Tsujimoto v OHMI - Kenzo (KENZO) (Judgment) [2015] EUECJ T-322/13 (22 January 2015)

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(Community trade mark — Opposition proceedings — Application for Community word mark KENZO — Earlier Community word mark KENZO — Relative ground for refusal — Reputation — Article 8(5) of Regulation (EC) No 207/2009 — Late submission of documents — Discretion of the Board of Appeal — Article 76(2) of Regulation No 207/2009)

Kenzo Tsujimoto, residing in Osaka (Japan), represented by A. Wenninger-Lenz, lawyer,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented initially by M. Rajh and J. Crespo Carrillo, and subsequently by M. Rajh and P. Bullock, acting as Agents,

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 25 March 2013 (Case R 1364/2012-2) concerning opposition proceedings between Kenzo and Mr Kenzo Tsujimoto,

composed of M. van der Woude, President, I. Wiszniewska-Białecka (Rapporteur) and I. Ulloa Rubio, Judges,

having regard to the response of OHIM lodged at the Court Registry on 11 October 2013,

having regard to the response of the intervener lodged at the Court Registry on 30 October 2013,

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 give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,

1 On 20 November 2009, the applicant — Mr Kenzo Tsujimoto — filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), 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 services in respect of which registration was sought are in Classes 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 35: ‘Marketing research on wine; providing information on wine sales; wine advertising and publicity services; import-export agencies for wine; retail services or wholesale services for wine’;

– Class 41: ‘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 Community trade mark application was published in Community Trade Marks Bulletin No 49/2010 of 15 March 2010.

5 On 15 June 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 services referred to in paragraph 3 above.

6 The opposition was based on the earlier Community word mark KENZO, registered on 20 February 2001 under No 720 706 in respect of goods in Classes 3, 18 and 25, inter alia, and 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 referred to in Article 8(5) of Regulation No 207/2009.

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

10 By decision of 25 March 2013 (‘the contested decision’), the Second Board of Appeal of OHIM upheld the appeal. According to the Board, the three cumulative conditions for the application of Article 8(5) of Regulation No 207/2009 were met in the circumstances. Regarding the first of those conditions, the Board observed that the marks at issue were identical. Regarding the second condition, the Board found, contrary to the Opposition Division, that the intervener had shown that the earlier trade mark had a reputation. Regarding the third condition, the Board stated that it seemed highly likely that the mark applied for, 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. The Board therefore concluded that there was a risk that the use of the mark applied for would take unfair advantage of the reputation of the earlier trade mark for the purposes of Article 8(5) of Regulation No 207/2009.

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

14 The applicant states that the Opposition Division had given the intervener a deadline of 2 November 2010 for providing proof of the earlier trade mark’s reputation. He submits that, in taking into account evidence submitted after that date, the Board of Appeal infringed Article 76(2) of Regulation No 207/2009. In that regard, he claims, in essence, that OHIM’s power to take into account evidence not submitted within the prescribed periods is delimited by the framework set by Rule 20(1) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), which does not allow such evidence to be taken into account. In addition, the applicant argues that, even supposing that the Board had the power to take into account the evidence submitted after 2 November 2010, it nevertheless infringed Article 76(2) of Regulation No 207/2009 to the extent that it did not exercise that power.

15 It should be noted that, according to the judgment of the Court of Justice of 3 October 2013 in Case C‑120/12 P Rintisch v OHIM (ECR, paragraph 32), 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 prescribed or specified by the Opposition Division.

16 Where OHIM is called upon to adjudicate in the context of opposition proceedings, the taking into account of evidence or facts produced late is particularly likely to be justified where OHIM considers, first, that the material which has been produced late is, on the face of it, likely to be genuinely relevant to the outcome of the opposition brought before it and, second, 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 Rintisch v OHIM, paragraph 15 above, paragraph 38 and the case-law cited).

17 First, 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, under 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 trade mark or earlier right, as well as its entitlement to file the opposition, the opposition is to be rejected as unfounded. Rather, 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 (Rintisch v OHIM, paragraph 15 above, paragraph 29).

18 It should also be observed that, although evidence of the earlier trade mark’s reputation was not physically filed by the intervener in this case, it had provided OHIM with such evidence in previous proceedings between the same parties. The Board of Appeal emphasised that Annexes 1 to 7 had to be deemed to have been filed in good time, since the first reference to those annexes had been made at the time of filing the notice of opposition. The Board also observed that subsequently, on 7 April 2011, in the intervener’s response to the applicant’s request to provide proof of use of the earlier trade mark, the intervener once again referred to the previous proceedings between the same parties, referring at that time to other annexes which contained a large number of invoices. The Board found that the evidence to which the intervener was referring had to be deemed to have been filed in Case R 1364/2012-2 (paragraph 28 of the contested decision).

