In a recent decision, the Trademarks Administrative Commission ruled on a case regarding the infringement of a famous trade mark. In particular the applicant filed an application for the trademark Coco & Silk and device, covering goods in classes 14, 18 and 25. The opposing party, Chanel SARL, filed an opposition against the acceptance of this trade mark claiming infringement of its famous trade mark Coco covering goods in classes 14, 18 and 25. The applicant, in defence, claimed that the distinctiveness of its trade mark lies on the combination of the two words, Coco and Silk, as well as on the device contained in the opposed trade mark. To support its argument, it provided evidence that the word Coco forms part of several composite national trade marks belonging to third parties, covering similar goods in classes 14, 18 and 25, all of which co-exist. As claimed by the applicant, the existence of these trademarks proves that the word Coco is of weak distinctiveness.
The Commission, taking into consideration the evidence submitted by the opposition party, acknowledged the well-known status of the Coco trade marks, on the basis of which the word Coco has acquired a strong distinctive character. The Commission further based its ruling on the CJEU's established case law on likelihood of confusion, providing that the comparison of trade marks must be made by examining each of the marks in question as a whole; this does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components. The decision also affirmed that "there may be a likelihood of confusion on the part of the public where the contested sign is composed by juxtaposing the company name of another party and a registered mark which has normal distinctiveness and which, without alone determining the overall impression conveyed by the composite sign, still has an independent distinctive role therein".
This is a paradigm case showing that the Greek Trade Mark Office is already in line with the CJEU's established case law, which safeguards effective protection to trade marks with a well-known status.
Maria Kilimiris |
Patrinos & Kilimiris
7, Hatziyianni Mexi Str.
GR-11528 Athens
Greece
Tel: +30210 7222906, 7222050
Fax: +30210 7222889
