Tsujimoto v OHMI - Kenzo (KENZO ESTATE) (Judgment) [2015] EUECJ T-522/13 (02 December 2015)

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(Community trade mark — Opposition proceedings — International registration designating the European Community — Word mark KENZO ESTATE — Earlier Community word mark KENZO — Relative ground for refusal — Reputation — Article 8(5) of Regulation (EC) No 207/2009 — Belated submission of documents — Discretion of the Board of Appeal — Article 76(2) of Regulation No 207/2009 — Partial refusal of registration)

Kenzo Tsujimoto, residing in Osaka (Japan), represented by A. Wenninger-Lenz, W. von der Osten-Sacken and M. Ring, lawyers,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Bullock, acting as Agent,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being

Kenzo, established in Paris (France), represented by P. Roncaglia, G. Lazzeretti, F. Rossi and N. Parrotta, lawyers,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 3 July 2013 (Case R 1363/2012-2), relating to opposition proceedings between Kenzo and Mr K. Tsujimoto,

composed of H. Kanninen (Rapporteur), President, I. Pelikánová and E. Buttigieg, Judges,

having regard to the application lodged at the Court Registry on 26 September 2013,

having regard to the response of OHIM lodged at the Court Registry on 10 January 2014,

having regard to the response of the intervener lodged at the Court Registry on 11 February 2014,

having regard to the Court’s written question to the parties regarding the judgments of 22 January 2015 in Tsujimoto v OHIM — Kenzo (KENZO) (T‑322/13, EU:T:2015:47) and Tsujimoto v OHIM — Kenzo (KENZO) (T‑393/12, EU:T:2015:45),

having regard to the replies to the Court’s question lodged by the parties at the Court Registry on 16 and 25 June 2015,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court of 2 May 1991,

1 On 18 August 2009, the applicant, Mr Kenzo Tsujimoto, filed an application for an international registration designating the European Community, notification of which was given to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) on 5 November 2009, pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

3 The goods and services in respect of which registration was sought are in Classes 29, 30, 31, 35, 41 and 43 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

– Class 29: ‘Olive oil (for food); grape seed oil (for food); edible oils and fats; raisins; processed vegetables and fruits; frozen vegetables; frozen fruits; raw pulses; processed meat products; processed seafood’;

– Class 30: ‘Confectionery, bread and buns; wine vinegar; olive dressing; seasonings (other than spices); spices; sandwiches; pizzas; hot dogs (sandwiches); meat pies; ravioli’;

– Class 31: ‘Grapes (fresh); olives (fresh); fruits (fresh); vegetables (fresh); seeds and bulbs’;

– Class 35: ‘Marketing research on wine; providing information on wine sales; advertising and publicity services; import-export agencies; retail services or wholesale services for foods and beverages; retail services or wholesale services for liquor’;

– Class 41: ‘Educational and instruction services relating to general knowledge of wine; educational and instruction services relating to general knowledge of obtaining the sommelier certification; arranging and conducting of examination of wine and simulation test thereof; testing and certifying of sommelier certification; arranging, conducting and organization of seminars on wine; arranging, conducting and organization of seminars on sommelier certification; providing electronic publications on wine; providing electronic publications on sommelier certification; publication of books on wine; publication of books on sommelier certification; providing facilities for educational training on wine; providing facilities for educational training on sommelier certification’;

– Class 43: ‘Providing foods and beverages; providing temporary accommodation’.

4 The application for registration was published in Community Trade Marks Bulletin No 44/2009 of 16 November 2009.

5 On 12 August 2010, the intervener, Kenzo, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of all the goods and services referred to in paragraph 3 above.