19 Secondly, it should be noted that the Board of Appeal took into account the evidence submitted on 7 April 2011, that is, after 2 November 2010, stating that: (i) that evidence had been submitted both in order to prove use of the earlier trade mark and within the time allowed for proving such use; (ii) it was also relevant as evidence in support of that trade mark’s reputation; and (iii) the evidence in question, together with the evidence submitted before 7 April 2011, had enabled the Board, in an earlier decision, to establish that the earlier trade mark had a reputation (paragraphs 28 and 29 of the contested decision). The Board thus 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, finding that such evidence was genuinely relevant for the purposes of assessing the earlier trade mark’s reputation, provided a statement of reasons for taking that evidence into account.

20 The applicant is therefore wrong in his assertion that, in taking that evidence into account, the Board of Appeal infringed Article 76(2) of Regulation No 207/2009.

22 The second plea in law is divided into three parts, alleging respectively that there is no proof that the earlier trade mark has a reputation; that there is no risk of an unfair advantage; and that there is due cause for the use of the mark applied for.

23 The applicant submits, first, that the Board of Appeal could not, in its assessment of the earlier trade mark’s reputation, take into account the evidence which the intervener submitted after 2 November 2010.

24 In that regard, it is sufficient to recall that the examination of the first plea in law shows that the Board of Appeal could take that evidence into account.

25 The applicant also submits that the Board of Appeal should not have taken into account the evidence filed with the Opposition Division before 2 November 2010 to demonstrate the earlier trade mark’s reputation, because that evidence was not accompanied by any explanation concerning the duration of use of the earlier trade mark, the geographical scope of the advertising campaigns connected with that mark, the specific level of awareness of the earlier trade mark’s reputation, the intervener’s turnover, or its market share.

26 In that regard, it should be noted that the applicant has not specified the legal provision on which he bases his argument that, in order to be taken into account, the evidence submitted by the intervener had to be accompanied by explanations.

27 In any event, the evidence filed with the Opposition Division by the intervener before 2 November 2010 to demonstrate the reputation of its trade mark was accompanied by a brief description. The description indicated for most of that evidence the relevant period or the geographical scope. Thus, for example, Annex 7 was described in the following way: ‘press clippings from various EU countries ... between 2006 and 2010, published in reputed EU magazines ... between 2008 and 2010, such as Vogue, Vanity Fair, L’Uomo, and so on ...’.

28 Moreover, the intervener expanded on that explanation in its appeal before the Board of Appeal.

29 Thus, it argued that it had provided the Opposition Division with a monograph dedicated to the creator of the earlier trade mark, which belongs to the same series of monographs as those dedicated to Gucci, Valentino, Versace, Chanel and Dior, all of whom are legendary figures in the world of fashion.

30 Furthermore, the intervener pointed out that the 400 pages relating to advertising campaigns for the earlier trade mark which it had submitted to the Opposition Division indicated the location and duration of each advertising campaign launched over a ten-year period (2000 to 2010). It stated that those 400 pages showed that advertisements relating to goods covered by the earlier trade mark had been published in the Czech Republic, Denmark, Germany, Spain, France, Croatia, Cyprus, the Netherlands, Slovenia and the United Kingdom. It added that those advertisements had been published in numerous world-leading magazines relating to fashion (such as Elle, Men’s Health, Playboy and Vogue), as well as in certain leading popular magazines in Europe (such as El Mundo, Figaro, Le Monde, Vanity Fair and Cosmopolitan). According to the intervener, those advertisements were clear evidence of a sustained and intensive media campaign.

31 In addition, the intervener stated that the list of the earlier trade mark’s points of sale and the list of KENZO trade marks registered worldwide clearly showed that the reputation of the earlier trade mark was established in a significant part of the European Union at the time when the notice of opposition was filed.

33 The applicant submits that the Board of Appeal disregarded 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 identity of the signs at issue and the reputation of the earlier trade mark. He submits that the Board did not explain what link could be established between the goods in respect of which the earlier trade mark had a reputation — that is, clothing, perfumes and cosmetics — and the services covered by the mark applied for. He also argues that the Board did not take account of the fact that those goods and services were different in nature and belonged to very different commercial sectors. It is therefore highly unlikely, in his view, that the image of exclusiveness and luxury attached to the clothing, perfumes and cosmetics in question could be transferred to the services covered by the mark applied for, which relate to wine or gastronomy. Accordingly, the use of the mark applied for cannot confer any advantage with regard to the marketing of the services covered by that mark.

