Chanel Limited v Emily Greco

Chanel Limited (the Opponent) sought to oppose the registration of a trade mark by Emily Greco (the Applicant). The dispute concerned whether the Applicant's trade mark, in relation to candles, was deceptively similar to the Opponent's registered trade marks, specifically COCO, for goods including perfumes, soaps, and cosmetics. The matter was before the court for determination.

The court was required to determine two primary legal issues. Firstly, whether the goods for which the Applicant sought registration (candles) were the same as, or of the same description as, the goods covered by the Opponent's registered trade marks, namely perfumes, soaps, and cosmetics. Secondly, if the goods were not the same, whether the Applicant's trade mark was deceptively similar to the Opponent's registered trade marks under section 44 of the relevant Act.

The court found that the goods claimed in Class 3 for the Applicant's trade mark, such as creams for corporeal use, were the same as the goods claimed in Class 3 for the Opponent's registered trade marks, which included toilet preparations and cosmetics. For goods in Class 4, specifically scented candles, the court considered whether they were of the same description as the Opponent's registered goods of perfumes, essential oils, and soaps. Applying a practical judgment based on the nature of the goods, their uses, and trade channels, the court considered evidence demonstrating that traders often applied their trade marks to both fragrances and candles, that well-established fragrances were used in scented candles, and that retailers commonly stocked both product lines. The court also noted evidence showing that candle making processes were similar to soap making and that fragrances or essential oils were often incorporated into scented candles, with candles sometimes used as a heat source for diffusing essential oils.