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Chanel Goes After 2 Person Chocolate Company Over The Number Five

from the six-seven-eight dept

Mon, Jun 29th 2015 9:05pm — Timothy Geigner

Chanel is a company that does fashion and perfume. I know this because I can't walk into a department store without walking past a bunch of glass cases that smell like someone boiled six billion flowers in a pot and then threw it on me, leaving me only to walk past the purses and handbag sections and laugh at the prices for tiny, tiny little bags. Chanel does not sell chocolate, unless you count naming some of the afore-mentioned perfumes and handbags with vaguely chocolate-y names. I know this because I did a Google search to make sure, and those are infallible. And, yet, for some reason, Chanel has decided to play trademark-goalie on a two-person chocolate shop operating in Australia.

Global fashion house Chanel has forced a small Australian chocolate maker to change its branding after it claimed a trademark infringement on its No.5 perfume. A letter from Chanel's lawyers was the last thing that Chocolate @ No.5 owner Alison Peck expected when she set up her company. After all, her business is a "two-man show," named after its address – 5 Main Street Hahndorf, a village in the Adelaide Hills – and makes chocolate, not perfume or haute couture. Her company would have most likely gone unnoticed by the multinational fashion giant had it not applied for a trademark registration.

At which point Chanel's lawyers fired off a threat letter. A letter, I'll concede, perhaps not entirely without merit. Here is the original branding of Chocolate @ No. 5 alongside the branding of a Chanel bottle of perfume.

As you can see, the style of the wording is somewhat similar. I still think I could argue something along the lines of, "What the hell are you people talking about, we do chocolate and the actual name of our business is all over our label", but there is enough of a similarity that claims of confusion don't come off as stupendously silly. Except that Peck has already agreed to change her branding to this:

Problem solved, right? Wrong.

Chanel wanted Ms Peck to only use the digit or word 'five' while her business was located at it current address. "It was implied if I ever moved I would have to change the name. That was when I realised I was being bullied. They don't own the number five. In the future do we go to school and go 'one, two, three, four, trademark protected, six?' It's just crazy. Never mind that China is churning out [counterfeit] Chanel at a rate of knots. I was not trying to pass of my chocolates as being Chanel No.5. That's just silly because it's chocolate."

It sounds to me like the legal team at Chanel is sort of using the descriptive clauses in reverse, suggesting her logo is not infringing if it describes the company address, but if that address changes it suddenly becomes infringing because it's no longer descriptive. If that is indeed the argument they're making, it's a very silly one, because, again, chocolate. Add to that the idea that the number five is getting this much attention in the trademark realm and you can imagine the frustration of a small shop just trying to make a living.

And it's because of those same economic interests that Peck is backing down and simply re-branding.

"I was happy to withdraw my application and change my logo because there is nothing wrong with a bit of freshness to a product. Our product is still the same."

This appears to have placated Chanel, which Ms Peck said had backed down on its other demands. But the fashion titan is "monitoring" her business.

For Christ's sake, Chanel, have a chocolate and calm the hell down.

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Filed Under: 5, australia, chocolate, likelihood of confusion, no. 5, number 5, perfume, trademark
Companies: chanel

25 Comments

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Sheogorath (profile), 29 Jun 2015 @ 9:10pm

[Chanel doesn't] own the number five. In the future do we go to school and go 'one, two, three, four, trademark protected, six?'
Well done, Alison Peck. You win the Internets!
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Anonymous Coward, 29 Jun 2015 @ 9:23pm

5 has been used already
Channel has already failed in protecting 5.

There is a peanuts character called 5 who even appeared in the background of a Charlie Brown Christmas.

There are a bunch of tv shows with a 5 in the title. My favorite being Babylon 5.

... This is the story of the last of the Babylon stations. The year is 2258. The name of the place is Babylon 5.
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ThatDevilTech (profile), 29 Jun 2015 @ 9:38pm

Can we....
Start shaming these idiotic companies that attack the "little guy" that has NOTHING to do with the industry of the bigger company? Public shaming might, I emphasize MIGHT, help them realize how stupid they are.
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Anonymous Coward, 29 Jun 2015 @ 9:53pm

Well, that is a product that I will never purchase at the perfume counter due to just how dumb they showed themselves to be. I will however let any other person who is trying it out, know that they smell awful and should consider a different perfume.
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Anonymous Coward, 29 Jun 2015 @ 10:02pm

I actually like the second design better!
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Anonymous Coward, 29 Jun 2015 @ 10:02pm

The change of address argument is bullshit because if the chocolate company built a reputable and distinguishable trademark around that name and got so big that they had to relocate, the trademark on Chocolate Number 5 would be a significant aspect of their identity regardless of where they're located. It's the opposite of being genericized.
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Anonymous Coward, 29 Jun 2015 @ 10:54pm

Hey Chanel, N°5 is alive!!
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Anonymous Coward, 30 Jun 2015 @ 12:01am

Someone should ask Chanel if they really want to be Nazis about this.
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Anonymous Coward, 30 Jun 2015 @ 12:21am

Re:
No disassemble!
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David, 30 Jun 2015 @ 12:31am

Re: Can we....
If you don't defend your trademark, you lose it. That's not paranoia but the law.

