Tsujimoto Kenzo (“the Applicant”), the proprietor and founder of a winery called Kenzo Estate, located in California, had applied for the trademark “KENZO ESTATE” in Singapore in 2008 under Class 33 and the same was published in February 2010. Kenzo (“Opponent”), a fashion house engaged in the manufacture, sale and distribution of products like fragrances, clothing, houseware etc., filed an opposition in June 2010. After a Pre-Hearing Review and submission of substantive evidence, the opposition was heard in April 2013.
Though the Opponent did not have any registrations in Class 33, they had registered the word and stylized form of the mark “KENZO” in various other unrelated classes in Singapore. The Opponent in 1997 and in 1999 had launched one special cognac vintage named “HENNESSEY BY KENZO,” signed by their founder and famous designer Kenzo Takada.
The Opponent argued that the Applicant’s mark was similar to the Opponent’s well-known trademarks and that the use by the Applicant would indicate a connection with the Opponent which could damage their interests.
In determining the issue of similarity, the Registrar looked at the visual, aural and conceptual similarities of the marks, as well as the overall distinctiveness of the Opponent’s mark. It was held that the Applicant’s mark was not visually similar to a great extent to the Opponent’s stylized mark, as the latter contained a stylized depiction whereas the former was in regular font. With respect to aural similarity, relying on the test of quantitative assessment of the relative number of syllables which are common, the Registrar opined that there were only two syllables in common between the marks and therefore there was a small degree of aural similarity. On the issue of conceptual similarity, the Registrar noted that word “KENZO” is a personal name. However, use of the qualifying term “ESTATE” suggests a spacious place which would operate to change the meaning of the mark. In the final analysis, the Applicant’s mark was therefore termed as visually and aurally similar to a small extent but conceptually dissimilar to Opponent’s word mark.
In determining whether the Opponent’s mark was well-known, the Registrar, considering the evidence submitted and established precedents, found the Opponent’s marks to be well-known to a relevant sector of public in Singapore.
In considering whether the use of Applicant’s mark would create a confusing connection with the Opponent, the Registrar noted that the goods and services covered by the contending marks are different from each other. The Opponents’ collaboration with HENNESSEY appeared as co-branding exercise rather than a business extension into a market similar to that of the Applicant. Further, as the customers of both the Applicant’s and Opponent’s products would belong to a “high-heeled” and “discerning” class, they would be able to identify the dissimilarities in use of the two marks and would differentiate the marks “easily.” On the balance of probabilities, the Opponent failed to show how use by the Applicant would create a confusing connection. The Opponent also failed to show that use of mark by Applicant would damage the Opponent’s interests.
Since substantive similarity, connection with the Opponent and damage to Opponent’s interests could not be proven the primary ground failed.
The Opponent also argued that their marks were well-known to public at large in Singapore and therefore use by Applicant would damage their interests and goodwill. The Registrar rejected their argument finding that the Opponent’s marks did not fall into this rare and exclusive class of trademarks which are well-known to the public at large.
The Opponent further claimed that Applicant was passing off their goods as those of the Opponent by using Opponent’s mark. Although the Registrar found that the Opponent had goodwill in Singapore, the Registrar was of the view that Opponent failed to show any actionable misrepresentation by the Applicant and actual or potential damage to the Opponent. Hence, this claim was also unsuccessful. Similarly, the Opponent’s argument that the Applicant had applied for its registration in bad faith did not meet the required standard of proof on a balance of probabilities and therefore failed.
This decision by IPOS reflects the policy consideration behind not allowing trademark owners a monopoly to run beyond a specific class of goods. Merely having launched one vintage cognac and the mere possibility of venturing into greater realms in Class 33 does not preemptively give to the opponent the exclusive right to disallow other players who are in the field. The decision reinforces Singapore’s stance on developing intellectual property jurisprudence that ensures that all market players are treated equitably.
This article was first published in Asia IP magazine, Vol.5 Issue 10, November 2013, p62.