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The Independent characteristic position of the Opposition Mark “COCO” in the challenged trademark “HiCoco”

Federal Patent Court, Decision of November 30, 2023, 30 W (pat) 70/21 – “HiCoco”

 Contents

Background of the Decision CHANEL “Coco” vs. “HiCoco”

The word mark “HiCoco” was filed on March 6, 2020, at the German Patent and Trademark Office (GPTO)  for goods in Class 3 including “body care products, perfumery goods, and fragrances” and in Class 35 including “wholesale and retail services relating to body care products, perfumery goods, and fragrances.”

CHANEL filed an opposition based on their IR trademark “COCO, which has been registered since 1969 in Class 3 for perfumery goods. CHANEL claimed enhanced distinctiveness and recognition.

The GPTO dismissed the opposition, stating that despite identical goods, the likelihood of confusion was ruled out due to insufficient similarity of signs. The distinctiveness of the opposition mark was considered significantly weakened. The term “COCO” was understood by the public as descriptive of the material content, scent, and/or taste of the claimed perfumery products.

CHANEL appealed. The appeal was successful for the goods “perfume” in Class 3.

No Direct Likelihood of Confusion

The BPatG assumed a far below-average distinctiveness of the opposition mark (except for perfume), considering it descriptive for goods in Class 3. The fact that “COCO” could also refer to the name of the founder “Coco Chanel” was irrelevant, as the descriptive character of the sign took precedence.

CHANEL claimed average distinctiveness due to the well-known nature of the opposition mark for “cosmetics products.” The expert opinion from 2015 presented for this was rejected (Chanel Coco recognition rate in Germany of 77%) because it did not show the recognition of COCO alone. Another, more recent expert opinion showed the recognition of COCO only in connection with cosmetic products. The BPatG rejected this due to an excessively broad range of goods. However, the BPatG recognized at least a below-average distinctiveness for perfume, as COCO CHANEL had been intensively used over the years.

The direct likelihood of confusion was denied. Despite partially identical goods and the matching component “Coco,” the marks were not similar in sound and script, as the component “Hi” led to differences in word length, syllable count, vowel sequence, and rhythm of speech and emphasis. In general, more attention is paid to the beginning of a word (otherwise, if COCO were at the beginning (e.g., “CocoHi”).

The Independent Characteristic Position of the Opposition Mark COCO in the Challenged Sign HiCoco

According to the ECJ and BGH, it is possible that a sign (like COCO here), when included in identical/very similar form in a composite mark (like HiCoco here), retains its independent characteristic position. This component in the younger mark must stand out on its own – appearing as a “brand within a brand”. The relevant public might then have the impression that the goods/services come from economically linked companies.

This requires special circumstances, which are present here:
The BPatG notes that due to the capitalization of “Hi” and “Coco” in the younger mark, it is not perceived as a single-word mark but as a combination. The older mark “COCO” was identically incorporated into the younger mark “HiCoco” and remains an independent component next to “Hi”. The “Hi” is neither a company slogan, a well-known brand, nor part of a sign series of the owner of the younger mark. “COCO” is attributed a slightly increased distinctiveness for perfume due to market penetration (as already mentioned above).

The BPatG thus concludes that the sign component “Coco” of the younger mark – in relation to goods that are identical/very similar to “perfume” – is perceived by the public as an independent “brand within a brand”. The public understands “Hi” as a fantasy component or – if “Hi” is understood as an abbreviation for “high” – as a promotional indication of a further developed (“higher”) product line of the “COCO” sign from CHANEL.

To the point

The independent characteristic position of  “COCO”, which ultimately could justify a likelihood of confusion – despite the below-average distinctiveness of the opposition mark – may not benefit many brands. Nevertheless, it is an interesting case that shows how the public can perceive brands in their components under certain circumstances.

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Rechtsanwältin

Fachanwältin für
gewerblichen Rechtsschutz

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D-80336 München

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