England and Wales High Court (Chancery Division) Decisions

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY
IN THE MATTER OF AN APPEAL TO THE HIGH COURT
UNDER SECTION 76 TRADE MARKS ACT 1994

		Royal Courts of Justice Strand, London, WC2A 2LL
		10th May 2004

Mr Justice Patten :

Introduction

1. This is an appeal by Coco de Mer Limited ("CML") against the refusal by the Registrar of Trade Marks to register the mark COCO DE MER in a number of classes of goods, including class 3 (perfumery, essential oils, cosmetics), class 14 (jewellery), class 18 (travelling bags) and class 25 (clothing, footwear and headgear). The Hearing Officer (Mr M Reynolds) upheld the opposition by Chanel Limited under s.5(2)(b) of the Trade Marks Act 1994 ("the 1994 Act") on the ground that what he described as the strength of the COCO element in the Appellant's mark created a likelihood of confusion. He considered that there would be an association between CML's mark and Chanel's registered mark COCO which, in the case of the identical classes of goods concerned, would lead consumers to believe that the goods came from the same or economically linked undertakings. There was no opposition to registration under s.5(3) of the 1994 Act, but Chanel did also rely on s.5(4)(a) (notional action for passing off). Ms May for the Respondent accepted, however, as her clients did before the Hearing Officer, that their opposition based on s.5(4)(a) provided them with no stronger or additional arguments, and that my decision on the objection under s.5(2)(b) will therefore determine the appeal.

The Evidence about the Marks

(a) Chanel

2. The evidence about the origin and use of the registered mark is contained in the witness statement of Mr Martin Hamilton, a director and the Company Secretary of Chanel Limited, which is summarised in the Hearing Officer's decision. It is convenient to set out the Hearing Officer's account of that statement, which explains the historical background and the use of the COCO mark in the Opponent's trade up to the date of application in July 2001:

" . . . The background to the opponents' business is described as follows:

"The opponent is the successor to the late Mlle. Gabrielle ("Coco") Chanel. In 1910 Mlle. Chanel opened a shop under the sign "Chanel Modes" at 21 rue Cambon, Paris, to create hats. She quickly achieved fame in the field of ladies' fashions and opened a fashion boutique in Deuville in 1913, followed by a couture house in Biarritz in 1915. In order to capitalise on that reputation, Mlle. Chanel extended her business into the allied field of perfumery and launched the first CHANEL perfume, No. 5, in 1921. The opponent was formed as a company in the United Kingdom in 1925 to take advantage of the great reputation attained by Mlle. Chanel in Paris. Since that time, the opponent, or its associated companies, has sold a wide range of perfumery, cosmetic, skin care and toiletry products, as well as jewellery items, watches, handbags, clothing and accessories, throughout the world, including in the United Kingdom, under or by reference to various trade marks including the trade mark COCO, the affectionate name by which Mlle. Chanel was commonly known. The New York Times' obituary on 11th. January 1971 for Mlle. Chanel stated that "she was known the world over" as Coco."

9. The name COCO was adopted as a trade mark for one of the opponents' fragrances. Exhibited at MH2 is a selection of packaging as currently used in the UK in respect of perfumes and toiletries. It is said to be either identical to packaging used at the material date or not to differ in any material respect.

10. COCO perfumes and toiletry preparations are available throughout the United Kingdom. COCO fashion accessories, costumer jewellery and clothing items are available at CHANEL BOUTIQUE outlets in London, namely in Sloane Street, Old Bond Street, Brompton Road, Harrods, and Selfridges (leather goods and footwear only), and also at Terminals 3 and 4 at Heathrow Airport. COCO fine jewellery is available from CHANEL fine jewellery boutiques in Sloane Street and New Bond Street, London. Exhibit MH4 contains pages from the Chanel Fine Jewellery Collection dated October 2000 showing use on items such as rings. There has been use in relation to jewellery since April 1997. Also contained in MH4 are pages from the Chanel clothing and accessories collections for Spring 1995 and Autumn/Winter 2000/2001.