6 The opposition was based on the earlier Community word mark Kenzo, which was registered on 20 February 2001 under the number 720706 in respect of goods in, inter alia, Classes 3, 18 and 25 corresponding, for each of those classes, to the following description:

– Class 3: ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; toothpaste’;

– Class 18: ‘Leather and imitations of leather, belts, bags, hand bags, trunks and suitcases, sling bags, travelling bags and other luggage; leashes, pocket wallets, briefcases, pouches (leatherware), purses, key cases (leatherware), boxes and cases of leather, imitations of leather, card holders, cheque book holders, attaché cases, make-up cases, travelling sets (leatherware); toilet and make-up bags (not fitted), animal skins, hides; umbrellas, parasols and walking sticks; whips, harness and saddlery’;

7 The ground relied on in support of the opposition was that set out in Article 8(5) of Regulation No 207/2009.

9 On 23 July 2012, the intervener filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

10 By decision of 3 July 2013 (‘the contested decision’), the Second Board of Appeal of OHIM upheld the appeal in part. According to the Board of Appeal, the three cumulative conditions for the application of Article 8(5) of Regulation No 207/2009 were satisfied in the present case in respect of the services covered by the registration applied for. As regards the first condition, the Board of Appeal observed that the marks at issue were highly similar. As regards the second condition, the Board of Appeal found, contrary to the Opposition Division, that the intervener had established that the earlier trade mark had a reputation. Regarding the third condition, the Board of Appeal found, in respect of the services covered by the registration applied for, that it seemed highly likely that that registration, for the use of which no due cause had been demonstrated, would ride on the coat-tails of the earlier trade mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark’s image. By contrast, the Board of Appeal found, with regard to the goods in Classes 29 to 31 covered by the registration applied for, that they were not regarded as luxury goods and that they were not invariably associated with the world of glamour or fashion. It took the view that they are common mass-consumed foodstuffs that are bought in any corner shop and that they have only a peripheral relation with the intervener’s goods. It found that the intervener had failed to justify why the registration applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. The Board of Appeal rejected the opposition in respect of those goods.

– annul the contested decision in so far as it upheld the opposition with respect to the services in Classes 35, 41 and 43 covered by the registration applied for;

13 In support of his action, the applicant relies on two pleas in law alleging (i) infringement of Article 76(2) of Regulation No 207/2009 and (ii) infringement of Article 8(5) of that regulation.

The first plea, alleging infringement of Article 76(2) of Regulation No 207/2009

14 The applicant relies on Rule 19(1) and Rule 20(1) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) in order to claim that an opposition based on Article 8(5) of Regulation No 207/2009 must be rejected if the opponent fails to prove the reputation of the earlier trade mark within the period specified by OHIM for proving the existence and validity of the earlier right. The applicant takes the view that the documents filed by the intervener, following a request from the Opposition Division, regarding proof of genuine use of the earlier mark, should have been taken into consideration by the Board of Appeal solely in order to assess whether that use had been proved and not for the purpose of assessing whether the reputation of the earlier mark had been proved.

16 It must be pointed out that, according to the case-law, the third subparagraph of Rule 50(1) of Regulation No 2868/95 expressly provides that, when examining an appeal directed against a decision of the Opposition Division, the Board of Appeal enjoys the discretion conferred under Article 76(2) of Regulation No 207/2009 to decide whether it is appropriate to take into account additional or supplementary facts and evidence not submitted within the periods set or specified by the Opposition Division (judgment of 3 October 2013 in Rintisch v OHIM, C‑120/12 P, ECR, EU:C:2013:638, paragraph 32, and judgment of 22 January 2015 in Tsujimoto v OHIM — Kenzo (KENZO), T‑393/12, EU:T:2015:45, paragraph 26).

17 Where OHIM is called upon to adjudicate in the context of opposition proceedings, the taking into account of evidence or facts submitted late is particularly likely to be justified where OHIM considers, first, that the material which has been submitted late is, on the face of it, likely to be genuinely relevant to the outcome of the opposition brought before it and, secondly, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account (see judgment in Rintisch v OHIM, cited in paragraph 16 above, EU:C:2013:638, paragraph 38 and the case-law cited; judgment in KENZO, cited in paragraph 16 above, EU:T:2015:45, paragraph 27).

