The EU General Court has decided, in three separate appeals, that two international registrations for the mark “Kenzo Estate” designating the European Community take unfair advantage of the reputation of the earlier CTM for ‘Kenzo’ (the French luxury brand founded by Kenzo Takada) covering cosmetics, perfumes and clothing goods. Kenzo Estate is a winery in Napa Valley, founded by Kenzo Tsujimoto; his application for KENZO had already failed before the General Court in January 2015, also on the grounds of taking unfair advantage.
The owner of an earlier mark can prevent the registration of a later mark even if the goods are not similar (as is the case here) where they can show that their mark has a reputation, and use of the later mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark, and is without due cause. The General Court concluded that KENZO ESTATE for goods and services covering wine, liquors, wine-related services and food products which the Court considered could be 'marketed in elegant hampers' did take unfair advantage.
Given the significant reputation of KENZO, and the link between the goods covered by the mark, the Court concluded that it was likely that use of KENZO ESTATE would allow the applicant to ‘ride on the coat-tails’ of the earlier mark’s reputation. The Court considered that the iconic and distinctive character of KENZO could be transferred to goods in other sectors (such as wine) as these also evoked images of high-end luxury and glamour. There was no due cause for using that specific mark, despite the fact that it was the applicant’s name.
The Court reached the same conclusion in respect of goods such as olive oils and vinegars. The Court also felt that there was a risk that the everyday consumer goods covered by this registration (such as confectionary, pizzas and hotdogs) could damage the image of exclusivity and luxury associated with KENZO.
The Court clearly placed significant weight on the degree of similarity between the marks (the word ‘Estate’ lacking a distinctive character for the goods), the strength of reputation of the KENZO mark, and the scope for cross promotion of fashion brands in other luxury sectors. As the Court noted, “in publicity campaigns, a person enjoying champagne or using a quality perfume is invariably fashionably attired..."