11. The approximate trade value of sales of fragrance and toiletry goods bearing the trade mark COCO in the period immediately prior to the filing of the application is said to have been in excess of £4.5 million per annum; the retail value will be higher. The annual turnover of all CHANEL fashion and accessory items (including fine jewellery and watches) is in excess of £13,000,000 per annum. Mr Hamilton says the opponents do not keep separate figures for specific brands. The above figures include UK domestic and tax-free sales.

12. Advertising and promotional expenditure for the years prior to the filing of the application, in relation to COCO fragrance and toiletries alone, averaged in excess of £0.8 million per annum.

13. A selection of editorials and advertisements, the majority of which are said to have been in circulation in the UK, is at Exhibit MH5. Where this material post-dates the relevant date it is said to be because it is representative of material that was available in the media prior to that date. Stockists for COCO products exist in leading towns and cities throughout the UK."

3. Exhibited to Mr Hamilton's witness statement are extracts from various newspapers and magazines featuring articles and advertisements for Chanel products displaying the COCO mark. In the case of clothing and fashion accessories such as gloves, veils and shoes and some jewellery, the COCO mark is used in isolation. On the perfume and other toiletries illustrated in the exhibits the mark is used on a label which also features the CHANEL name and mark.

(b) Coco de Mer Limited

4. The evidence on behalf of CML is contained in the witness statement of Ms Samantha Roddick, who established the business. The company trades from premises at 23 Monmouth Street in London under the COCO DE MER name. These are retail shop premises which Ms Roddick describes as a modern, fashionable erotic emporium, which has been selling a wide range of erotica-related products since November 2001. Her aim, she says, is to sell items of high quality in an attractive environment that is not smutty or alienating. The nature of much of the product range is reflected in the application for registration of the COCO DE MER mark, which includes, for example, in class 18, whips and harnesses. I should perhaps make it clear that Chanel does not compete by selling similar goods under its own COCO mark.
5. The idea for the COCO DE MER brand name and mark came from a friend and business partner of Ms Roddick. The mark applied for is set out below:


COCO DE MER is the name of a species of palm tree which grows only on one or two of the islands in the Seychelles. The fruit of the tree is a large nut with two lobes, which is said to resemble a female bottom and genitalia. This is represented by the device placed in the mark above the name. The palm tree is surrounded by legend. According to local folklore in the Seychelles, the male trees copulate with the female trees by sending out an extended priapic member at night to the female palm. Anyone who witnesses this act will, according to the legend, die. Ms Roddick says that she recognised the spiritual and sexual significance of the coco de mer nut, which is seen as a potent and particularly feminine symbol of fertility. This was ideally suited as a means of identifying and promoting her business, which is designed to appeal to women, rather than the more down-market and sleazy sex shops which are mainly directed at men.

6. Ms Roddick denies any risk of association between the two marks. She says that all CDM's branding and marketing is carried out using the full COCO DE MER name and that it is intended to be based on the name of the fruit. The use of COCO by itself would not achieve that. This is contested by Chanel in their evidence in reply, which exhibits an article from Women's Wear Daily of August 2002 in which CDM's art director and designer is quoted as referring to COCO DE MER (in the sense of the business) as COCO. But this is hardly evidence of any use of the applied-for mark in an abbreviated form and the Hearing Officer did not base his analysis of the degree of similarity between the marks on anything but the possible use of the entire name, whether with or without the device.
7. In his witness statement Mr Hamilton also places particular emphasis on the quality of Chanel's product range. The COCO mark has, he says, become associated in the minds of the trade and the public with the finest standards available in perfumes and fashion accessories, and exclusivity is the essence of the Opponent's goodwill and the value of the COCO mark. This evidence is directed to the issue of confusion which I will come to later in this judgment, but it is important to recognise at the outset (as Chanel does) that the opposition to the registration of the applied-for mark is not based on the assumption that visitors to CDM's premises in Monmouth Street are likely to associate the perfume and fashion goods which they can buy there with those produced and sold by Chanel under its COCO mark. Although bad faith is not alleged, Chanel says that it is concerned about the situation that would arise if perfume and other similar goods bearing the COCO DE MER mark were to be sold alongside its own COCO branded perfumery products in ordinary retail outlets such as department stores. If registered, the COCO DE MER mark could be legitimately used in any retail outlet. It would not be confined to sales of CDM's products from its own store.

The Test

8. Section 5(2)(b) of the 1994 Act provides that:

"5-(2) A trade mark shall not be registered if because

(b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark."