18 As a preliminary point, it should be observed that, contrary to the applicant’s assertions, it is not appropriate to construe the Board of Appeal’s discretion in the light of Rule 20(1) of Regulation No 2868/95, according to which, if, until expiry of the period referred to in Rule 19(1) of that regulation, the opposing party has not proved the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition is to be rejected as unfounded. Rather, it has already been held that it is the third subparagraph of Rule 50(1) of Regulation No 2868/95 which must be applied in proceedings before the Board of Appeal and not Rule 20(1) of that regulation (see judgment in Rintisch v OHIM, cited in paragraph 16 above, EU:C:2013:638, paragraph 29, and judgment in KENZO, cited in paragraph 16 above, EU:T:2015:45, paragraph 28).

19 In order to determine whether the Board of Appeal could, in the present case, take into account the evidence produced before the Opposition Division, it is necessary to ascertain whether the Board of Appeal considered that the evidence in question was likely to be genuinely relevant and whether — as the applicant claims — the stage of the proceedings and certain circumstances of the case argued against its being taken into account (see, to that effect, judgment in Rintisch v OHIM, cited in paragraph 16 above, EU:C:2013:638, paragraph 38, and judgment in KENZO, cited in paragraph 16 above, EU:T:2015:45, paragraph 29).

20 In its notice of opposition, the intervener referred, on 12 August 2010, to Annexes 1 to 7, which it had submitted in opposition proceedings previously brought on the basis of the earlier mark, in order to prove the reputation of that mark.

21 It also referred, on 28 July 2011, to Annexes 1 to 21, which had been filed in opposition proceedings previously brought on the basis of the earlier mark, in order to prove the use of that mark.

22 In the first place, it must be pointed out that the Board of Appeal rightly took into account the evidence referred to by the intervener on 12 August 2010 before the Opposition Division, stating that that evidence was admissible, particularly because it was clearly identified, the earlier proceedings were clearly stated and the evidence had been filed even before any time-limit for doing so was set.

23 In the second place, it must be pointed out that it is the applicant who requested that the intervener furnish proof of use of the earlier mark. It is not disputed that OHIM granted the intervener a period which ran until 5 August 2011 and that the intervener complied with that time-limit by referring to Annexes 1 to 21 in the document which it filed on 28 July 2011. Furthermore, in stating that proof of use and proof of reputation are indissociably linked and that only an excessive and illegitimate formalism would dictate that the proof of use could not be adduced as proof of reputation, the Board of Appeal exercised its discretion under Article 76(2) of Regulation No 207/2009 to decide that it was appropriate to take that evidence into consideration and in finding that that evidence was genuinely relevant for the purposes of assessing the earlier trade mark’s reputation. It therefore provided a proper statement of reasons for taking that evidence into account (see, to that effect, judgment in KENZO, cited in paragraph 16 above, EU:T:2015:45, paragraphs 30 and 34).

The second plea, alleging infringement of Article 8(5) of Regulation No 207/2009

25 The second plea is broken down into four parts, alleging (i) that there is no similarity between the marks at issue; (ii) that there is no proof of the reputation of the earlier mark; (iii) that there is no risk of an unfair advantage; and (iv) that there is due cause for the use of the mark in respect of which registration is sought.

26 The Board of Appeal found that the marks at issue were highly similar inasmuch as they had the word ‘kenzo’ in common and that they differed in so far as the word ‘estate’ was added to the word ‘kenzo’ in the mark in respect of which registration is sought. The Board of Appeal took the view that that additional term had too little effect to attenuate the high degree of similarity between the two marks. First of all, it stated that consumers take more note of a mark’s beginning than of its ending. Secondly, it took the view that the word ‘estate’ lacks distinctive character for a significant part of the relevant consumers. Lastly, it stated that the fact that a mark consists exclusively of the earlier mark, to which another word has been added, is an indication that the two trade marks are similar.

