ARTICLE
14 December 2021

From "Chanel No. 5" To "5" & From Fragrance To Powder

MC
Marks & Clerk

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Marks & Clerk is one of the UK’s foremost firms of Patent and Trade Mark Attorneys. Our attorneys and solicitors are wired directly into the UK’s leading business and innovation economies. Alongside this we have offices in 9 international locations covering the EU, Canada and Asia, meaning we offer clients the best possible service locally, nationally and internationally.
Chanel has recently filed a US trade mark application for "5" covering cosmetics in Class 3.
UK Intellectual Property
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Chanel has recently filed a US trade mark application for "5" covering cosmetics  in Class 3. 

This is a good case study showing how a brand and its means of protection can evolve over time, both in terms of sign and in terms of goods. 

Chanel first obtained a US registration for "No.5" covering perfume  and toilet water  in 1926. The coverage of the mark has expanded over time, including face powder in 1927; toilet soap in 1942; lipstick  in 1974; bath oil, bath spray, body lotion and milk bath in 1978; and cosmetics  in 2018.  Some of these goods have since then been deleted from the registrations, most likely due to the use requirement in the USA.

In addition to expanding the scope of its portfolio, Chanel has sought to obtain protection for a range of different marks related to its famous No. 5 brand.  In 1960, the luxury house obtained a US registration for "CHANEL No. 5".  It then obtained "CHANNEL 5" in the UK in 1983, possibly a defensive registration to enforce against ingenious copycats. In 1989, registration was obtained in the US for "5" in respect of perfumes, soaps and creams. The most recent application from November 2021 is also for the numeral "5" alone, but covers cosmetics.  As accompanying specimen of use, Chanel submitted a photo of their eyeshadow palette which reproduces "5" on its packaging and is also engraved on the powder disc.

Together with the house brand, perfume bottle shape and label, it's amazing the number of different rights one product can disguise!

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