Kabushiki Kaisha Chandeal v Chantelle

This decision concerns an opposition by Chantelle, a French company, to the registration of the trade mark application number 603571, CHANDEAL, in the name of Kabushiki Kaisha Chandeal, a Japanese corporation. The opposition was brought before a delegate of the Registrar of Trade Marks, applying the transitional provisions of the *Trade Marks Act 1995* which stipulated that the *Trade Marks Act 1955* governed the proceedings. The applicant sought registration for CHANDEAL in respect of all goods in class 25, including various items of clothing. Chantelle opposed this application on the grounds that the proposed mark was substantially identical with or deceptively similar to its two registered trade marks, numbers 167043 and 623238, both of which comprise the word "chantelle" and are registered for articles of clothing, including underclothing and swimwear.

The primary legal issue before the delegate was whether the trade mark application CHANDEAL was prohibited from registration under section 33 of the *Trade Marks Act 1955* due to its substantial identity or deceptive similarity to Chantelle's registered trade marks. Specifically, the delegate had to determine if the word "chandeal" was substantially identical to or deceptively similar to the word "chantelle" in relation to the specified goods. The delegate also considered the relevance of the applicant's arguments regarding the commonality of the prefix "chan-" in trade marks within class 25, the distinction between an invented word and a known name, and the foreign meaning of "chantelle."

The delegate reasoned that while the marks were not substantially identical upon a side-by-side comparison, deceptive similarity required a broader inquiry into the impression produced on potential customers, considering imperfect recollection and the ordinary behaviour of consumers. The delegate found that the applicant had not established that the prefix "chan-" had a trade significance in the clothing market, nor that the meaning of "chantelle" as a given name or its purported foreign meaning would be sufficiently known to prevent confusion. The delegate also rejected the argument that purchasers of expensive goods exercise such care as to avoid confusion, as the application goods were not confined to luxury items. Applying the principles of deceptive similarity, the delegate concluded that the verbal similarities between "chandeal" and "chantelle," particularly in pronunciation and the potential for imperfect recollection, were sufficient to cause confusion and deception among the purchasing public.

Consequently, the delegate found that CHANDEAL was deceptively similar to Chantelle's registered trade mark 167043. Accordingly, the opposition was upheld, and trade mark application number 603571 was refused.