The latest decision of the Court of Justice of the European Union ("CJEU”) in the Kenzo case provides useful guidance on admissibility of late evidence in EU trade mark appeal proceedings and clarifies the meaning of ‘unfair advantage’ for well-known registered marks. The CJEU has also confirmed that use, in the course of trade, of a person’s forename does not automatically amount to use ‘with due cause’.
In 2008, Mr Tsujimoto, the owner of a California-based winery, filed two EU trade mark applications to register a two-word mark, ‘Kenzo Estate’. The first application was for goods in Class 33 (wine, cognac and other alcoholic and fruit beverages). Later, a second application was filed, covering Classes 29 to 31 (olive oils, types of confectionary and grapes).
A well-known luxury fashion house, Kenzo, opposed under Article 8(5) of the EU Trade Mark Regulation ("EUTMR”) on the basis of its reputation in its trade mark Kenzo, registered in Classes 3, 18 and 25.
The EUIPO Board of Appeal upheld Kenzo’s opposition to Mr Tsujimoto’s first application and some goods covered by the second application. The opposition was rejected for non-luxury goods. Following unsuccessful appeals to the General Court, Mr Tsujimoto further appealed to the CJEU.
First ground of appeal – late evidence
Mr Tsujimoto argued that the Board was in breach of the EUTMR by considering the evidence of reputation produced by Kenzo as it was submitted out of time.
The CJEU clarified that the Board has the discretion to decide whether it is appropriate to consider additional or supplementary facts and evidence not submitted within the specified time limit. Accepting late factual or evidentiary submissions is justified where, in the Board of Appeal’s view, the submissions are genuinely relevant to the outcome of the case, and the surrounding circumstances do not argue against such matters from being taken into account.
Second ground of appeal – marks with a reputation
Mr Tsujimoto raised various arguments on appeal regarding the application of Article 8(5) EUTMR, all of which were rejected. The CJEU’s analysis of ‘unfair advantage’ and 'due cause' are worthy of note as it provides useful guidance on the factors to be taken into account when assessing these concepts.
Mr Tsujimoto argued that the very different nature of the commercial sectors of the conflicting marks (wine versus fashion) made it highly unlikely that the image of glamour and luxury associated with Kenzo’s goods could be transferred to the goods covered by the 'Kenzo Estate’ mark. The CJEU disagreed. The Court was satisfied that the registration of ‘Kenzo Estate’ for wine and cognac was likely to ‘ride on the coat-tails’ of the earlier mark, and take ‘unfair advantage’ of the distinctive character of the earlier KENZO mark. The Court agreed with the earlier opposition and Board of Appeal decisions, which had found that the same could not be said for the less glamorous, mass-produced goods such as olive oils and confectionary (for which the opposition had been rejected).
The fact that ‘Kenzo’ is Mr Tsujimoto’s forename was held to be irrelevant to the issue of whether the use of that term constitutes due cause since ‘the weighing of different interests involved cannot undermine the essential function of the earlier mark, which is to guarantee the origin of the product’. While EU trade mark law cannot prevent inpiduals from registering their own name for commercial purposes, the law does not grant inpiduals an absolute right to use their name in the course of trade.
- Article 95(2) EUTMR and Rule 50(1) of the Implementing Regulation give the Board of Appeal the option of admitting, or excluding, evidential or factual documents which have been submitted out of time.
- There may be a finding of ‘unfair advantage’ for some goods, but not others.This reinforces the significance of the ‘link’ required under Article 8(5) EUTMR and the importance of demonstrating a viable connection between a trade mark and the inpidual goods or services, not just an overarching link applying to all.
- The use of a person’s own name for commercial purposes, will not automatically amount to ‘use with due cause’. An inpidual’s right to use or register a trade mark which comprises or includes his or her name needs to be balanced with the interests of the proprietor of an earlier mark with a reputation.
Tsujimoto v EUIPO, Joint Cases CJEU, C-85/16 and C-86/16, 30 May 2018.