how they appear in the application for registration. The actual or potential use of trademarks registered in another form is irrelevant when comparing signs (see Judgment of 20 April 2018, Mitrakos / EUIPO – Belasco Baquedano (YAMAS), T 15/17, unpublished, EU: T: 2018: 198, paragraph 34 and cited case law).

Therefore, contrary to Chanel’s appeal, the comparison between signs can only be made on the basis of the forms and orientations in which such signs are registered or requested.

The Court thus proceeded to highlight the visual differences between the conflicting trademarks consisting, firstly, in a more rounded form of the curves, similar to the image of two letters “c” in the trademarkin relation to the image of the letter “h” in the mark applied for and, secondly, in the different stylisation of those curves and the difference of their layout (i.e. horizontal in French trademarks and vertical in the trademark applied for). According to the European Court even the orientation of the central ellipse, resulting from the intersection of the curves was different, i.e. vertical in the Chanel brands and horizontal in the Huawei brand.

Therefore, the Court correctly found that, assessed as a whole, the trademarks in conflict were visually different, despite the presence, in each of them, of two intertwined curves.

The European Court also ruled that, since the signs were purely figurative, it was impossible to make an assessment of the similarity from the phonetic point of view and that, since the signs had no meaning, it was not even possible to examine the possible similarity from a conceptual point of view.

The Court therefore concluded that the Board of Appeal had correctly considered that the trademarks were – assessed as a whole – dissimilar and that, therefore, the opposition was correctly rejected both on the basis of the risk of confusion (Article 8(1)(b) of Regulation No 2017/1001) and on the basis of Article 8(5), according to which the similarity between the trademarks in comparison is, among others, a prerequisite for the application of the rule.