27 The applicant disputes the contested decision, submitting that if the Board of Appeal had performed the necessary visual, phonetic and conceptual comparison, it would have found that the marks were dissimilar. The applicant maintains that the additional element ‘estate’ significantly extends the length of the mark, in respect of which registration is sought, visually and phonetically and creates substantial differences in the sound, colour and rhythm. The applicant relies, in that regard, on the judgment of 2 September 2010 in Calvin Klein Trademark Trust v OHIM (C‑254/09 P, ECR, EU:C:2010:488) and the judgment of 7 May 2009 in Klein Trademark Trust v OHIM — Zafra Marroquineros (CK CREACIONES KENNYA) (T‑185/07, ECR, EU:T:2009:147) in order to claim that, in the present case, the Board of Appeal should have found that there was no similarity between the marks at issue.

29 It must be borne in mind that it is apparent from the case-law of the Court of Justice that the degree of similarity required under Article 8(1)(b) of Regulation No 207/2009, on the one hand, and Article 8(5) of that regulation, on the other, is different. Whereas the implementation of the protection provided for under Article 8(1)(b) of Regulation No 207/2009 is conditional upon the finding that there is such a degree of similarity between the marks at issue that there is a likelihood of confusion between them on the part of the relevant public, such a likelihood of confusion is not necessary for the purposes of the protection conferred by Article 8(5) of that regulation. Accordingly, the types of injury referred to in Article 8(5) of Regulation No 207/2009 may be the consequence of a lesser degree of similarity between the earlier and the later marks, provided that it is sufficient for the relevant public to make a connection between those marks, that is to say, to establish a link between them (see judgment of 24 March 2011 in Ferrero v OHIM, C‑552/09 P, ECR, EU:C:2011:177, paragraph 53 and the case-law cited; judgment of 20 November 2014 in Intra-Presse v OHIM, C‑581/13 P and C‑582/13 P, EU:C:2014:2387, paragraph 72).

30 According to the same case-law, Article 8(5) of Regulation No 207/2009, like Article 8(1)(b), is manifestly inapplicable where the General Court rules out any similarity between the marks at issue. It is only if there is some similarity, even faint, between the marks at issue that the General Court must carry out an overall assessment in order to ascertain whether, notwithstanding the low degree of similarity between them, there is, on account of the presence of other relevant factors such as the renown or reputation enjoyed by the earlier mark, a likelihood of confusion or a link made between those marks on the part of the relevant public (judgment in Ferrero v OHIM, cited in paragraph 29 above, EU:C:2011:177, paragraph 66, and judgment in Intra-Presse v OHIM, cited in paragraph 29 above, EU:C:2014:2387, paragraph 73).

31 In the first place, it is important to point out that the Board of Appeal rightly found that the fact that a mark consists exclusively of the earlier mark, to which another word has been added, is an indication that the two trade marks are similar (see, to that effect, judgment of 4 May 2005 in Reemark v OHIM — Bluenet (Westlife), T‑22/04, ECR, EU:T:2005:160, paragraph 40, and judgment of 12 November 2008 in ecoblue v OHIM — Banco Bilbao Vizcaya Argentaria (Ecoblue), T‑281/07, EU:T:2008:489, paragraph 28).

32 In the second place, it is also correct that it is apparent from the case-law that, in principle, consumers usually pay more attention to the beginning of a sign than to its end (judgment of 16 March 2005 in L'Oréal v OHIM — Revlon (FLEXI AIR), T‑112/03, ECR, EU:T:2005:102, paragraphs 64 and 65, and judgment of 11 December 2014 in Oracle America v OHIM — Aava Mobile (AAVA CORE), T‑618/13, EU:T:2014:1053, paragraph 38).

