Singapore: Kenzo v Kenzo

August 19th, 2013

 

In the case of Tsujimoto Kenzo v Kenzo, the Intellectual Property Office of Singapore (IPOS) held Kenzo’s opposition to Tsujimoto Kenzo’s trademark applications as failing on all grounds and consequently, upheld the registration of the trademarks.

Tsujimoto Kenzo (hereinafter referred to as “the Applicant”) is the proprietor and founder of a winery called “Kenzo Estate” in the United States, which had garnered respectable sales in Japan and U.S., although Kenzo Estate wines had not been formally launched in Singapore.

The Applicant had applied to protect the trademark “Kenzo Estate” (hereinafter referred to as “the Application Mark”) in Singapore on 21 August 2008. The Applicant also owns registrations and/or applications for the mark “Kenzo Estate” in several jurisdictions across the world such as U.S., Japan and Europe.

After the Singapore application was accepted and published, Kenzo (hereinafter referred to as “the Opponent”) filed a notice of opposition to oppose the Application Mark. The Opponent is a fashion house engaged in manufacture, sale and distribution of a wide range of products including clothing, fragrances, skincare products, houseware and leather goods. The Opponent holds multiple trademarks for the word Kenzo (hereinafter referred to as “the Opponent’s Marks”). The Opponent, after being acquired by French conglomerate Moet Hennessey Louis Vitton S.A. (the ‘LVMH Group’), launched a special cognac vintage named “Hennessey By Kenzo” in 1997.

The Opponent sought to oppose the Application Mark under Section 8(4)(b)(i) of the Singapore Trademarks Act which states that no trademark shall be registered if the use of such trademark would indicate a connection with the proprietor of an earlier trade mark, and is likely to damage the interests of the proprietor of the earlier trade mark.

The Opponent contented that the Application Mark was essentially similar to the Opponent’s Marks and the suffix ‘Estate’ in the Application Mark was merely descriptive and did not add any visual difference to consumers. The Opponent stated that its own marks were well known in Singapore and since it was common for fashion houses to lend their names or endorse alcoholic beverages, the public would immediately draw a connection with the Opponent upon seeing the Application Mark.

The Applicant submitted that the Opponent’s Marks were heavily stylized and only the word ‘KEN’ with the side profile of a face is discernible, whilst the Application Mark was a word mark ‘KENZO ESTATE’. The Applicant further submitted that the marks were aurally dissimilar given that the Application Mark consisted of 4 syllables whilst the Opponent’s Marks consist of 2 syllables each. The Applicant also submitted that there was no conceptual similarity as KENZO is a common masculine Japanese name and also the Applicant's first name.

The Singapore Registrar noted that although the Application Mark contained the word “Kenzo”, the Application Mark was not identical with nor visually similar to the Opponent’s Mark as the Opponent’s Mark was highly stylized. The Registrar further noted that the two marks were aurally similar but only to a small extent as the Application Mark consisted of four syllables which the Opponent’s Marks comprised of only two syllables. However, the Registrar stated that as both the marks begin with the same sound, this could leave an impression of overlap in the mind of the public, especially on first impressions. The Registrar also found the two marks conceptually dissimilar, stating that although the word “Kenzo” brought a personal name to mind, the word “Estate” qualifies “Kenzo” such that the Application Mark as a whole suggested a spacious place instead. Further, the Registrar assessed the level of distinctiveness of the Opponent’s Marks as medium stating that “Kenzo” was likely to be construed as a personal name of Japanese origin not commonly used in Singapore.

In determining whether the Opponent’s Marks were well known to the relevant sector of public in Singapore, the Registrar found that the relevant sector of public would consist of actual and potential consumers in Singapore of the Opponent’s fashion apparel, perfumery and cosmetics. The Registrar noted that the much of the sales and advertisement figures adduced by the Opponent postdated the application date of the Application Mark and there were insufficient supporting documents with respect to those figures supplied by the Opponent.

The Registrar further stated that the Opponent’s participation as the opening act of the Singapore Fashion Festival 2001 had likely generated much hype and publicity for the Opponent, given that it was an event targeted broadly at the public and supported by the Singapore Tourism Board.

The Registrar also stated that the Opponent’s Ngee Ann City Boutique had been its public retail point in Singapore for about 18 years and since Ngee Ann City was a shopping mall located in a prime shopping district in Singapore, it was likely that many members of the relevant sector of the public in this case would have been exposed to the Opponent’s Marks. Hence, the Registrar held that the Opponent’s Marks were well known to the relevant sector of public in Singapore.

In assessing whether there was a likelihood of confusion, the Registrar found that the nature of goods and services of the Opponent and the Applicant were very different as the Opponent dealt primarily in retail and wholesaling services in the field of high-end fashion, its offerings being mainly clothes, shoes, perfumes, cosmetics and other accessories while the Applicant was a wine producer in the U.S. The Registrar held that the Applicant's wine was likely to be sold to exclusive wine retailers and/or directly to hotels and restaurants with a reputation for fine dining, while the Opponent’s goods were likely to be sold in Singapore mainly through its Ngee Ann City Boutique. Further, given the high prices of both the Opponent’s and the Applicant’s goods, the relevant consumer was likely to attach more importance to what was being purchased and exercise a higher degree of circumspection in this regard. Upon encountering the Applicant's wine bottle, it would be quite obvious to the relevant consumer that the wine came from the Napa Valley in California and was not a wine of French origin, and therefore the word “Estate” in the Application Mark would evoke a place in the Napa Valley to the relevant consumer. Hence, the consumer was likely to be able to differentiate the Applicant's wine easily from the Opponent’s “Kenzo” fashion brand which was of French origin. Therefore, the Registrar ruled that the Opponent had failed to establish that the use of the Application Mark would indicate a confusing connection with the Opponent.

