Simpsons Solicitors

KENZO? The Trade Marks Office has never heard of it.

July 16th 2012

In a recent decision handed down by the Trade Marks Office in Kenzo SA v Kenzo Tsujimoto [2012] ATMO 58, famous fashion label KENZO failed to prevent a trade mark KENZO ESTATE from being registered in Australia in relation to wines in class 33.

First, it was alleged that registered KENZO trade marks in relation to jewelry, perfumery, clothing and textiles were substantially identical with the opposed trade mark KENZO ESTATE in relation to wines. The Delegate found that, although the trade marks were substantially identical, the goods in question were not similar goods and dismissed this ground of opposition.

Secondly, KENZO sought to rely on its reputation in Australia and claimed that the use of a trade mark KENZO ESTATE would cause consumer confusion.  Evidence was also lead by the opponent that fashion designers sometimes co-market their brands with beverages (e.g., in 1997 and 1999 KENZO teamed up with Hennessy to have its trade mark applied to cognac). The trade mark applicant, on the other hand, claimed that:

  • KENZO was a common Japanese given name; and
  • many well-known fashion brands are registered by third parties for beverages and these trade marks co-exist without any conflict.

The Delegate was skeptical about the reputation of KENZO fashion label, describing it as “somewhere between modest and moderate”, better known among fashion conscious females than males. Further, the Delegate thought that KENZO cognac was a one-off exercise in co-marketing rather than brand extension. Reliance was also placed on the fact that the same trade marks co-existed on the US Trade Marks Register and, in any case, KENZO was not a unique trade mark.

Consequently, it was not likely that when consumers saw a bottle of KENZO ESTATE wine, they would be caused to wonder whether the wine originated from the KENZO fashion label. KENZO ESTATE was allowed to proceed to registration.

This decision illustrates that the threshold of successfully establishing sufficient reputation may prove to be a difficult exercise to niche brands. It also signals to trade mark owners that much broader protection parameters of a brand may have to be considered when lodging a trade mark to prevent unsavory KENZO experiences.

Interestingly, in 2004 GUCCI (which is also not a unique trade mark, but a surname) opposed a GUCCI  trade mark (965953) filed in relation to alcoholic beverages. However, although evidence was exchanged, the opposition never proceeded to a hearing and the opposed trade mark was withdrawn.

For any trade mark related matters, please contact trade marks lawyer Mindaugas Skavronskas.