It is accepted that the goods under consideration are to a large extent identical for purposes of applying the statutory test. The issues in dispute are the degree of similarity between the marks and whether there exists a likelihood of confusion.

9. The likelihood of confusion as to the economic origin of the goods falls to be determined by an assessment based on the likely public reaction to the two marks. This is to be tested by reference to the average consumer, in accordance with the familiar guidance from the ECJ which the Hearing Officer applied. As I have said on previous occasions, it is easier to quote from the relevant passages in the ECJ's decisions than to summarise them. One can begin with paragraphs 23 and 24 of the judgment in Sabel BV v. Puma AG [1998] RPC 199:

"The likelihood of confusion must therefore be appreciated globally, taking into account all factors relevant to the circumstances of the case.

That global appreciation of the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The wording of Article 4(1)(b) of the Directive - '. . . there exists a likelihood of confusion on the part of the public . . .' - shows that the perception of marks in the mind of the average consumer of the type of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.

In that perspective, the more distinctive the earlier mark, the greater will be the likelihood of confusion. It is therefore not impossible that the conceptual similarity resulting from the fact that two marks use images with analogous semantic content may give rise to a likelihood of confusion where the earlier mark has a particularly distinctive character, either per se or because of the reputation it enjoys with the public.

However, in circumstances such as those in point in the main proceedings, where the earlier mark is not especially well known to the public and consists of an image with little imaginative content, the mere fact that the two marks are conceptually similar is not sufficient to give rise to a likelihood of confusion."

10. In Lloyd Schufabrik Meyer & Co GmbH v Klijsen Handel B.V. [2000] FSR 77 further guidance was given as follows:

"27. For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect (see, to that effect, Case C-210/96 Gut Springenheide and Tusky [1998] ECR I-4657, paragraph 31). However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. It should also be borne in mind that the average consumer's level of attention is likely to vary according to the category of goods or services in question.

28. In order to assess the degree of similarity between the marks concerned, the national court must determine the degree of visual, aural or conceptual similarity between them and, where appropriate, evaluate the importance to be attached to those different elements, taking account of the category of goods or services in question and the circumstances in which they are marketed."

11. Finally there is paragraph 17 of the judgment of the ECJ in Canon Kabushiki Kaisha v MGM [1999] RPC 117:

"A global assessment of the likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between these goods or services. Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the marks, and vice versa. The interdependence of these factors is expressly mentioned in the tenth recital of the preamble to the Directive, which states that it is indispensable to give an interpretation of the concept of similarity in relation to the likelihood of confusion, the appreciation of which depends, in particular, on the recognition of the trade mark on the market and the degree of similarity between the mark and the sign and between the goods or services identified."

Similarity of the Marks

12. In order to judge the degree of similarity between the marks it is first necessary to analyse the character of each mark and its significance to those who encounter it. The Hearing Officer accepted, as he was plainly entitled to, that the link between the Chanel and the COCO marks was a strong one, but that the latter had been shown to have an independent presence. I have already referred to the evidence on which this finding was based. He described COCO as of above average distinctive character in relation to classes 3, 14, 18 and 25, whether the mark was recognised as the nickname of the founder of the house of Chanel or as a purely invented word. There is no evidence as to the extent (if any) to which members of the public in 2001 would have associated COCO with Chanel, absent the inclusion of the CHANEL mark on the same goods, and the distinctiveness of the mark has to be assessed for present purposes largely (if not exclusively) in aural and visual terms. Mr Malynicz on behalf of CDM submitted that it was in effect a secondary mark to the house mark CHANEL, but that understates the evidence. The Hearing Officer was entitled to conclude that the COCO mark was well promoted in its own right and had an established presence.
13. CDM's criticisms of the Decision are principally directed to Mr Reynolds' assessment of the distinctive character of the COCO DE MER mark and the conclusions on similarity he drew from this. Chanel's case before the Hearing Officer was that the average UK consumer was unlikely to know that COCO DE MER was the name of a type of palm tree native to the Seychelles. The word COCO would be seen as the dominant feature of the mark and the words DE MER simply as descriptive of COCO without their actual meaning necessarily being understood. Mr Malynicz accepted only part of that analysis. He submitted to the Hearing Officer that consumer reaction to his client's mark was likely to be divided into three different groups:

i) a small group of consumers (probably tiny in number) who had either spent holidays in the Seychelles or had in some other way come to know that COCO DE MER was the name of a palm tree native to the Seychelles;

ii) a larger group who would not know what a coco de mer actually was but, with some knowledge of French, would be able to translate the words "de mer" accurately and would assume or guess that the phrase as a whole meant sea-nut or sea-coconut; and

iii) the third and largest group who do not speak French and would not know what the words meant, although some might recognise them as in the French language.

