A behind-the-scenes back-and-forth between Chanel and Hermès over a trademark that the former is using on a makeup palette and the latter on a fragrance has come to a quiet end. According to a filing with the U.S. Patent and Trademark Office (“USPTO”)’s Trademark Trial and Appeal Board (“TTAB”), Chanel has agreed to pull the plug on an until-recently-pending trademark application for registration for “Voyage De Chanel,” a mark that Hermès took issue with this spring, claiming that it is simply too similar to the trademark-protected name of its “Voyage d’hermes” fragrance.
According to an opposition to registration filed with the TTAB in April (on the heels of Chanel filing a trademark application for “Voyage De Chanel” in October 2018 and thereafter, commencing its sale of limited-edition complexion palettes under that name), counsel for Hermès argued that the USPTO should not hand Chanel a registration for the mark. Chanel’s mark, Hermès’ counsel asserted in its opposition, is “visually, phonetically and conceptually similar” to the “Voyage d’hermes” that Hermès has been using for nearly a decade, and for which it has maintained a registration with the USPTO since January 2010.
(Opposition is a relatively routine process by which any party that believes it may be damaged by the registration of a trademark may initiate a proceeding with the TTAB and make a case for why the mark should not be registered with the USPTO.)
Due to the similarities of the two marks and the similar types of products on which they are used, Hermès argued that Chanel’s mark “creates a similar overall commercial impression” as the its mark, and “is likely to create confusion, mistake or deception, in that relevant consumers are likely to believe that [Chanel’s] goods are sponsored, licensed or approved by [Hermes] or that [Chanel] is in some manner connected or associated with [Hermès].”
In its June response to Hermès’ opposition, Chanel’s counsel denied a number of Hermès’ assertions, including that the two brands’ “Voyage” trademarks are “highly similar,” that they are “identical in sound and virtually identical in appearance,” that the “parties’ goods are sold in the same or similar channels of trade” and that they “target the same or similar consumers.” With that in mind, Chanel further denied that its mark is likely to cause consumer amongst consumers, and so, Hermès’ opposition should be dismissed and that its mark should proceed to registration.
As of this week, in a joint stipulation, the parties told the TTAB that Chanel is withdrawing its application for the “Voyage De Chanel” mark without prejudice (thereby, leaving the door open to file a similar application in the future), and as a result, Hermès is dropping its opposition also without prejudice. The joint filing comes almost exactly three months after Hermès asked the TTAB to suspend the opposition proceedings for 90 days, stating that the two Paris-based luxury brands were “actively engaged in negotiations for the settlement of this matter” and intended to “continue their settlement efforts.”
While those efforts prompted Chanel to drop its application and Hermès to put an end to its opposition, it appears as though Chanel’s ability to continue to sell its Voyage De Chanel palette has not been impacted. The privately-owned fashion brand, which reported its annual revenues for the first time ever in 2018, does not break down its yearly sales by division. However, it is understood that its $11.1 billion in annual sales (as of the 2018 fiscal year) is generated in no small part by “a big make-up and fragrance business which some rivals lack,” per Reuters.
Publicly-traded Hermes does, in fact, reveal its revenue breakdown by product category with perfumes generating nearly $350 million in 2018, thereby, making up just 5 percent of its annual sales of $6.65 billion. Unsurprisingly, a whopping 50 percent of the brand’s revenues come from leather goods, followed by ready-to-wear at 22 percent.