30 August 2018
The CJEU has delivered its judgment in the long running dispute between Mr Kenzo Tsujimoto and Kenzo, the French luxury house, over registration of the name Kenzo as a trade mark.
In January 2008, Mr Tsujimoto filed an international registration designating the EU for the word mark KENZO ESTATE. The goods in which the registration was sought were 'Wine; for alcoholic beverages of fruit; western liquors (in general)' in Class 33. Kenzo opposed the registration based on an earlier registration of the word mark KENZO, registered in 2001 in respect of goods in classes 3, 18 and 25 on the grounds the mark KENZO had a reputation and use of Kenzo Estates would take unfair advantage of it (Article 8(5) of Regulation No. 207/2009).
The Opposition Division (''OD'') rejected the opposition and Kenzo appealed. The Second Board of Appeal of the EUIPO (''Board of Appeal'') upheld the appeal, considering that all the conditions of Article 8((5) had been satisfied. The General Court ("GC") rejected Mr Tsujimoto's appeal.
A subsequent application was filed by Mr Tsujimoto for the same word mark. The goods in which the registration was sought in the second application were in classes 29, 30, 31, 35, 41 and 43. Once more, Kenzo filed a notice of opposition which was rejected by the OD, and they appealed to the Board of Appeal. The Board of Appeal upheld the appeal in respect of goods and services in classes 35, 41 and 42 but not goods in 29 to 31, where the goods were not regarded as luxury goods and for which Kenzo failed to establish that unfair advantage would be taken of the reputation of the KENZO mark.
Mr Tsujimoto appealed the decision of the Board of Appeal. Again, the GC rejected his appeal. The present judgment concerns a combined appeal by Mr Tsujimoto of both previous GC decisions.
Mr Tsujimoto alleged that the GC erred in law when making the assessment under Article 8(5) of the 2009 Regulation of the similarity of the marks, the reputation of the earlier mark and unfair advantage. In particular, it was alleged that the GC had not undertaken the necessary comparison of the marks. The CJEU rejected these arguments and held that the GC had conducted the correct assessment and was entitled to make the conclusions it did.
Further, Mr Tsujimoto alleged that the GC failed to take sufficient account of the fact that the 'kenzo' element was his forename. The CJEU found the argument to be irrelevant to the issue of whether the use of that term constitutes due cause within the meaning of Article 8(5).
The CJEU stressed that Regulation No. 207/2009 "does not confer any unconditional right to register a name or a forename as an EU trade mark." and that Article 8(5) must be considered in its entirety and with regard to the general objective of the Regulation. This objective is to strike a balance between the interests of the proprietor of a trade mark and the interests of a third party in using, in the course of trade, such a sign. In short, the use of one's own name, where it is also an element of an earlier mark, will not, in itself, be capable of constituting due cause.
Case Ref: C-85/16 and C-86/16