33 In the third place, it is not apparent that the Board of Appeal made any error of assessment in finding that the word ‘estate’, in association with the goods and services covered by the registration applied for, lacks distinctive character for a significant part of the relevant consumers. For English speakers, that word may denote the place of cultivation and production of wine, grapes and related goods as ‘estate’ means ‘a large piece of landed property’. It follows that the Board of Appeal was right to find that the relevant consumers would pay less attention to that term and would focus on the first and most distinctive element, which is the term ‘kenzo’.

34 In the fourth place, the applicant cannot reasonably rely on the judgment in Calvin Klein Trademark Trust v OHIM, cited in paragraph 27 above, (EU:C:2010:488), and the judgment in CK CREACIONES KENNYA, cited in paragraph 27 above, (EU:T:2009:147), because the factual circumstances of those judgments differ from those of the present case. It is sufficient in that regard to point out that the marks at issue in those cases were a mark applied for consisting of a word sign and earlier marks represented by figurative signs, whereas, in the present case, the marks at issue are two word marks. Furthermore, it was held, in those cases, that the distinctive and dominant elements of the marks at issue were not the same, whereas, in the present case, the term ‘kenzo’, which is common to the marks at issue, is also the most distinctive element in those marks.

35 It follows that the first part of the second plea must be rejected as unfounded.

The second part, alleging that there is no proof of the reputation of the earlier mark

36 The applicant submits, in the first place, that the Board of Appeal could not take the evidence provided to establish genuine use of the earlier mark into account in assessing whether the earlier mark had a reputation.

37 In that regard, it is sufficient to point out that it is apparent from the examination of the first plea that the Board of Appeal could take that evidence into account.

38 The applicant submits, in the second place, that the Board of Appeal should not have taken into account the evidence which the intervener filed with the Opposition Division before 14 February 2011 in order to establish that the earlier trade mark has a reputation, because that evidence was not accompanied by any explanations concerning, inter alia, the duration of use of the earlier trade mark, the geographical extent of the advertising campaigns connected with that mark, the specific degree of knowledge of the earlier trade mark’s reputation and the intervener’s turnover and market share.

39 In that regard, it must be pointed out that the applicant has not specified the legal provision on which he was relying for the purpose of maintaining that the evidence submitted by the intervener had to be accompanied by explanations in order to be taken into account.

40 In any event, it is not disputed that the evidence to which the intervener referred before the Opposition Division in the present case is that which it filed in the cases referred to in paragraphs 35 and 39 of the contested decision, which gave rise to the judgment in KENZO, cited in paragraph 16 above, (EU:T:2015:45), and the judgment of 22 January 2015 in Tsujimoto v OHIM — Kenzo (KENZO) (T‑322/13, EU:T:2015:47).

41 In the light of what had been decided in the course of the proceedings before OHIM in those cases, the Board of Appeal found, in paragraph 39 of the contested decision, that, in the present case, in which the effective date of the international registration is 18 August 2009, the reputation of the earlier mark was, in view of the evidence submitted, proved. The Board of Appeal added that, given that no new factors had been adduced to undermine that evidence, it had to be confirmed that the earlier mark KENZO had a reputation in the European Union for clothing, cosmetics and perfume.

42 In that regard, it is important to point out that, in the judgments in KENZO, cited in paragraph 16 above, (EU:T:2015:45, paragraphs 43 to 50), and KENZO, cited in paragraph 40 above, (EU:T:2015:47, paragraphs 27 to 32), against which the applicant has not appealed, it has already been held that the evidence on which the intervener relied served to establish that the earlier mark has a reputation.

