We are a boutique IP firm located in Osaka, Japan, specializing in trademark, design, specific unfair competition and copyright matters.

Bottom line: The Board found in favor of Chanel SARL in regard to double C logo.

K.K. Tocopacific filed an application for a logo below designating bags, vanity cases [not fitted], etc. in Class 14 and clothing, footwear, headgear, etc. in Class 25, which was registered without office action.   Chanel SARL filed an opposition against Tocopacific’s logo citing various Chanel logos below and claimed that Tocopacific’s logo falls under Section 4-1-11(confusing similarity), 4-1-15(likelihood of confusion) and 4-1-19(similarity and unfair purpose).  However, the opposition was dismissed.  Further, Chanel SARL filed an invalidation action on the same grounds and Section 4-1-7(public policy) additionally.

<Alleged Mark>

<Cited marks>

The Board recognized the alleged mark falls under Section 4-1-15, and revoked the registration for the mark.  The details of the Board’s decision are as follows:

<As for the degree of the well-knownness and originality of the cited marks>
With evidences submitted by Chanel SARL, the Board recognized the cited marks are well-known in Japan for ladies’ clothing, handbags, footwear, scarves, belts, costume jewelry, perfume, cosmetics, watches, sunglasses and other fashion merchandise at the time of both filing and registration of the alleged mark.

<As for the alleged mark>
The alleged mark consists of C and mirrored C overlapped, the fan-shaped projection in the upper part of the double C and “honu” in the lower part of the double C.  “Honu” is a Hawaiian word meaning sea turtle and is presented in small font.  Japanese consumers and traders will regard “honu” as a fancy word for Hawaiian language is not familiar to them.  Thus, the alleged mark has no particular meaning and has sound [ho-nu].

The double C of the alleged mark is much larger than the word “honu”, and will independently function as a source identifier.

<As for the cited marks>
The cited marks consist of C and mirrored C overlapped with or without a circle or a box frame.  The marks have sound [chanel mark] and meaning Chanel as the marks are well-known.

<Comparison of the alleged mark and the cited marks>
Double C of the allege mark and that of the cited marks are almost identical in their composition.

<As for other circumstances>
The designated good of the alleged mark are identical with or highly relevant to the goods of the cited marks.  And the consumers and traders of the marks are also identical.

<Conclusion>
When the alleged mark is used for the designated goods, it will evoke CHANEL logos in the consumers and traders and is likely to cause confusion with CHANEL logos.  Thus, the alleged mark falls under Section 4-1-15.

And so the Board revoked the registration for Tocopacific’s logo.