The General Court's 18 July 2017 decision in Chanel v EUIPO, case T-57/16, demonstrates that broad protection may be available for brands' monograms in Europe, in this case Chanel's intertwined "C".
The dispute which led to the Chanel v EUIPO case
In 2010, an individual named Li Jing Zhou registered the following "ornamentation" as a Community design:
Three years later, Chanel filed an action for invalidity on the grounds that the above design lacked novelty and individual character, relying in particular on its own monogram, which had been registered as a trade mark in France since 1989:
Both the Cancellation Division and the Third Board of Appeal of the European Union Intellectual Property Office (EUIPO) rejected Chanel's action, on the grounds that Chanel's trade mark did not deprive the later design of novelty or individual character. Chanel appealed to the General Court.
The General Court judgment
Before the General Court, Chanel was successful. The General Court concluded that the contested design lacked individual character in light of Chanel's famous logo and overruled the Board of Appeal.
In its reasoning, the General Court restated the four-step test for the assessment of the individual character of a design, which it said must consider:
the sector of the products on which the design is to be incorporated or applied; the informed user of the products at stake, as well as the extent of its knowledge of the prior art and its level of attention when comparing the designs; the designer's level of freedom when creating the litigious design; and the result of the comparison of the designs taking into account the relevant sector for the products, the designer's level of freedom and the overall impressions produced on the informed user by the contested design and by any prior design publicly disclosed. The Court further specified in that respect that the more a designer is given creative freedom, the less minor details between two designs are likely to produce a different overall impression. Based on the above four steps, the General Court found that:
the litigious design as an ornament could be applied on a wide-range of products; the designer was granted a large amount of creative freedom [38 and 56]; and the two drawings presented strong similarities, contrary to the Board of Appeal's finding that the drawings were fundamentally different, as Chanel's monogram was made of two inverted "c" displayed as an ellipse in its central...