In a decision dated 14 April 2025, the Opposition Division of the European Union Intellectual Property Office (EUIPO) upheld Chanel’s opposition against the European Union trade mark application for COCOSTEAM. The decision provides a clear application of the fundamental principles governing the assessment of likelihood of confusion under Article 8(1)(b) EUTMR, particularly where an earlier short mark is reproduced in a later sign.

Background

On 5 June 2024, Chanel filed an opposition against the E.U trade mark application for the word mark COCOSTEAM, covering various cosmetic and personal care products in Class 3. The opposition was based on Chanel’s earlier French trade mark registration for the word mark COCO.

The ground invoked was Article 8(1)(b) EUTMR, which prohibits registration where there exists a likelihood of confusion on the part of the public, including the likelihood of association with an earlier mark.

Relevant Public and Goods at Issue

The contested goods, including beauty masks, perfumes, cosmetics and shampoos, were found to be identical to those covered by Chanel’s earlier registration. This finding was based on either direct overlap or the inclusion of the contested goods within the broader categories of the earlier mark’s specification.

The relevant public was identified as the general consumer within the European Union, possessing an average degree of attention when purchasing cosmetic and personal care products.

Analysing the Signs: Visual, Aural, and Conceptual Aspects

Both the earlier mark ‘COCO’ and the contested sign ‘COCOSTEAM’ are word marks.

Visually and aurally, the marks coincide in the element COCO, which appears at the beginning of the contested sign. The element STEAM was found to have no meaningful association with the goods for a substantial part of the French-speaking public and therefore did not significantly alter the overall impression created by the shared element.

Conceptually, the element COCO could evoke either the notion of coconut or refer to the nickname of Gabrielle Coco Chanel. The Opposition Division focussed its assessment on the perception linked to Coco Chanel, given her well-established renown in France and the absence of direct relevance of her name to the goods at issue.

The principle that consumers tend to focus on the beginning of marks further strengthened the finding of similarity. The initial position of COCO in the contested sign increased the likelihood that it would be perceived independently, thereby increasing the risk of confusion.

Distinctiveness of the Earlier Mark

Although Chanel submitted evidence claiming reputation and extensive use of the earlier mark, the Opposition Division found it unnecessary to assess enhanced distinctiveness. It proceeded on the basis that COCO enjoyed a normal degree of inherent distinctiveness in relation to the goods concerned.

Global Assessment and Likelihood of Confusion

The global assessment confirmed the existence of a likelihood of confusion. The decision reiterated that likelihood of confusion covers not only cases where consumers may directly confuse the marks but also where they might assume an economic connection between the undertakings.

The reproduction of the earlier mark COCO in the contested sign COCOSTEAM, combined with the identity of the goods and the normal inherent distinctiveness of COCO, was sufficient to conclude that the relevant public would likely believe that the goods originated from the same or linked entities.

Accordingly, the Opposition Division upheld the opposition in its entirety and rejected the application for COCOSTEAM.

The applicant, Jinhua Xingyu Biotechnology Co., Ltd, was ordered to bear the costs of the opposition proceedings, fixed at EUR 320, corresponding to the opposition fee.

Conclusion

This decision highlights the strength of earlier short marks when they are wholly incorporated into later signs without losing their distinctiveness. It also demonstrates the careful balancing exercise undertaken by the EUIPO when assessing likelihood of confusion, taking into account consumer perception, the identity of goods, and the overall presentation of the marks.

The case also shows why applicants must carefully consider the risk of confusion when earlier marks are used in new applications, especially in industries like cosmetics, where brand identity and reputation play a key role in consumer decisions.

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