14. Mr Malynicz submits that none of the three groups would be likely to associate the marks conceptually. Group 1 would know what the coco de mer was and give it that distinct meaning. Group 2 would either work out what the words meant or would at least realise that the three words had to be read together as a single descriptive phrase. The third group (who are likely to be very much in the majority) would find the mark meaningless, but would (to use the words of the Hearing Officer) not attach overriding significance to any particular word in the phrase. This analysis by the Hearing Officer is to be found in paragraph 35 of his Decision, where he summarises his conclusions as to what consumers will see as the distinctive character of the mark in this way:

"That still leaves the question as to what consumers will make of the mark. A not insignificant number of people will have a sufficient appreciation of French to attribute a meaning to DE MER. They may wonder what it means in the context in which it appears but will see the words as qualifying COCO, itself a strong and distinctive element. I accept too that there will be others for whom the whole phrase COCO DE MER will be meaningless but who will note the elements that make up the combination but without attaching overriding significance to any particular one."

15. Mr Malynicz does not quarrel with this analysis. Indeed he supports it. But it should, he says, have led the Hearing Officer to conclude that in the mind of the average consumer there will be no perception of any one feature of the applied-for mark as dominant. In the event, however, the Hearing Officer reached the conclusion that most consumers (and therefore presumably the average consumer) would regard COCO as the distinctive element in the Appellant's mark. At paragraph 36 of the Decision he explained his conclusions in this way:

"Depending on what view is taken of the matter the applied for mark does not yield a single and coherent distinctive character. I am, however, of the view that few people will understand the true meaning of the phrase. That group cannot fail to regard COCO as a distinctive and key element in the make -up of the mark. It is the first, and a visually prominent element and, when seen in the context of the phrase COCO DE MER, will not lose its impact as a result of being subsumed within that phrase. COCO has alliterative and assonantal qualities that also make it memorable from an aural standpoint. Furthermore for those with a smattering of French, COCO may have even greater significance if DE MER is seen as merely a qualifying or supporting element."

This, says Mr Malynicz, is both wrong and self-contradictory. It ignores the earlier finding that even consumers in group 3 will not attach overriding significance to any one word in the phrase COCO DE MER and is inconsistent with that finding.

16. It is important to mention at this stage that the contentions of both Chanel and CDM involve an acceptance that the applied-for mark is on occasions likely to be used (and must therefore be considered) without the device. There is evidence that the mark has been used in this way on carrier bags, and Mr Malynicz accepted before the Hearing Officer that it was legitimate to consider the words COCO DE MER alone. Whether the presence or absence of the device makes any significant difference to the public perception of the mark is debatable. The Hearing Officer thought that the device would be seen merely as an abstract shape of no particular significance to any but the small number of consumers who would actually know what a coco de mer was. This seems to me to be right. It follows (as he found) that the words constitute the distinctive element in the mark and will determine the degree of recognition which the mark is likely to produce.
17. It seems to me that much of the difficulty which Mr Malynicz's argument highlights is caused by the order in which the Hearing Officer chose to set out his conclusions. Paragraph 36 of the Decision is a conclusion about the distinctive feature of the COCO DE MER mark, based in terms not only on the concept or meaning which it conveys, but also upon the Hearing Officer's assessment of its visual and aural attractions. Ultimately, of course, it is necessary to relate the three elements to each other. This is the exercise of globally assessing consumer reaction referred to in Sabel and the other authorities. But in order to make that global assessment it is necessary first to ascertain what are the respective aural, visual and conceptual features of the mark and the relative strengths and weaknesses of these elements.
18. This is an exercise which the Hearing Officer did in fact carry out. His analysis of conceptual significance is set out in paragraph 35, which I have already quoted. If one goes ahead in the Decision to paragraphs 41 to 43, the visual and aural features of the mark are dealt with in relation to the issue of similarity:

