Coco De Mer Ltd v Chanel Ltd

Likelihood of confusion under section 5(2)(b) of the Trade Marks Act 1994 requires a global assessment of the marks and goods, viewed through the perception of the average consumer. The marks must be considered as wholes, but individual elements may have greater distinctive or memorable significance. Similarity between the goods and similarity between the marks are interdependent factors. Where goods are identical, a strong common element may create a likelihood of confusion even though the applied-for mark contains additional words or a device. The absence of survey evidence does not prevent a specialist tribunal from reaching that conclusion using its experience and common sense. An appellate court should be slow to interfere with a Hearing Officer’s evaluative conclusion absent an error of principle.

Coco de Mer Limited appealed under section 76 of the Trade Marks Act 1994 against the Registrar’s refusal to register COCO DE MER for goods including perfumery, cosmetics, jewellery, travelling bags, clothing and footwear. Chanel Limited opposed registration under section 5(2)(b), relying on its registered COCO mark. The Hearing Officer found the goods to be identical or substantially so and held that the common word COCO created an association likely to make consumers believe that the goods came from the same or economically linked undertakings. The appeal concerned the proper assessment of similarity between the marks and the resulting likelihood of confusion.

1. The appeal was dismissed. The Hearing Officer’s decision was not shown to involve an error of principle.

2. Under section 5(2)(b) of the Trade Marks Act 1994, likelihood of confusion is assessed globally by reference to the visual, aural and conceptual similarity of the marks, the similarity of the goods, and all other relevant circumstances. The average consumer normally perceives a mark as a whole, but that does not require equal weight to be given to every component.

3. The additional words DE MER and the device in COCO DE MER did not necessarily displace the significance of COCO. Most consumers would not understand the phrase’s underlying meaning. COCO was therefore capable of remaining the most eye-catching and memorable element, particularly aurally.

4. The assessment is a single composite question, but it requires a prior assessment of the actual similarities and differences between the marks and the goods. The interdependence of those factors meant that the identical nature of the goods could reinforce the effect of the common and distinctive element.

5. The absence of evidence of actual confusion, surveys or comparable evidence was not determinative. A specialist tribunal may use its own knowledge, experience and common sense. On appeal, the court should be slow to substitute its own assessment for that of the Hearing Officer on the same material: REEF TRADE MARK [2003] RPC 5.

6. The contrasting decision concerning GIORGIO BEVERLY HILLS was an application of established principles to different facts. It did not establish a general rule requiring every element of a composite mark to receive equal weight.

• High Court (Chancery Division): appeal from the Registrar of Trade Marks dismissed.