On 26 September 2017, Huawei applied for a figurative mark in class 9. A link to the mark is here.
This mark was published on 11 October 2017 and opposed by Chanel on 28 December 2017. The opposition was based on Article 8(1)(b) in relation to trade mark number 3977077 (link to mark here), for goods in class 9, 'cameras, sunglasses, glasses; earphones and headphones; computer hardware', as well as Article 8(5) in relation to trade mark number 1334490 (link to mark here) for goods in classes 3, 14, 18 and 25, 'perfumes, cosmetics, costume jewellery, leather goods, clothes'.
On 19 March 2019, the Opposition division rejected the opposition in its entirety, which was appealed. This appeal was dismissed by the Fourth Board of Appeal on 28 November 2019 based on no likelihood of confusion within Article 8(1)(b) and the first condition not being met for Article 8(5) i.e. not sufficient similarity between the marks to create confusion.
In order to oppose a mark on the basis of Article 8(5), there are three conditions that must be met, and failure to meet one constitutes a failure to meet ALL. Those requirements are '(i) the marks at issue must be identical or similar; (ii) the earlier mark cited in opposition must have a reputation; and (iii) there must be a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark'.
The Board of Appeal (BOA) found the marks to be dissimilar visually. They note that the 'mere presence, in each of the marks at issue, of two elements that are connected to each other does not render the marks similar even though they share two basic geometric shape of a circle surrounding those elements'. They noted that a phonetical comparison is not possible, and conceptually the marks are not similar.
Thus, point one of the criteria is not fulfilled and the mark was found dissimilar on the basis of Article 8(5), and it was deemed unnecessary to further examine the other conditions.
Chanel rejected this, claiming that the application and the reputed mark are similar to an average degree in the form applied for. Chanel argued that the way the mark could be placed on a product i.e. turned on its side, increased the level of similarity when the mark was rotated 90 degrees. The BOA disagreed, arguing that they should only approach the opposition on the basis of the way in which the application is applied for or notional and fair use of the mark.
The GC reiterated 'the actual or potential use of registered marks in another form is irrelevant when comparing the signs' and mentioned Volkswagen v EUIPO, Paalupaikka (MAIN AUTO WHEELS) T-623/16 where the GC deemed it was 'necessary to compare the mark applied for with the earlier mark as they were registered'.
Chanel agreed that the marks are impossible to compare phonetically and that no conceptual comparison could be made as the signs have no meaning.
The GC noted certain visual similarities between the marks, stating that the application resembles 'two black letter 'u s' positioned vertically as an inverted mirror image' which cross over to form an ellipse, and Chanel's mark resembles 'two black letter 'c s' positioned horizontally and as an inverted mirror image' also crossing over to form an ellipse.
However, the differences outweigh the similarities;
1. Chanel mark's is seen as two rounded letter 'c s', whereas the application resembles a capital 'H';
2. Chanel's mark is positioned horizontally, whereas the application is vertical, the central ellipse mimics this positioning;
3. The lines of Chanel's mark are thicker;
4. The crossover of the letter 'u s' in the application are broken, unlike the crossover of the letter 'c s' in Chanel's mark;
5. The distance between the 'u' and the outer circle in the application, and that of the letter 'c' and the circle in Chanel's mark, differ.
Therefore, the GC found that the marks were dissimilar, even though both have interlaced curves inside a circle (which is a 'common generic element').
The GC reiterated that there was no need for a phonetic comparison. Conceptually, both marks having a circle does not make them similar enough. However, they pointed out that if we viewed the Application as a letter 'H' within a circle, this would reference the first initial of the Applicant, further showing the conceptual dissimilarities.
As the marks were not found to be visually similar, Article 8(5) was rejected as the first condition was not satisfied. Article 8(1)(b) was then rejected on the same basis.
This case serves as a reminder that no matter how extensive your reputation might be, it won't matter if the marks are not sufficiently similar to create a link or confusion in the mind of the consumer.