"41. Visual considerations are likely to be of particular importance with products of this kind (see REACT Trade Mark [2000] RPC 285). The applied for mark contains the words COCO DE MER in what Mr Malynicz described as a scrawled, stylised script. The words are nevertheless clearly visible and the degree of stylisation is not remarkable. The opponents' mark is, therefore, present in the mark applied for. The average consumer will not, however, see the applicants' mark without also appreciating that it contains two additional words and a device (considering for present purposes the full mark). In short there is some visual similarity as a result of the common element but it is not of the highest order.

42. The applicants' device is unlikely to feature in oral use of their mark. COCO is the first element of the words COCO DE MER and is a distinctive and self contained feature.

43. I have already considered the conceptual significance of the applicants' mark. If I am right in concluding that most people will not understand the meaning of COCO DE MER then a key point of conceptual dissimilarity is lost. COCO is then a strong element (even if it carries no obvious meaning to the consumer) which must be given full weight in the applied for mark."

19. The Hearing Officer's finding that such visual similarity as exists is not of the highest order is really based on the complexity of the applied-for mark. It contains the words COCO DE MER in a highly stylised form, coupled with the device depicting the nut. Even if one concentrates on the literal part of the mark, he obviously thought that there is no reason to suppose that the average consumer will focus visually on the word COCO to the exclusion of the words DE MER. There is nothing in design terms which emphasises the word COCO to the detriment or exclusion of the other parts of the mark.
20. There is no challenge to this conclusion by Chanel. Instead, Miss May directed her criticisms to the statement by the Hearing Officer that visual considerations are likely to be of particular importance with products of this kind. She contends that the goods in issue are just as likely to be purchased by reference to oral recommendation or by recollection of the mark. I shall come back to this point when I deal with the issue of confusion.
21. The Hearing Officer's view that COCO is likely to be a distinctive feature of the mark when assessed for its oral impact is set out in paragraph 42 of his Decision and is referred to as part of his assessment of the mark's conceptual significance in paragraph 36. The degree of similarity which exists between the two depends (as the Hearing Officer recognised) on the extent to which the word COCO in the applied-for mark is the dominant feature. If it was so dominant as to effectively exclude the other components of the mark, then the two marks would be all but identical. Short of that, the task for the Hearing Officer, and for me on appeal, is to make an assessment of how proximate the two marks would be perceived by the average consumer, given that they share a common word.
22. The Hearing Officer's conclusion on the aural qualities of the mark was that the word COCO was particularly memorable. It is the first word in the phrase and has an obvious appeal. Mr Malynicz makes the point that it would be wrong to consider the word COCO in isolation, given that the minimum use of the applied-for mark was as an entire three-word phrase. I agree with that, but the Hearing Officer did not approach the question of aural significance and similarity in that way. As I read the Decision, he looked at the phrase as a whole but concluded that, of the three words used, COCO was likely to be aurally the most significant. I have no reason to disagree with that conclusion.
23. The most obvious criticism of the Hearing Officer's analysis of the significance of the COCO DE MER mark is Mr Malynicz's point that his conclusion in paragraph 36 is inconsistent with his analysis of conceptual significance in paragraph 35. The conclusions set out in paragraph 36 are important because they largely dictate the Hearing Officer's views about the similarity between the marks. What the Hearing Officer seems to be saying in paragraph 36 is that, even though most consumers will not be able to attach a meaning to the phrase COCO DE MER or to any particular part of it, the visual and aural qualities of the mark, centring as they do on the word COCO, will make that word the most distinctive feature. Conceptual understanding of the mark will not be sufficient in itself to produce that effect, nor will it be effective to prevent it. That, however, makes visual and aural recognition the determinants, and the description of the word COCO in paragraph 36 as the visually prominent element in the phrase COCO DE MER is not easy to reconcile with what is said in paragraph 41 about the degree of visual similarity between the marks not being of the highest order. In the end, however, what matters is whether the global assessment or appreciation of the visual, aural and conceptual similarity of the marks made by the Hearing Officer was correct, and I consider that it was.
24. If (as is all but common ground) the majority of consumers, and therefore the average consumer, will have no actual understanding of what the COCO DE MER mark in fact describes and no ability to translate the words as a complete phrase, then the significance of the applied-for mark, like that of the registered mark COCO, will largely depend upon the impact it makes in effect as an invented phrase or words. The average consumer's lack of understanding of what COCO DE MER means will, by the same token, diminish the ability of the words DE MER to control the impact of what is otherwise the most eye- and mind-catching word in the phrase. Views may differ as to the degree to which the word COCO has any distinctive visual significance or impact, but that seems to me to be less important than the attraction which it has as a word. It is, to my mind, clearly the most catchy part of the phrase and the one element in it which is more likely to attract consumers' attention than the remaining two words DE MER or the graphic style in which the words are presented. The Hearing Officer was therefore, in my judgment, entitled to conclude that, when taken together, the combination of the conceptual, aural and visual characteristics of the mark left COCO as a strong and obvious element in it.

