Chanel vs Huawai and why this is a great time to remember your EU trade mark post Brexit
On 22 April Chanel lost a long legal battle with Huawei. The dispute began in 2017 when Huawei applied to the EU Intellectual Property Office to register a logo it would use for computer hardware. Chanel objected, saying that the design was too similar to its registered French logo used for its perfumes, cosmetics and accessories.
In 2019, the trademark office dismissed Chanel’s objection, saying there was no similarity and no likelihood of confusion in the mind of the public.
The French luxury house persisted and subsequently challenged the ruling which was dismissed. They “share some similarities but their visual differences are significant” and “The figurative marks at issue are not similar” are some of the comments made by the tribunal of judges.
That decision could be referred to the EU Court of Justice, Europe’s highest.
What about your trade mark rights post Brexit?
On 1 January 2021, the Intellectual Property Office created a comparable UK trade mark for every registered EU trade mark. Each of these UK rights will:
- be recorded on the UK trade mark register;
- have the same legal status as if you had applied for and registered it under UK law;
- keep the original EU trade mark filing date;
- keep the original priority or UK seniority dates; and
- be a fully independent UK trade mark that can be challenged, assigned, licensed or renewed separately from the original EU trade mark.
What about pending EU trade mark applications?
Businesses, organisations, or individuals that have applications for EU trade mark which are not registered at the end of the transition period will have a period of nine months to apply in the UK for the same protection.
What about applying for a new EU trade mark?
If you are thinking about applying for an EU trade mark, here are the some of the steps that you should consider:
- Conduct a trademark search;
- File your trademark application with the European Union Intellectual Property Office;
- European Union Intellectual Property Office initiates an examination period;
- A publication is made in the EU Trade mark Bulletin;
- A trademark is issued; and
- You will then have to monitor and renew your trademark.
Although Chanel taking on Huawai appeared like a lost cause, it still provides an interesting case and highlights the importance of EU trade marks. We recommend that you check your trade mark post Brexit and if you have a pending application, be aware of the 9 month transition period.
If you have any questions or require further assistance with any EU trade mark queries or applications, as well as, any general IP right queries please do not hesitate to contact us.Tags: Trademarks