The Court of Justice of the European Union (CJEU) has recently issued its sentences of May 30, 2018, which puts an end to the trademark conflict that arose between Mr. Kenzo Tsujimoto and the Kenzo company.
What is really interesting about this controversy is the question of whether the use as a trademark of a person's name (in this case Mr. Tsujimoto's first name, Kenzo) would constitute use with just cause if there existed, as is the case in this matter, an identical or similar prior trademark registration.
Mr. Kenzo Tsujimoto applied for protection of his trademark KENZO ESTATE in the European Union through two different international trademark registrations (no. 0953373 and no. 1016724), to which Kenzo filed an opposition based on his renowned Union trademark. European No. 000720706 KENZO.
The CJEU had to weigh the interests of Mr. Kenzo Tsujimoto on the one hand, and those of consumers and the owner of the KENZO trademark on the other.
While it seems logical that Mr. Tsujimoto claims his right to use his own name to distinguish his products and services, the truth is that we must not forget that The main function of the brand is to differentiate a company's products and services from those of its competitors..
Let us remember that brands serve to to guarantee that the products or services that we are going to acquire have a specific business origin and, therefore, have certain characteristics that we link to the owner of the brand (value, quality, origin, etc.).
Given the renown of the KENZO brand, it is not unlikely that the consumer will purchase a product distinguished by the KENZO ESTATE brand with the thought that it comes from the Kenzo company, which would lead to confusion on the part of the consumer with consequent misuse. (including possible damage) to the reputation of the KENZO brand by benefiting from its power of attraction, its reputation and its prestige, and exploiting the commercial effort made by Kenzo to create and maintain its image without offering any financial compensation in return.
Likewise, the Court points out that the registration of own names as a trademark is not an uncommon practice and, although sometimes the simple addition of a surname or some other element that provides individuality and distinctive character to the sign is sufficient to avoid a risk of confusion with other brands, in this case the addition of the term ESTATE is not considered sufficient because it lacks distinctive character in relation to the products and services of interest. What's more, the name of Japanese origin Kenzo is not at all a very common name in the EU as a whole, which gives greater distinctiveness to this element, making the competing brands unable to coexist peacefully in the market.
Thus, The Court concludes that the mere fact that Kenzo is the name of Mr. Tsujimoto is not enough to constitute just cause, but rather that he had to demonstrate that the registration of KENZO ESTATE is due to a legitimate reason (its use in the market prior to the registration of the Kenzo trademark, for example). Therefore, automatically considering that the use of a personal name as a trademark has just cause would mean stripping any previous trademark that includes the same name of its essential function.
Author: Soledad Bernal
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