Japanese national, Kenzo Tsujimoto, a trader in high-end wines and cognacs, applied for the word mark “KENZO” in respect of retail and related services concerning wine and cognacs. The application was opposed by French fashion house, Kenzo, on the basis of Article 8(5) of the Community Trade Marks Regulation, which prohibits the registration of a sign that is identical (or similar) to an earlier trade mark when the earlier trade mark enjoys a reputation, and use of the sign would take advantage of or cause detriment to the reputation of the earlier mark. The earlier mark that Kenzo sought to rely on was a Community trade mark registration for the identical word mark “KENZO” covering a range of fashion articles, as well as perfumes and cosmetics.
In reaching its decision in favour of Kenzo, the General Court placed a particular emphasis on the common characteristics of the consumer of the (arguably dissimilar) goods / services in question, and the manner in which such goods / services are marketed and sold. In doing so, it recognised that Kenzo’s products are placed at the high end of the market, where consumers are likely to have “a more sophisticated taste than the average consumer,” and that the reputation of Kenzo’s mark should be construed accordingly.
The General Court then went on to accept Kenzo’s argument that high-quality wines and cognacs attract the same type of consumer, and that the “undisputable allure” and “glamour” of Kenzo’s products could be transferred to other luxury goods, including those offered by Mr Tsujimoto. Consequently, Kenzo’s target consumer would be likely to make a link between Kenzo’s luxury fashion goods and Mr Tsujimoto’s high-end alcoholic beverages, resulting in unfair advantage. In support of its conclusion, the General Court noted that co-branding initiatives between the fashion/cosmetics industry and alcoholic beverage industry are increasingly commonplace, and cited DAVIDOFF (used in respect of perfumery and cognac) as a notable example.
As a last resort, Mr Tsujimoto sought to invoke a “due cause” defence on the basis that Kenzo was his forename although this received short shrift from the General Court, which, expanding on Prinz von Hannover v OHIM  (where it was held that there is no unconditional right to register one’s surname), stated that no such entitlement applies to forenames.
Contrast with Singapore case
The General Court’s decision may have come as a bit of a surprise to Mr Tsujimoto in the light of a 2013 case in Singapore, which bore a very close resemblance except for the outcome. On that occasion, the two Kenzos clashed over Mr Tsujimoto’s Singaporean trade mark application for “KENZO ESTATE”, in respect of wines and beverages.
In rejecting Kenzo’s opposition, the Singaporean Registrar found that Mr Tsujimoto’s mark was unlikely to cause a confusing connection with Kenzo, partly on the basis that the parties’ “well-heeled customers would take extra care to inspect a product before buying the same”. In other words,
high-end consumers are likely to be more attentive / discerning than the average consumer, so the bar for confusion / association is set higher for luxury products.
On the reputational front, Kenzo had sought to rely on the fact that it had participated in a collaborative cognac named “HENNESSY BY KENZO” in 1997. However, the Singaporean Registrar considered this to be of little or no relevance to the case, on the basis that it was an isolated example of co-branding and was not evidence of a full, long-term extension of Kenzo’s business.
As a result, the opposition was rejected and Mr Tsujimoto’s application was successful.
This case demonstrates an increasing trend within Europe (which happens to be a substantial global exporter of luxury products) to offer an expanding spectrum of trade mark protection to reputed (European) brands, and in particular those operating in the highly lucrative luxury retail sector.
Given the significant added value a luxury fashion brand can bring to a product, cross-sector co-branding initiatives are becoming increasingly common – other examples in the fashion / beverage sectors include a Johnnie Walker Blue Label Dunhill edition, a $2 million Chambord bottle designed by Donald Edge, and a raft of collaborations between Absolut and the likes of Tom Ford, Stella McCartney and Gaultier. It is precisely this transferable added-value / caché that the laws and courts are seeking to recognise and protect.
The fact that other jurisdictions might not afford a consistent degree of protection can be frustrating for brand owners, especially given the global market for luxury products. In this regard, there can be little doubt that home advantage has an important role to play.