Chanel has failed in its application to trademark the word ‘Jersey’ for its lavender scented perfume of the same name.
The Channel Island of Jersey argued that the name would incorrectly imply a certain geographical origin to the product which could mislead consumers.
Background to Jersey Perfume and the Trademark Application
Chanel filed a class 3 trademark application in 2011 for ‘JERSEY’. The class 3 application covered, “preparations for application to or care of the skin, scalp, hair or nails; soaps; perfumes; essential oils; cosmetics; non-medicated toilet preparations”.
Chanel had created a fragrance marketed and sold as Jersey, which was said to be inspired by the jersey fabric made popular by its founder Coco Chanel rather than the Channel Island.
According to Martin Hamilton, a Chanel representative, Coco Chanel has taken something ordinary, the fragrance of lavender, and created something special; just as she had once taken the ‘jersey’ fabric into the world of high fashion.
Jersey as a Trademark and Geographical Origin
Darren Scott from the island of Jersey’s Economic Development Department represented the island at the hearing. The territory objected to the use of the single word ‘Jersey’ as a trademark.
Mr Scott argued that the application should be rejected under section 3 of the Trade Marks Act 1994 because the word Jersey could be used to indicate a product’s geographical origin. Registering Jersey as a trademark would therefore be likely to deceive consumers about the origin of those goods.
Ultimately the decision of the UK Intellectual Property Office (IPO) was to reject Chanel’s application because the use of a capital J in Jersey linked the product to the island. In coming to that conclusion, the IPO focused on the public interest in keeping the name Jersey available to show the geographical origin of goods rather than the potential to deceive consumers.
Chanel was ordered to pay the State of Jersey costs of £2,200.
Jersey senator Alan Maclean made clear that the case had been about ownership of the name Jersey but that the aim had never been to stop Chanel using the name. “It is not about stopping Chanel using the name. It is fantastic to have a perfume named Jersey.” The aim was simply to safeguard the use of the name Jersey for use by local producers of goods.
Although the decision did not come as a surprise, there were some questions over the narrow basis of the argument raised by the State of Jersey. In particular, no argument was raised in respect of passing off.
Following the failed trademark application, Chanel has filed a new trademark application for ‘JERSEY CHANEL’.
If you would like information about registering trademarks or need assistance from specialist trade mark solicitors, please contact James Crichton via e-mail firstname.lastname@example.org or by telephone on 0207 611 4848.