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December 1, 2018 Vol. 73 No. 20 Back to Bulletin Main Page

EUROPEAN UNION: Court of Justice Limits the Extent of Kenzo Reputation for Foodstuff Products

On May 30, 2018, the Court of Justice of the European Union (CJEU) confirmed in joint cases C-85/16 P and C-86/16 P that “the sophisticated and iconic image” of the famous Kenzo fashion house does not extend to goods that are not “part of the luxury sector.”

In 2008, Mr Kenzo Tsujimoto filed an international application for the word mark KENZO ESTATE, designating the European Union (EU) for goods in Class 33, namely, “wine; alcoholic beverages of fruit; western liquors (in general).” One year later, he filed another international application, KENZO ESTATE, designating the EU for Classes 29, 30, 31, 35, 41, and 43. Both applications were opposed by Kenzo fashion house on relative grounds under Article 8(5) of Regulation 2017/1001 on the EU Trade Mark (EUTM Regulation), namely, based on the earlier EUTM KENZO registered inter alia with respect to Classes 3, 18, and 25.

Both of the oppositions were rejected. Kenzo fashion house appealed the decisions. The Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) upheld the first appeal in full, thus rejecting KENZO ESTATE for all goods in Class 33. The second appeal was upheld in part, with the Second Board of Appeal stating that services in Classes 35, 41 and 43 of the KENZO ESTATE mark would ride on the coattails of the earlier KENZO mark, but the goods in Classes 29, 30, and 31 of the KENZO ESTATE mark had merely peripheral relation to Kenzo luxury goods.

Dissatisfied with the decisions, Mr. Tsujimoto appealed to the European Union General Court and later to the CJEU, claiming that he had due cause for using and registering his first name as a trademark. He argued that it was highly unlikely that the image of exclusivity and luxury inherent to Kenzo perfumes, clothing, and cosmetics could be transferred to everyday products and services covered by KENZO ESTATE. The CJEU, however, concluded that Mr. Tsujimoto’s appeals should be dismissed in their entirety and that the court was correct to find that the trademark KENZO ESTATE should be allowed for foodstuff products available in any shop (i.e., goods of Classes 29, 30, and 31), but upheld the finding that, for the remaining goods and services, the KENZO mark still may “ride on the coat-tails” of the Kenzo reputation and so cannot be granted.

The CJEU decision puts a final stop to the decade-long proceedings; however, it will be interesting to see whether this issue will continue in the EU as a potential infringement case, namely, whether Kenzo will also challenge the use of KENZO ESTATE with respect to wines coming to the EU from Napa Valley, California, in cases where the bottles are labeled with the KENZO ESTATE trademark.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

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