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CJEU puts cork in wine trademark appeal

The Court of Justice of the European Union (CJEU) has dismissed a trademark appeal concerning wine-related goods.

The case centred around two trademark applications by Japan-based individual Kenzo Tsujimoto.

In 2008, Tsujimoto applied for an international registration designating the EU for the word sign ‘Kenzo Estate’ covering goods and services in class 33 for wine, alcoholic beverages and “Western liquors”.

France-based retailer Kenzo opposed the application, based on the earlier EU trademark ‘Kenzo’.

After the Opposition Division dismissed the opposition, Kenzo appealed against the decision at the EUIPO in February 2012. The appeal was upheld after the Second Board of Appeal found that the marks were highly similar; Kenzo had established that its earlier mark had a reputation; and that the applied-for trademark would “ride on the coat-tails” of the earlier mark.

In August 2009, Tsujimoto again applied for an international registration designating the EU for the same word sign ‘Kenzo Estate’, this time covering classes 29, 30, 31, 35, 41 and 43.

Goods and services in these classes include olive oil; confectionery; fresh fruit and vegetables; marketing research on wine; educational services relating to wine; and provision of food and beverages.

Again, Kenzo opposed the application, but the Opposition Division dismissed the opposition. The Second Board of Appeal then upheld Kenzo’s appeal in part, but found that Kenzo had failed to justify why the registration would take unfair advantage of the earlier trademark in classes 29 and 31.

Tsujimoto appealed against both of the decisions to the CJEU and argued that there were not any similarities between the marks at issue.

According to Tsujimoto, the ‘Estate’ element of his applied-for trademarks “occupied significant space” in the marks as it is composed of six letters, while ‘Kenzo’ only consists of five. He said that the extra word ‘Estate’ also “gives rise to significant differences between the conflicting marks” in terms of how they sound and their rhythm.

The CJEU found that that the word ‘Estate’ in association with the goods and services “lacked distinctive character for a significant part of the relevant consumers”.

Tsujimoto also unsuccessfully argued that Kenzo had failed to provide evidence within the correct time period, that Kenzo did not have a reputation in the EU, and that the applied-for trademarks tried to take advantage of the earlier mark.

The court said Tsujimoto’s appeals were “unfounded” and dismissed them. Tsujimoto was ordered to pay the costs.

Source : www.Opusip.Co.Uk

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