Kenzo Tsujimoto (hereafter known as “the Applicant”) is the proprietor of a winery in Napa Valley, California, USA. He filed for a trademark application in Singapore for the word mark “KENZO ESTATE” for “wine, alcoholic beverages of fruit and western liquors” in Class 33. When the application was published, Kenzo (“the Opponent”), the proprietor of a fashion house that also dabbles in perfumery and cosmetics, filed an opposition against the Applicant’s mark.
The Opponent argued that the mark “KENZO” was distinctive to them and the public would associate their marks “KENZO” and “Image” with the Opponent as their marks have been registered in Singapore since 1982. Further, they claimed that they had diversified their business to include the wine business in 1997, when a special cognac vintage labelled as “HENNESSY BY KENZO” was released. The Opponent stated that it was common for fashion houses to endorse or lend their names to alcoholic beverages and that the public would naturally associate the Applicant’s mark with the Opponent.
The Applicant sought to dispel the Opponent’s argument by pointing out that the word “KENZO” is a common masculine Japanese name. They refuted the Opponent’s argument with the explanation that the Applicant’s wines would not be mistaken for a French wine (the Opponent is headquartered in France) as the Applicant’s wine label clearly states “Napa Valley”, where the wine originated. They also contended that the Opponent’s cognac bearing the mark “HENNESSY BY KENZO” was released as a limited edition collector’s item as these vintages were only released in 1997 and 1999. Additionally, the Opponent had previously registered the mark “KENZO” in respect of Class 33 goods, but this was successfully revoked by the Applicant on grounds that the Opponent had not used the mark in respect of said goods.
The Learned Registrar found for the Applicant and concluded that the opposition had failed on all grounds due to the following reasons:
- Evidence of other business entities in unrelated fields using the word “KENZO” in their name suggested that the word is not uncommonly used in trade in Singapore.
- The Opponent’s main line of business was in apparels, accessories, perfumes and cosmetics and the goodwill generated by the mark “HENNESSY BY KENZO” remained primarily with “HENNESSY” and not “KENZO”. The collaboration between the Opponents and Hennessy was thus more of an exercise in co-branding rather than business extension.
- Reference to the word “ESTATE” in the Applicant’s mark “KENZO ESTATE” would evoke a place in the Napa Valley to the discerning customer, who will be able to differentiate the US-based wine and the fashion brand of French-origin.
- The Applicant’s mark and Opponent’s mark have co-existed in many countries, including the US where the Applicant’s wine business originated.
- The Opponent’s failure to resist the Applicant’s application to revoke their mark “KENZO” in Class 33 supported the idea that the Opponent has not shown any genuine intention to expand its business to Class 33 goods in Singapore.
Generally, trademark protection can only be claimed for goods and/or services which are actually in commerce. A proprietor of a mark in a certain class of goods/services will find it difficult to succeed in opposing a similar mark (“cited mark”) which represents goods/services that does not correlate or complement their goods/services. This is especially so if the proprietor does not offer the goods/services claimed by the cited mark. An exception to this is if the proprietor’s mark is very famous and well-known. However, this is generally a subjective view and as seen above, this argument did not work to the Opponent’s favour.