Design houses are working overtime to protect their famous names. You may recall that in December a District Court in Indiana ruled in favor of Chanel in its lawsuit against salon owner, Chanel Jones. The Paris-based design house alleged that Jones’ Merrillville, Indiana spa and beauty salon, entitled Chanel’s Salon, was infringing at least nine of its federally registered trademarks and was benefiting from its seeming association with the established reputation of the fashion company. Now, Christian Dior appears to be in the early stages of a similar action involving Sirous Dior, an Auckland-based photographer, who filed to federally register the name of his company, Dior Fine Art in New Zealand, with the Intellectual Property Office of New Zealand last year.
According to the New Zealand Herald, the 34-year-old photographer was “stunned to receive a ‘heavy breathing’ letter two weeks ago from the Australian lawyers for Parfums Christian Dior ordering him to stop using his name for his business.” In its letter, the Paris-based design house, which opened a flagship store in Auckland in December, claims the photographer’s pending trademark application is a bit too close to its own. Dior has rights in an array of federally registered trademarks in New Zealand, including Dior, Miss Dior, Christian Dior, and Dior Homme, among others, in classes that extend to clothing, leather goods, cosmetics, jewelry, and fabrics. And as a result, Dior, the design house, wants Dior, the photographer, to withdraw his trademark applications.
Sirous Dior filed to register his marks, “Sirious Dior” and “Dior Fine Art” in class 41 (which extends to the “Display of works of art (exhibitions, shows, museums, galleries); photography; publishing of printed matter; publishing services; advisory services relating to publishing; book publishing; desk top publishing; electronic desktop publishing; magazine publishing in the nature of photography; provision of information relating to publishing in relation to photography”) and class 16 for “Paper goods and printed matter” in September 2014. Dior appears to be opposing each of the applications.
If the Chanel case is anything to go by, even though its venue is quite different (think: the New Zealand IP Office versus a federal court in Indiana), Dior has the upper hand here. As we told you in connection with the Chanel case, there is an exception to the ban on personal name trademarks: If the name at issue (Chanel, the design house, in that case) has acquired secondary meaning (aka the public associated the name “Chanel” with the design house and its garments and accessories), then it may be federally registered. Given that Chanel is one of the most famous design houses in the world, it would be inaccurate to say that the brand name has not acquired secondary meaning.
In fact, as Chanel’s complaint correctly states, “As recently as May 2014, the Trademark Trial and Appeal Board of the [USPTO] held that the CHANEL mark ‘enjoys widespread recognition among the general public and is a ‘household name’ synonymous with high fashion and style . . . and is therefore famous for dilution purposes.’” This kills two birds with one stone; it establishes that the Chanel mark is famous enough to warrant valid trademark protection and also establishes that any unauthorized usage of that name is damaging to its brand (aka dilutes its trademarks).
Under this same reasoning, Dior will likely prevail.