THE FASHION LAW EXCLUSIVE - On the heels of the lawsuit it won against Chanel Jones, a Merrillville, Indiana salon owner, who was using her first name in connection with her business, it seems Chanel may have decided to take on another similarly-named individual. This time the hypothetical battle was on Instagram, though, and not in a courtroom. The account at issue: @Chanel, which did not belong the Karl Lagerfeld-helmed house, but instead, to a 20-year old girl from Vancouver, Canada named Chanel Bonin. The account, which has been up and running since 2011, and boasted nearly 40,000 followers, was shut down this past week.
As for what exactly went down, it is unclear. What we do know is this: Chanel arrived rather late on the Instagram scene. The Paris-based design house posted its first photo on Instagram in October 2014 (quite late in comparison to most other fashion brands) to its account, @chanelofficial, and now boasts upwards of 9 million followers. We can also say for certain that Chanel has not filed a lawsuit against Bonin in connection with the Instagram account. However, that does not mean it did not initiate intellectual property (“IP”) infringement proceedings with Instagram for trademark infringement.
The key inquiry in any trademark infringement action is whether the allegedly infringing use (Bonin’s use of the word Chanel in this case) results in a likelihood of confusion with the federally registered trademark (Chanel’s here). Such confusion may come in the form consumers believing that the plaintiff is “sponsoring, endorsing, or somehow affiliated with the defendant or its products.” In short, this means that there is a likelihood of confusion if consumers encountering one trademark are likely to confuse it with a different trademark or think that the two parties are connected in some way when they are not.
A number of Bonin’s posts suggested that consumers could, in fact, be confused. Take, for instance, the hairclip emblazoned with the word “CHANEL” that Bonin posted. Or another, which consisted of a drawing of a girl wearing a shirt with Chanel’s double “C’s” logo on it. Finally, comments on a number of photos, such as those referring to Bonin’s account as “the Chanel account,” seem to demonstrate that there is at least some confusion as to the ownership of the account or that some people believe that Bonin’s account is in some way affiliated with Chanel.
From the Chanel’s Salon case, we learned that the design house does not take kindly to others using its name in commerce. According to its complaint in that case, there is “no absolute right to exploit one’s given name commercially if such use is inconsistent with Chanel’s rights.” Our friends over at Lexology interpreted Chanel’s win in that case as follows: "It is a reminder of the well-settled fact that an individual does not have an unfettered right to use their personal name for commercial purposes. There are a number of cases on this issue over the years involving well-known trademarks."
Interestingly, we reached out to Bonin a couple of weeks ago after coming across her Instagram account in a search for the official Chanel account. Given Chanel’s history of initiating legal action in connection with its various intellectual property rights (whether it be the Chanel moniker or their No. 5 mark), it was shocking that Bonin was operating her account without interference from the design house. Bonin responded to our request for comment, saying: “Under the advice of my lawyer, I've been advised not to do this interview.” With this in mind, it does not seem like a stretch to assume that the two parties had likely been in talks to some extent regarding the account.
As for whether the house paid Bonin to transfer the account to it, that seems unlikely considering that the account’s status is “removed” and not merely wiped clean. Moreover, given such status, it seems that Instagram has acted upon an IP filing by Chanel contesting the account and disabled the account. We frankly wouldn’t be surprised by either.
UPDATE (1/6/2016): She's back. Bonin's Instagram account has been reactived as of Wednesday. The 20-year old posted a photo of herself along with the caption: "I'm back!! My account was completely disabled for 2 weeks, I don't know what happened and I thought I lost everything, but I just got it all back and I'm so relieved."
Interestingly, the page seems to have been restored intact, minus three important exceptions - two of which bore the Paris-based design house's trademarks - the photo with the Chanel hair clip (pictured, above) and the photo that consisted of a drawing of a girl wearing a shirt with Chanel’s double “C’s” logo on it. These developments certainly suggest that Chanel filed an IP infringement action with Instagram, resulting in the temporary disabling of Bonin's account and the ultimate removal of the two images.
UPDATE 2 (1/7/2016): Since having her account restored, Bonin provided the following update after being replaced with the username @chanel827372. According to sources, the account that replaced hers, 1ceman, is a serial hacker. Bonnie subsequently reached out to TFL, saying: "My account was just hacked and I am extremely upset. I was fished in an email that appeared to be from instagram, and when I clicked the link in the email, it changed my instagram handle from @chanel to @chanel827372."
UPDATE 3 (1/8/2016): Following an alleged hacking, Bonin has her account back, and 400 new followers.
If we know Chanel (the Paris-Based design house, not the 20-year old girl), this war is far from over. So, stay tuned ...