Fragrance company Chanel has lost its bid to register a UK trademark for the word ‘JERSEY’ in class 3, after the channel island of the same name objected.
Chanel filed a trademark application in 2011 for ‘JERSEY’ covering “Preparations for application to or care of the skin, scalp, hair or nails; soaps; perfumes; essential oils; cosmetics; non-medicated toilet preparations”.
The company markets a fragrance under the name, which Martin Hamilton, Chanel company secretary, told the UK Intellectual Property Office (IPO) was inspired by its founder Coco Chanel. She had taken the ‘jersey’ fabric and applied it to high fashion, Hamilton said; the ‘Jersey’ perfume had similarly taken an ordinary fragrance, lavender, and made something special out of it.
But Darren Scott, representing the States of Jersey, argued using section 3 of the Trade Marks Act 1994 that the application should be rejected because Jersey may serve to designate the geographical origin of a product, and that the registration would be likely to deceive consumers about the origin of the goods.
Judi Pike, who decided the case at the IPO, backed the opponent and rejected the application, finding that ‘JERSEY’ “consists exclusively of a sign or indication of the geographical origin of the category of goods”. She did not rule on the deceptiveness claim.
Chanel must also pay the States of Jersey £2,200 to cover costs and a small award for the opponent having to file evidence in response to late evidence from Chanel.
Ian Wood, partner at Charles Russell LLP, said: “Unsurprisingly, the IPO found that there was no evidence that the name ‘Jersey’ is currently associated with perfumes but that it was reasonable to assume that an association between the geographical name and the goods may be established in the future in the minds of consumers.”
Chris McLeod, director of trademarks at Squire Sanders (UK) LLP and first vice president of the Institute of Trade Mark Attorneys, said it was “interesting that the opponent went apparently exclusively on section 3, so they appeared not to use a passing off argument, which may have been as compelling, particularly when you read into the detail of the case”.
He added: “There may have been some merit in going on broader grounds – if there was an appeal, there would be no prospect of introducing passing off into the proceedings.”
Since the decision, Chanel has filed an application for ‘JERSEY CHANEL’, which was published last week.
McLeod said that this looks like Chanel’s “fall-back position”.
“The problem is that if someone else did start using Jersey, there’s an argument that it wouldn’t infringe Jersey Chanel, but then, there’s an argument that it would,” he added.
It is not the first time that a fragrance has fallen foul of geographical interests. In 1993, Yves Saint Laurent created a perfume called ‘Champagne’, the name of which was later changed to ‘Yvresse’ after opposition from French winemakers.
This article was first published on 04 June 2013 in World IP Review
Chanel, Jersey, UKIPO, perfume