Australian Chocolate maker Chocolate@ No 5 has decided to redesign its logo after Chanel's lawyers opposed the registration at the Australian Intellectual Property Office for the following logo:

 

 

Photos: The former Chocolate @ No 5 logo and Nº 5 Chanel Perfume 

The logo in disagreement is Nº 5 also used by Chanel in its famous perfume Nº 5. There is no doubt that in both cases, Nº 5 is visually identical.

Chanel’s Nº 5 perfume was created in 1921. Among perfume samples created by Perfumer Ernest Beaux, Coco Chanel chose sample nº 5. By that time, Coco Chanel stated that “I present my dress collections on the fifth of May, the fifth month of the year, and so we will let this sample number five keep the name it has already, it will bring good luck”.[i]

Since then, and especially because of effective marketing campaigns over the years, for a perfumer consumer, Nº 5 is instantly an object of a symbolic association between Chanel and one of its perfumes.

In turn, the Australian Chocolate maker business uses the number 5 because the Cholotaterie and Lounge is located at number five of Hahndorf’s Main Street in Adelaide Hills. 

For a trademark to exist, a combination of words and numbers must not be identical or similar to an existing trademark. A trademark shows the association between a trader and its goods or services.

In this case, Chanel was the first commercial user of Nº 5. However, Chanel does not have a monopoly over the number 5. Trademarks are not guaranteed to protect closed monopolies that restrain the freedom of private third party initiatives.  Chanel cannot prevent others from associating number 5 with   their distinctive goods and services.

Nevertheless, it is expressly mentioned in a statement made by a spokesperson from Chanel and published by Vogue UK that the French brand did not have any intention of preventing Alison Peck, the owner of the chocolate business, from registering the word mark Chocolate @ N°5 for chocolate drinks and various chocolate food products - biscuits, confectionery etc… According to this statement: 

"Chanel is always mindful of the need to balance the protection of its trade mark rights with the rights of others to trade freely.  That is why Chanel did not object to Ms Peck's application to register the word mark: Chocolate @ N°5 for chocolate drinks and various chocolate food products - biscuits, confectionery etc.  Chanel's main concern was that Ms Peck was also using and had applied to register as a trade mark the No.5 label in a strikingly similar black and white font for perfumed candles.  Chanel only asked Ms Peck to withdraw the label applications and that over time she reduce the font size of No.5 on her labelling. Ms Peck agreed. She is therefore free to register Chocolate @ N°5.  Chanel has tried to be conciliatory, looking at all times for a mutually acceptable solution and regrets that Ms Peck felt the need to re-brand her business, which was not our intention." [ii]

 

Photos: The new Chocolate @ No 5 logo and a Image from Chanel’s Advertising Campaign for its Nº 5 Perfume. 

 

[i] Tilar J. Mazzeo (2010) The Secret of Chanel No. 5: The Intimate History of the World’s Most Famous Perfume. Harper.   

[ii] Vogue UK, http://www.vogue.co.uk/news/2015/07/02/chanel-no-5-chocolate-company-cease-and-desist