44 The applicant submits that the Board of Appeal infringed Article 8(5) of Regulation No 207/2009 by not taking into account, in its assessment of whether there was a risk of an unfair advantage, any factors apart from the high degree of similarity between the signs at issue and the reputation of the earlier trade mark. He maintains that the Board of Appeal did not explain what link could be established between, on the one hand, the goods in respect of which the earlier trade mark had a reputation, namely, clothing, perfumes and cosmetics, and, on the other hand, the services covered by the mark in respect of which registration is sought. He also argues that the Board of Appeal did not take account of the fact that those services were different in nature and belonged to very different commercial sectors. In his view, it is therefore most unlikely that the image of exclusiveness and luxury attached to clothing, perfumes and cosmetics could be transferred to the services covered by the mark in respect of which registration is sought. The applicant maintains that a number of services in Class 35, as well as the services in Class 43, have no specific focus on wine. He submits that the use of the mark in respect of which registration is sought cannot confer any advantage with regard to the marketing of the services covered by that mark.

45 In order to determine whether the use of the mark in respect of which registration is sought would take unfair advantage of the reputation of the earlier trade mark, it is necessary to establish that the relevant public would make a link between the signs at issue in connection with the goods and services covered by those signs. The fact that the signs at issue are highly similar is not a sufficient ground for concluding that such a link exists (see, by analogy, judgment of 27 November 2008 in Intel Corporation, C‑252/07, ECR, EU:C:2008:655, paragraph 45). In order to assess whether such a link exists, it is necessary to carry out a global assessment which takes into account all factors relevant to the circumstances of the case, which include, inter alia, the strength of the earlier trade mark’s reputation and the degree of distinctiveness of that mark, the degree of similarity between the marks at issue, and the nature of and degree of closeness between the goods or services (see, by analogy, judgment in Intel Corporation, EU:C:2008:655, paragraphs 41 and 42).

46 However, the existence of such a link is not in itself a sufficient ground for concluding that there is a risk that the use of the sign will take unfair advantage of the earlier trade mark’s reputation (see, to that effect, order of 30 April 2009 in Japan Tobacco v OHIM, C‑136/08 P, EU:C:2009:282, paragraph 37).

47 It follows from established case-law that the concept of the unfair advantage which would be taken of the repute of the earlier mark by the use without due cause of the mark applied for consists in the fact that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation (see judgment of 25 March 2009 in L'Oréal v OHIM — Spa Monopole (SPALINE), T‑21/07, EU:T:2009:80, paragraph 19 and the case-law cited).

48 The advantage arising from the use by a third party of a sign which is similar to a mark with a reputation is an advantage taken unfairly by that third party of the distinctive character or the repute of that mark where that party seeks by that use to ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark’s image (see, by analogy, judgment of 18 June 2009 in L’Oréal and Others, C‑487/07, ECR, EU:C:2009:378, paragraph 50).

49 To accept that the use of the mark applied for would take unfair advantage of the distinctive character or the repute of the earlier mark requires the provision of evidence of an association of the mark applied for with the positive qualities of the identical or similar earlier mark which could give rise to manifest exploitation or free-riding by the mark applied for (see judgment of 30 January 2008 in Japan Tobacco v OHIM — Torrefacção Camelo (CAMELO), T‑128/06, EU:T:2008:22, paragraph 65 and the case-law cited).

50 As regards the nature and degree of closeness of the goods and services concerned, the Board of Appeal pointed out, first, that the goods for which the earlier mark has a reputation are cosmetics, perfumes and clothing, whereas the goods and services covered by the mark to which the application for registration relates are in, respectively, Classes 29 to 31 and Classes 35, 41 and 43. The Board of Appeal observed, secondly, that the goods covered by the earlier mark are aimed at consumers in the luxury goods market, whereas the goods covered by the mark to which the application for registration relates are common mass-consumed foodstuffs that are bought in any corner shop. It added that, although wine is made of grapes, grapes can never be regarded as sophisticated luxury goods and that goods such as edible oils and fats and raisins are much less luxurious. Furthermore, the Board of Appeal pointed out, in essence, that the services covered by the mark to which the application for registration relates may appear to be services related to the retail of quality wines and services ancillary to the production and sale of such wines in the form of training, education, sommelier certification and so on, where wine will be the central focus.

