United Kingdom Trademark Office to Chanel: You Can’t Trademark That

Law

United Kingdom Trademark Office to Chanel: You Can’t Trademark That

Chanel has been barred from registering the word “JERSEY” as a trademark. The Paris-based design house filed a trademark application for registration with the United Kingdom Intellectual Property Office in 2011 for “JERSEY,” which would extend to Class 3 ...

June 5, 2013 - By TFL

United Kingdom Trademark Office to Chanel: You Can’t Trademark That

Case Documentation

United Kingdom Trademark Office to Chanel: You Can’t Trademark That

Chanel has been barred from registering the word “JERSEY” as a trademark. The Paris-based design house filed a trademark application for registration with the United Kingdom Intellectual Property Office in 2011 for “JERSEY,” which would extend to Class 3 (cosmetics, perfumes, nail polishes, etc.), and refers to a line of cosmetics (namely) a Chanel fragrance marketed under the name. Turns out, Jersey (a British island off the coast of Normandy, France) is what is standing between Chanel and the trademark.

The UK Intellectual Property Office’s Judi Pike, who decided the case, backed the Jersey (the Island) and rejected the application. Pike held that JERSEY “consists exclusively of a sign or indication of the geographical origin of the category of goods.” In addition to losing the case, Chanel has to pay  the States of Jersey $3370 to cover costs and a small award stemming from evidence filing. Since the decision, Chanel has filed an application for “JERSEY CHANEL,” which was published for opposition last week.

According to the BBC, Chanel’s claim was rejected by the UK Intellectual Property Office following opposition from the government of Jersey – which asserted that the trademark would imply that the fragrance was made on the island. The fragrance, part of the Les Exclusifs de Chanel collection, is manufactured in France. 

“We are not objecting to the name being used – it will be beneficial to the island. What we object to is the use of the name Jersey registered as a trademark,” said Darren Scott, from the island’s Economic Development Department.

In response, Chanel issued a statement, saying: “Like all major brands, Chanel routinely registers as trademarks the names of its products in order to protect against copies. Chanel applied to register the name Jersey as a trademark for fragrance in numerous countries around the world. The name Jersey was chosen as a tribute to Coco Chanel’s revolutionary use of jersey fabric. Chanel never wanted to prevent others from using ‘Jersey’ on products to indicate they were made in Jersey or contain ingredients originating from Jersey.”

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