The Registrar established that there was no connection between the Opponent’s and Applicant’s field of activity and that the Opponent had not established that it was already in the alcohol business, or that it had already expanded into the field of manufacturing alcoholic beverages anywhere overseas. Hence, the Registrar ruled that the Opponent’s evidence neither supported a finding on the above claims to damage nor the other heads of damage canvassed, such as tarnishment of the Opponent’s goodwill due to inferiority in the quality of the Applicant's goods; or damage to the Opponent should the Applicant get into financial, legal or other trouble. Therefore, the Opponent’s ground of opposition under Section 8(4)(b)(i) failed.

Next, the Opponent sought to oppose the Application Mark under Section 8(4)(b)(ii) which states that no trademark shall be registered if the use of such trademark would cause dilution in an unfair manner of the distinctive character of an earlier trademark and/or would take unfair advantage of the distinctive character of an earlier trademark.

The Opponent cited dicta from the EU Decision where the Appeal Board found for the Opponent and held that the numerous retail outlets which exist throughout the European Union, the detailed international media planning strategies, the historical data about KENZO and the growth and influence of his boutiques throughout Europe, the success of his fashion designer collections, were all so well documented that it was inconceivable that the reputation of the KENZO range of products could be denied. Hence, the Opponent contented that the Opponent’s Marks would similarly be well known to most sectors of the public in Singapore.

However, the Registrar rejected this argument stating that the EU decision was on appeal and that this decision only considered evidence that was relevant to the EU market and not to Singapore. The Registrar also sided with Applicant’s argument that the category of marks that were well known to the public at large was reserved for a privileged few. Therefore, the Registrar held that the Opponent’s Marks did not fall into this rare and exclusive class of trademarks which were well known to the public at large and subsequently, rejected the Opponent’s grounds of opposition under Section 8(4)(b)(ii).

The Opponent also sought to oppose the Application Mark under Section 8(7)(a) which states that no trademark shall be registered if its use in Singapore is liable to be prevented by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade.

The Opponent contented that it had developed a sustainable business over a period of time and based on the goodwill acquired through long prior use as well as its entry into the wine market in 1997, there was a likelihood of confusion as there was sufficient similarity between the Opponent’s Marks and the Application Mark which would lead to the Opponent’s suffering damage to its goodwill and reputation. The Applicant counter argued that, on the basis of the Opponent’s lack of evidence, there was no goodwill established in the Opponent’s business. Even if there was goodwill, this was limited to the goods related to clothing. The Applicant also contended that the Opponent had no goodwill in alcoholic beverages as the goodwill in the “Hennessy By Kenzo” product belonged to Hennessy, and not the Opponent. However, the Registrar held that, as already established, the Opponent’s Marks were well known to the relevant sector of public in Singapore and therefore, the Opponent enjoyed goodwill in relation to those goods as sold to the public in Singapore. On the issue of misrepresentation, the Opponent submitted that the misrepresentation was simply the use of the Application Mark on the Applicant’s wine products, as opposed to any imitation of the Opponent's get-up. The Registrar, however, held that the Opponent had failed to establish that the use of the Application Mark on the Applicant's goods would indicate a connection with the Opponent such that, consequently, there would be a likelihood of confusion on the part of the public. Similarly, the Opponent had failed to prove that there was any actionable misrepresentation in this case, thereby, rejected the Opponent’s grounds of opposition under section 8(7)(a).

The Opponent also sought to oppose the Application Mark under Section 7(6) which states that no trademark shall be registered if or to the extent that the application is made in bad faith.

The Opponent submitted that due to its long and extensive use, promotion and advertising of the Opponent's Marks worldwide and their longstanding prior registrations, the Application Mark was a reproduction of the rare and distinctive name, Kenzo, and thus the application for protection in Singapore was made in bad faith. The Applicant asserted that he was merely applying his own name to his goods and that the Applicant did not wish to incorporate the Opponent's Marks or take advantage of any goodwill of the Opponent. The Registrar sided with the Applicant adjudging that the Opponent had not discharged its burden of proving that the Applicant misappropriated the name “Kenzo” in the Application Mark. The Registrar further held that if the Opponent’s submissions were accepted, it would amount to a proprietary claim over the personal name “Kenzo”. The Registrar also rejected the Opponent’s contention that the specification of the Application Mark was unduly wide and that was an instance of bad faith noting that the Applicant was the owner of a vineyard which grew its own grapes and might potentially be used for a variety of products within the specification as claimed.

Hence, the Registrar rejected the Opponent’s grounds of opposition on all grounds and consequently, conferred the protection of Applicant Mark in Singapore.