34 In order to determine whether the use of the mark applied for would take unfair advantage of the reputation of the earlier trade mark, it is necessary for the relevant public to establish a link between the signs at issue in connection with the goods covered by those signs. The fact that the signs at issue are identical is not a sufficient ground for concluding that such a link exists (see, by analogy, Case C‑252/07 Intel Corporation [2008] ECR I‑8823, 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 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 concerned (see, by analogy, Intel Corporation, cited above, paragraphs 41 and 42).

35 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 the Court of Justice of 30 April 2009 in Case C‑136/08 P Japan Tobacco v OHIM, not published in the ECR, paragraph 37).

36 It is settled 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 the General Court of 25 March 2009 in Case T‑21/07 L’Oréal v OHIM — Spa Monopole (SPALINE), not published in the ECR, paragraph 19 and the case-law cited).

37 The advantage arising from the use by a third party of a sign having points of similarity with 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, Case C‑487/07 L’Oréal and Others [2009] ECR I‑5185, paragraph 50).

38 Acknowledging that the use of the mark applied for would take unfair advantage of the distinctive character or the repute of the earlier trade mark requires the provision of proof that the mark applied for is associated with the positive qualities of the identical or similar earlier trade mark which could give rise to clear exploitation or free-riding on the part of the mark applied for (see judgment of the General Court of 30 January 2008 in Case T‑128/06 Japan Tobacco v OHIM — Torrefacção Camelo (CAMELO), not published in the ECR, paragraph 65 and the case-law cited).

39 Regarding the nature of and degree of closeness between the goods and services concerned, the Board of Appeal noted, first, that the services covered by the mark applied for included retail services for wines together with a range of closely associated and overlapping activities such as the marketing, advertising, import-export and provision of wine, training and education in the field of wine, and the publication of books on wine. In addition, the provision of facilities for educational training on wine would be included in the provision of temporary accommodation (paragraph 31 of the contested decision).

40 The Board of Appeal observed, secondly, that the evidence submitted by the intervener showed that the goods covered by the earlier trade mark were aimed at sophisticated consumers in the luxury goods market, while the range of services offered by the applicant was aimed at, inter alia, wine specialists (paragraph 32 of the contested decision). The Board found that luxury goods — such as perfumes, fashionable clothing, and quality wines — evoked images of ‘glamour’, reflecting success and social status. It added that, in the advertising campaigns, persons enjoying champagne or trying a perfume were inevitably fashionably attired, and that all those goods were associated with the common iconic image of a successful and handsome (often young) man or woman.

41 Therefore, the applicant is wrong in his assertion that the Board of Appeal did not explain what link could be established between the goods covered by the earlier trade mark (clothing, perfumes and cosmetics) and the services covered by the mark applied for.

42 Furthermore, the Board of Appeal’s assessment as to whether there is such a link must be upheld. Services falling within the wine sector 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. That is so, for example, in the case of the proprietor of the trade mark DAVIDOFF, which uses that trade mark to distribute not only gentlemen’s cosmetics but also cognac (Case C‑292/00 Davidoff [2003] ECR I‑389, paragraph 6).

43 Regarding the existence of a risk of an unfair advantage, it should be noted that it was by taking into account the existence of a link between the goods covered by the earlier trade mark and the services covered by the mark applied for, the substantial reputation of the earlier trade mark, the identity of 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 applied for 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 (paragraphs 33 and 34 of the contested decision).

44 Therefore, the applicant is wrong in his assertion that, in its assessment as to whether there was a risk of an unfair advantage, the Board of Appeal relied only on the fact that the marks at issue are identical and on the reputation of the earlier trade mark.

46 The applicant submits that, in his observations before the Opposition Division, he argued that the mark applied for corresponded to 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 that, in failing to do so, it infringed Article 8(5) of Regulation No 207/2009.

47 It should be noted that the Board of Appeal responded to that argument adduced by the applicant, finding that ‘no due cause [had] been demonstrated’ (paragraph 34 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 surname as a Community trade mark (see, to that effect, judgment of the General Court of 25 May 2011 in Case T‑397/09 Prinz von Hannover v OHIM (Representation of a coat of arms), not published in the ECR, 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 applied for, for the purposes of Article 8(5) of Regulation No 207/2009.

49 Therefore, the second plea in law must be rejected and, accordingly, the action must be dismissed in its entirety.

50 Under Article 87(2) 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 form 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) (Judgment) [2015] EUECJ T-322/13 (22 January 2015) URL: http://www.bailii.org/eu/cases/EUECJ/2015/T32213.html Cite as: EU:T:2015:47, [2015] EUECJ T-322/13, ECLI:EU:T:2015:47

Court of Justice of the European Communities (including Court of First Instance Decisions)