The Likelihood of Confusion

25. There is no evidence in this case of actual confusion either at or since the application date. That is hardly surprising, given that CDM's business did not commence until November 2001 and has been conducted exclusively from the premises in Monmouth Street. At the start of the appeal I rejected an application by CDM to introduce further evidence of the extent to which CDM's goods had been promoted and advertised. I took the view that none of the material was relevant to assessing the possible impact which the sale of identical types of goods in the relevant classes might have if conducted from the same retail outlet. That remains a hypothetical question which the Court has to attempt to answer by inference from the relative strengths of, and similarities between, the two marks. The Hearing Officer expressed regret that no evidence in the form of surveys or the like existed to assist him to assess the degree of similarity and consequently the degree of confusion which might ensue. But in the absence of such evidence he had to use his own experience and common sense to determine the probabilities involved.
26. If one has to characterise this in terms of burden of proof, then undoubtedly he had to be persuaded, from the material and submissions before him, that on the balance of probabilities the Opponent had established the necessary likelihood of confusion. That analysis is, however, largely meaningless when applied to a specialist tribunal like the Trade Marks Registry, where the Hearing Officer is entitled to apply his own knowledge and experience to determining the ground of opposition. The absence of factual evidence is never a bar to such a determination, although the absence of it may make it more difficult to make out the grounds of opposition. In the end, however, it is a matter for the judgment of the Hearing Officer, on the material before him, as to whether a likelihood of confusion exists. In the absence of any error of principle, this Court should be slow to substitute its own judgment for the conclusions of the Hearing Officer reached on a consideration of the same material: see REEF TRADE MARK [2003] RPC 5.
27. Likelihood of confusion as to the economic origin of the goods depends, according to Sabel, on a global appreciation of all relevant factors. When the goods are identical, the predominant factor is likely to be the degree of similarity (or not) which exists between the two marks, having regard to their distinctive characteristics. One therefore starts, in this case, with the degree of similarity between the word COCO as it appears in the two marks. On the Hearing Officer's findings there will be an obvious link between the two marks, created by the use of a common word, and the only real question is whether other factors (including the existence of the other elements in the applied-for mark) are likely to rule out the possibility of confusion which the use of the word COCO in both marks might otherwise produce, when used to market identical classes of goods. For the reasons already explained., the existence of the additional two words DE MER and the device (when used) are not, in my judgment, likely to be sufficient to negative the effect of COCO in the applied-for mark when used on identical types of goods, particularly in a single retail outlet. It seems to me that the average consumer (particularly one with little prior experience of either mark) may well assume that there is an economic link between the two products and that the goods bearing the COCO DE MER mark are simply a brand or variant of those marked COCO.
28. One of the issues canvassed in argument was the circumstances in which purchases of goods of the type in question are likely to be made. Mr Malynicz argued that these were luxury items (similar to a car) which would not be purchased frequently and would only be purchased after a certain amount of prior investigation into the products. There is no real evidence about this and I do not regard the analogy with cars as a good one. The goods under consideration are not in the same category of value, nor are they as complex as a motor car. It seems to me most unlikely that the average purchaser will carry out the comparative investigation which a car purchase commonly involves. Items such as perfume or small fashion accessories will often be bought as occasional and often spontaneous purchases with little or no prior thought.
29. The conclusions of the Hearing Officer are set out in paragraphs 51 to 52 of his Decision as follows:

