The matter at hand

Kenzo Tsujimoto, the owner of a US-based winery ‘Kenzo Estate’, filed for the registration of two EU word marks for KENZO ESTATE, for inter alia wine and for foodstuffs and services related thereto respectively.

Kenzo, the French luxury house, filed an opposition against the KENZO ESTATE applications, based on the earlier EU word mark KENZO, registered for inter alia perfumery, bags and clothing. In support of the opposition, Kenzo relied on the ‘reputation’ ground as set out in Article 8(5) of the Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark.

The Opposition Division of EUIPO rejected Kenzo’s opposition against both registrations. However, the Second Board of Appeal of EUIPO upheld Kenzo’s appeal against the decision of the Opposition Division for a part of the goods. Tsujimoto appealed the decision of the EUIPO before the General Court. The General Court rejected Tsujimoto’s appeal in its entirety. Tsujimoto subsequently lodged an appeal before the ECJ.

In the appeal before the ECJ, Tsujimoto inter alia argued that the General Court had erred in law by merely considering that no ‘due cause’ in the sense of Article 8(5) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark had been demonstrated, in spite of his reference to the fact that the element ‘Kenzo’ designates his forename.

The judgment of the ECJ

With regard to this ground of appeal, the ECJ considers that the General Court did not err in law in finding that Tsujimoto had failed to establish the existence of due cause for the use of KENZO ESTATE. The mere fact that the term ‘Kenzo’ corresponds to Tsujimoto’s first name is irrelevant to the issue of whether the use of that term constitutes due cause since “the weighing of the different interests involved cannot undermine the essential function of the earlier mark, which is to guarantee the origin of the product” (paragraph 94). In the opinion of the ECJ, the General Court was therefore “fully entitled to consider, in weighing the interests involved, that, taking into account the extended protection granted by Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark] to trade marks with reputation, the Board of Appeal was entitled to find that no due cause had been demonstrated by Tsujimoto and that, as a result, the latter wanted to take unfair advantage of the reputation of the trade mark KENZO” (paragraph 95).