51 The Board of Appeal took the view that high-end luxury goods such as perfume, fashionable clothing and quality wine, evoke images of ‘glamour’, reflecting success and social status. It added that, in publicity campaigns, a person enjoying champagne or using a quality perfume is inevitably fashionably attired and that all those goods are linked in one striking iconic image of a successful high-income man or woman.

52 Consequently, the applicant errs in claiming that the Board of Appeal did not explain what link could be established between, on the one hand, the goods covered by the earlier mark, namely clothing, perfumes and cosmetics, and, on the other hand the services covered by the mark to which the application for registration relates.

53 Furthermore, the Board of Appeal’s assessment as to whether there is such a link must be upheld. Services related to the retail of quality wines and services ancillary to the production and sale of such wines in the form of training, education, sommelier certification and so on, where wine will be the central focus, may, like clothing, perfumes and cosmetics, be part of the luxury sector. In addition, it is possible that proprietors of trade marks for cosmetics may also be active in the alcoholic drinks sector (judgment in KENZO, cited in paragraph 40 above, EU:T:2015:47, paragraph 42).

54 As regards the existence of a risk of an unfair advantage, it must be pointed out that it was by taking into account the existence of a link between the goods covered by the earlier mark and the services covered by the mark in respect of which registration is sought, the substantial reputation of the earlier trade mark, the high degree of similarity between the marks at issue and the sophisticated and iconic image conveyed by the earlier trade mark, which can be transferred to other sectors, such as the wine sector, that the Board of Appeal found that it was highly likely that the mark in respect of which registration is sought would ride on the coat-tails of the earlier trade mark in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the intervener in order to create and maintain the mark’s image.

55 The applicant therefore errs in claiming that the Board of Appeal relied only on the high degree of similarity between the marks at issue in assessing whether there was a risk of unfair advantage.

56 It is important to add that the services in Classes 35 and 43 covered by the application for registration, which, according to the applicant, have no focus on wine, may nevertheless appear to be services ancillary to the production and sale of wine as was found by the Board of Appeal.

57 It follows that the third part of the second plea must be rejected as unfounded.

The fourth part, alleging that there is due cause for the use of the mark in respect of which registration is sought

58 The applicant submits that, in his observations before the Opposition Division, he argued that the mark in respect of which registration is sought uses his forename and that it was therefore applied for and used with due cause. He maintains that the Board of Appeal did not take that argument into account and therefore infringed Article 8(5) of Regulation No 207/2009.

59 It must be pointed out that the Board of Appeal responded to the applicant’s argument by stating that ‘no due cause [had] been demonstrated’ (paragraph 50 of the contested decision). Admittedly, that is a laconic response, but it is adequate. Regulation No 207/2009 does not provide any unconditional right to register a name as a Community trade mark (see, to that effect, judgment of 25 May 2011 in Prinz von Hannover v OHIM (Representation of a coat of arms), T‑397/09, EU:T:2011:246, paragraph 29), let alone to register a forename as a trade mark. Consequently, the fact that the applicant’s forename is Kenzo is not enough to constitute due cause for the use of the mark in respect of which registration is sought, for the purposes of Article 8(5) of Regulation No 207/2009 (see judgment in KENZO, cited in paragraph 16 above, EU:T:2015:45, paragraphs 20 and 21, and judgment in KENZO, cited in paragraph 40 above, EU:T:2015:47, paragraph 47).

61 The second plea must therefore be rejected and, consequently, the action must be dismissed in its entirety.

62 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, he must be ordered to pay the costs, in accordance with the forms of order sought by OHIM and the intervener.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Tsujimoto v OHMI - Kenzo (KENZO ESTATE) (Judgment) [2015] EUECJ T-522/13 (02 December 2015) URL: http://www.bailii.org/eu/cases/EUECJ/2015/T52213.html Cite as: ECLI:EU:T:2015:922, EU:T:2015:922, [2015] EUECJ T-522/13

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