"51. Turning to my own conclusions on likelihood of confusion, I have not found this an easy matter to decide mainly because I believe there is scope for more than one view of the applied for mark. Had I been persuaded that there was a significant degree of consumer awareness of the underlying meaning of the applicants' mark then it might have pointed to a different outcome. As matters stand that is not the case with the result that COCO is a distinctive element within the totality of the mark. Even so direct confusion seems unlikely. There are simply too many elements in the applied for mark for that. However I bear in mind the guiding principles from Canon Kabushiki Kaisha v Metro -Goldwyn Meyer Inc, [1999] RPC 117 that, a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods (paragraph 17) and, if the association between the marks causes the public to wrongly believe that the respective goods come from the same or economically linked undertakings, there is a likelihood of confusion within the meaning of the section; (paragraph 29).

52. The strength of the COCO element creates that association with the result that consumers would in my view wrongly believe that the respective goods (which are identical) come from the same or economically linked undertakings. There is, therefore, a likelihood of confusion and the opposition succeeds under Section 5(2)(b)."

Mr Malynicz submitted that the Hearing Officer (in what was for him a marginal decision) used the similarity of the goods involved as a kind of tie-breaker to establish the existence of a likelihood of confusion, where such would not be a justified finding based simply upon a comparison of the marks themselves. This, he says, is a wrong approach. What the Hearing Officer should have done was to consider the single composite question of what was the net effect of the similarities of the marks and between marks and goods. This submission was made by reference to the Decision of Mr Geoffrey Hobbs QC as the Appointed Person in Re Raleigh International Trade Mark [2001] RPC 202. At paragraphs 17 to 19 of his Decision Mr Hobbs said this:

"17. I think it is clear from the case law of the European Court of Justice that an objection under section 5(2) of the Act raises a single composite question: are there similarities (in terms of marks and goods or services) which would combine to create a likelihood of confusion if the "earlier trade mark" and the sign subsequently presented for registration were used concurrently in relation to the goods or services for which they are respectively registered and proposed to be registered?

18. The question falls to be answered in accordance with the detailed guidance provided by paragraphs 17 to 27 of the judgment of the European Court of Justice in Case C-342/97 Lloyd Schufabrik Meyer GmbH v. Klijsen Handel BV [1999] ETMR 690. Those paragraphs confirm that an objection under section 5(2) should be assessed with due regard to the commercial realities of the market place, bearing in mind that distinctiveness, resemblance and proximity of trading are matters of fact and degree which must be given such weight and priority as they deserve as part of the overall assessment.

19 There can be no objection under section 5(2) where it does not appear that the public could believe that the goods or services supplied under the marks in contention come from the same undertaking or, as the case may be, from economically-linked undertakings: Canon paragraph 30. A belief in the existence of a licensing or joint venture arrangement would seem to satisfy this requirement: Case C-9/93 IHT Internationale Heiztechnik GmbH v. Ideal Standard GmbH [1994] ECR I-2789 paragraphs 34 and 37 to 39; Case C-63/97 Bayerische Motorenwerke AG (BMW) v. Ronald Karel Deenik [1999] ECR I-905 paragraph 51. However, the mere association which the public might make between two trade marks as a result of their analogous semantic content is not in itself a sufficient ground for concluding that there is a likelihood of confusion, even if the earlier trade mark has a particularly distinctive character (either per se or because of the reputation it enjoys in the market place): Case C-251/95 Sabel BV v. Puma AG [1997] ECR I-6191, paragraph 27; Case C-425/98 Marca Mode CV v. Adidas AG ECJ, paragraphs 37 to 41."

30. I have no difficulty with that statement of the law, but it does not produce any real support for Mr Malynicz's criticisms of the Hearing Officer's Decision in this case. The Decision in Raleigh clearly recognises that although ultimately the question is whether, in all the relevant circumstances of the similarities between marks and rival goods, there is a real risk of confusion, that question can only be answered following a prior assessment of the degree of similarity or dissimilarity between marks and goods which in fact exist. The Hearing Officer in paragraphs 51 and 52 of his decision was doing no more than to re-state the distinctive nature of the word COCO in the applied-for mark and then to explain that the identical nature of the goods was sufficient, when added to the degree of similarity between the marks, to make confusion a real possibility. Ultimately that is an answer to a single composite question.
31. The question I have to consider is whether there are proper grounds established for challenging the Hearing Officer's conclusions. For the reasons already given, I am not so satisfied. I do, however, need to refer to the reliance placed by Mr Malynicz on the decision of the Court of First Instance in GIORGIO BEVERLY HILLS.

