According to reports, Chanel has forced a small Australian chocolate maker to change its branding after the Paris-based design house sent a strongly-worded cease and desist letter, citing trademark infringement of its iconic No.5 perfume’s branding. Chocolate @ No.5 owner Alison Peck describes her Hahndorf-company as a “two-man show” that exclusively manufactures chocolate. Problems reportedly arose for Peck when she filed to register her “Chocolate @ No.5” trademark with the Australian Intellectual Property Office. In the last week of the opposition period with the trademark office, Chanel’s lawyers filed an action to oppose Peck’s mark and sent her a letter demanding she withdraw her registration, ditch her logo, and not use the digit or the word “five” in her business name.
Peck agreed to the first two requests, but was not as eager to comply with the third. As it turns out, Peck named her chocolate shop, namely, the numerical element, after the shop’s address: 5 Main Street. As such, the fashion house’s request that Peck stop her use of the numerical digit and the word “five” is one thing Peck has not taken lightly. She told the Syndey Morning Herald: “That was when I realised I was being bullied. They don’t own the number five.” She continued on to state: “Never mind that China is churning out [counterfeit] Chanel at a rate of knots. I was not trying to pass of my chocolates as being Chanel No.5. That’s just silly because it’s chocolate.”
Peck said she has spent a “few thousand dollars” on her trademark registration, but ultimately decided to withdraw it to avoid legal action with the design house. She has also updated her logo, which now consists of the word chocolate with a larger number five, replacing the letter ‘O’. Peck said withdrawing the application seems to have placated Chanel, but she noted that the fashion titan is “monitoring” her business.
This is not the first action of this type that the notoriously protective Chanel (or other high fashion brands, for that matter) has filed in the recent past. You may recall that the house filed (and won) a lawsuit against Indiana-based salon owner, Chanel Jones in connection with her business, Chanel’s Salon. More recently, Paris-based design house Dior filed a trademark lawsuit against Sirous Dior, an Auckland-based photographer, who filed to federally register the name of his company, Dior Fine Art in New Zealand, with the Intellectual Property Office of New Zealand last year.
Given the fact that trademark owners bear the sole duty to police their trademarks (ones that are extremely valuable for luxury brands, in particular) from unauthorized use (and the genericization that may result from excessive unauthorized use), these lawsuits make some sense, even if they tend to seem a bit unfair given the difference in size (and resources) available to the parties at issue.
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