A stupid law, but there you go. "Defense" may mean writing up a simple agreement but you don't get to let the other party pay your lawyers then.
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David, 30 Jun 2015 @ 1:24am

Re:
With all due respect, National Socialism is pretty much the antithesis of globally acting corporate capitalism.

If you want to have a fitting insult for mindless obsessive pencil-pushing, just use "German". That aspect hasn't changed all that much, but it's quite a different political platform running on that hardware at the moment.
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Anonymous Coward, 30 Jun 2015 @ 2:30am

Re: Re:
With all due respect, National Socialism is pretty much the antithesis of globally acting corporate capitalism.

Authoritarian dictatorships are the same the world over, despite variations in the name of the political philosophy. They try to enslave the majority for the benefit of an elite.
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Pete Austin, 30 Jun 2015 @ 3:16am

Design #1 looks Extremely Similar to Chanel's
So I can totally see why Chanel complained.

Once negotiations had started, it's only natural that both sides would push a little bit. Storm meet teacup.
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Anonymous Coward, 30 Jun 2015 @ 3:54am

i bet this has only been done by Chanel to show it that it's 'on retainer' law firm is doing everything possible to protect it!

i dont know about anyone else but i think this is disgraceful behaviour by Chanel. i have to ask if it would have gone after a company like Cadburys or nestle, companies that have plenty of money and lawyers to match?
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Yes, I know I'm commenting anonymously, 30 Jun 2015 @ 4:02am

Typo?
Quote: "For Christ's sake, Chanel, have a chocolate and calm the hell down."

Don't you mean "for Coco's sake"?
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avideogameplayer, 30 Jun 2015 @ 4:11am

Chanel: '7 of 9, you're next...'
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Anonymous Coward, 30 Jun 2015 @ 5:28am

Uh! Oh! In my hometown there is an NBC affiliate who calls themselves:

Channel 5

They might be next on the list.
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Anonymous Coward, 30 Jun 2015 @ 6:26am

Great, now I have Mambo #5 stuck in my head. Thanks, you bastards!
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nasch (profile), 30 Jun 2015 @ 8:12am

Re: Re: Can we....
If you don't defend your trademark, you lose it.

That doesn't mean you have to defend it against people using a similar name in other industries. In US law at least, trademarks are specific to an industry, so unless Chanel's trademark application specified chocolate or candy of some sort, they would have no legal standing to go after a chocolate shop over the number 5. Is Australian or French law different? The logo might be a different story, but they agreed to change that.
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nasch (profile), 30 Jun 2015 @ 8:15am

Re:
In my hometown there is an NBC affiliate who calls themselves:

Channel 5

For a second there I thought it was called Chanel 5. Definitely confusing, Chanel should sue immediately for a billion squillion dollars.
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Anonymous Coward, 30 Jun 2015 @ 8:37am

Re: Re: Can we....
"If you don't defend your trademark, you lose it. That's not paranoia but the law."

Wasn't there a ruling that said the opposite? I kind of remember reading something like this somewhere but I can't recall where or when.
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Anonymous Coward, 30 Jun 2015 @ 9:00am

Re: 5 has been used already
Add 5gum to that list.
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Nastybutler77 (profile), 30 Jun 2015 @ 10:14am

Chanel No 5 is the perfume of rich old ladies. Once they're gone Chanel should see their sales plummet.
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Drawoc Suomynona (profile), 30 Jun 2015 @ 12:42pm

Re: Design #1 looks Extremely Similar to Chanel's
Yes, I can as well.

As with so many of these stories here, one should ask this question - would party #2 have selected the trademark they did if it were not for the fame of trademark #1. If the answer is no, then you have to wonder if company #2 is trading on the fame of company #1.

Looking at the first view it's pretty clear that the chocolate folks were playing off Channel mark. They probably thought it was cute. But that's risky, and even after they made changes they are now on Channel's radar.

The headline should really reflect that the issue is not with ownership of the number "5" but a slightly more distinct "No 5" where the "o" is of a certain style, the use of which conjures up Channel's brand.
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Mal S., 2 Jul 2015 @ 1:15pm

Chanel is not going far enough
Why hasn't Chanel sued the estate of the painter Charles Demuth yet? This painting has been hanging in the Metropolitan Museum for decades, and no one has even complained!

https://upload.wikimedia.org/wikipedia/commons/0/03/NY_Met_demuth_figure_5_gold.JPG
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