GIORGIO BEVERLY HILLS

32. This case concerned an application to register as a community trade mark the word mark GIORGIO BEVERLY HILLS in respect of goods in various classes, including:

"Class 3 - Toilet soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices, deodorants for personal use and preparations for the cleaning, care, beautification of the skin, scalp and hair."

A notice of opposition was filed by the proprietor of four marks, each featuring the word GIORGI, but in two cases being J. GIORGI and MISS GIORGI. Three of the marks also included a figurative element. The registered marks were all related to goods in class 3, including perfumery products, cosmetics and hair and bath preparations. The First Board of Appeal decided that although the goods to which both parties' marks related were identical, there were sufficient differences between the marks themselves to exclude any likelihood of confusion. The Court of First Instance reached the same conclusion.

33. Mr Malynicz relies upon this Decision because of the obvious similarities between the arguments there and those involved in the present appeal. Like this appeal, it involved a case of identical goods in a similar category. The word GIORGIO was not descriptive and was similar, but not identical, to the word GIORGI in the registered marks. It was also the first word in the applied-for mark. The CFI held that none of this was sufficient to overcome what it described as the major differences between the two marks. The earlier marks contained significant figurative elements and an additional verbal element (J and MISS). The mark claimed also had the additional verbal element of BEVERLY HILLS. The marks were not therefore visually similar. In terms of aural similarity the CFI considered that the differences in the words in each mark and the number of syllables used was also significant, at least if one took the verbal element of each mark as a whole. A similar conclusion was reached in relation to conceptual similarity. Two paragraphs in the judgment are important:

"49. In that connection, it must be observed with regard to the mark claimed that the words `Beverly Hills', which refer to a particular geographical place with which the target public is familiar, apart from being non-descriptive of the goods in question, have a semantic importance which, combined with that of the man's first name Giorgio, produces a whole that is conceptually different from the earlier marks.

50 Secondly, it must be observed that, contrary to the applicant's contention, words such as `giorgi' and `giorgio' are not characteristic for perfumery and cosmetics. As the Board of Appeal observed, in view of the prevalence of real or assumed Italian names in the perfume market, and the fact that consumers are used to trade marks which contain common names, they will not assume that every time a particular common name occurs in a trade mark in conjunction with other elements, verbal or figurative, the goods in question all emanate from the same source (paragraph 17 of the contested decision)."

34. Mr Malynicz submits that the importance of this decision is that it demonstrates that marks have to be considered as a whole and that the Hearing Officer was wrong to give to the word COCO a prominence over the other words in the applied-for mark. But the need to consider the mark as a whole does not require the Court to give to each part of the mark the same weight or significance. The identification of the distinctive features of the mark is part of the function of the global appreciation which the authorities refer to and a highly relevant factor in determining the likelihood of confusion.
35. There are obvious similarities between the points at issue in GIORGIO BEVERLY HILLS and those in the present case, but the decision of the CFI was no more than an application of established principles to the facts of that case. They concluded that the verbal differences between the two marks were considerable, both because GIORGI and GIORGIO were not the same word and because BEVERLY HILLS played a significant part in the consumer's perception of the mark. They also considered that consumers were used to seeing real or assumed Italian names in the perfume market and would not assume that whenever a particular common name is used in a trade mark with other elements, the goods in question will emanate from the same source.
36. In the present case the word COCO is not a familiar or common name of that kind, but, on Chanel's evidence, one with a particular connection. It seems to me to be highly dangerous to rely on the assessment of the evidence in one particular decision to fashion what amount to principles to be applied in a different case. It will be a question of fact in each case whether the material before the Court or the Hearing Officer justifies the finding of a real likelihood of confusion.
37. Therefore, despite Mr Malynicz's attractive arguments, I propose to dismiss this appeal.