Chanel does not want you using its name. Its legal team does not care if it is your birth name (if you are using it in a commercial capacity); it does not like it when you use to term to describe another brand’s goods (“Chanel-like jacket” is a no, no) and still does not take kindly even if you change the spelling ever so slightly.
The latter point in the underlying theme the lawsuit that the Karl Lagerfeld-helmed house filed in federal court in Michigan late last month against a Michigan-based brand, Shanel Fashion. According to its suit, Chanel alleges that beginning in April 2015, the owners and operators of Shanel Fashion began using the allegedly infringing “Shanel” name in connection with the sale of “elegant and new” men’s fashion “with full knowledge of the tremendous fame and reputation of Chanel’s [own] trademark.”
Upon learning of the defendants’ company, which is registered in the state of Michigan as A&S Chanel, in June 2016 and “in an attempt to avoid litigation,” Chanel says that it “sent the defendants a cease and desist letter advising them of Chanel’s rights in the CHANEL trademark and requesting that they change their business name to one that did not include the word Chanel or a phonetic equivalent to the word Chanel.”
Paris-based Chanel asserts in its complaint that the defendants never responded to its initial letter and so, it “sent additional follow-up letters to the defendants,” and “in August 2017, the defendants indicated their willingness to settle this dispute amicable, but subsequently cease engaging in negotiations to resolve this dispute … as a result, Chanel has no option but to file a lawsuit.”
Why is Chanel going after a random business in Michigan, you ask? Well, in addition to the fact that Chanel alleges that its goods are available “in the very city where the defendants provide their store services,” Chanel – as the trademark holder – has the duty to police unauthorized uses of its mark in order to maintain both the uniqueness of the mark and also, to ensure that it continues to be one associated with high esteem and not counterfeits or cheaply-made products, for example.
In Chanel’s own words: “As a business owner and the owner of the world-renowned [CHANEL] trademark, which represents enormous goodwill and that is a significant asset of the company, [Chanel] must act to protect its famous name and trademark from infringement and dilution.”
(Note: Trademark dilution occurs when an entity uses a trademark that is sufficiently similar to a famous mark such that it harms consumer perception of the famous mark – or lessens the ability of a famous mark to identify and distinguish goods or services.)
Due to the similarity of the brand names, Chanel claims that the defendants are actively “capitalizing on the fame, recognition, and goodwill of Chanel’s trademark and creating initial interest confusion by creating a false impression that Chanel is the source of or somehow sponsors the defendants’’ goods.
As a result, Chanel has asked the court to order the defendants to immediately and permanently stop using the “Shanel” name and any similar names in connection with their business and to pay over “any gains, profits, property, and advantages derived” from its use of the “Shanel” name.
The lawsuit at hand comes on the heels of one that Chanel filed in 2014 – and subsequently won – against Merrillville, Indiana salon owner, Chanel Jones, who was using her first name in connection with her business. Chanel was also suspected of attempting to take action against the holder of the @Chanel Instagram handle, a 20-year old girl from Vancouver, Canada named Chanel Bonin, early last year, in furtherance of its efforts to ensure that its valuable trademarks are not being used in ways that would either confuse consumers or would diminish the value of the marks.
* The case is Chanel, Inc., v. A & S Chanel Fashion, LLC d/b/a/ A & S Shanel Fashion and Ahmed Ibrahim, 2:17-cv-13155-RHC-SDD (E.D. Mich.).