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In a recent judgment, the Court of Justice of the European Union (CJEU) resolved a dispute about whether a person can register his or her own name—in this case Kenzo—as a trademark when a previous, well-known trademark with the same or a similar name already exists.

The CJEU judgment of May 30, 2018, ends the trademark dispute between the luxury fashion brand Kenzo, owner of several domestic and EU trademarks, including the renowned KENZO trademark, and Mr. Kenzo Tsujimoto. The latter filed two applications to register an international trademark consisting of the word mark KENZO ESTATE, in which the territory of the EU was designated, for products other than those covered by the well-known brand. The Kenzo company objected to the registrations, alleging ownership of the trademark and maintaining that the registrations breach the relative prohibition established in article 8.5 of the EU Trademark Regulation (Council Regulation (EU) 207/2009, superseded by Regulation 2017/1001).

In the 2009 draft, article 8.5 prohibits registration when there is opposition from the owner of a previous trademark, if certain requirements are met, namely: (i) that the brands are identical or similar; (ii) that the earlier trademark is well-known, and (iii) that the use without just cause of the requested trademark takes undue advantage of the distinctive character or reputation of the earlier trademark or jeopardizes its distinctive character or reputation.

The EUIPO held that all requirements for prohibition had been met, and specifically that there was a risk that use of the requested protection would take undue advantage of the reputation of the earlier trademark. The EU General Court confirmed this decision and the interested party appealed to the CJEU.

During the proceedings, Mr. Kenzo Tsujimoto alleged, among other arguments, that the use of his name in the KENZO ESTATE trademark constitutes just cause and, therefore, all requirements relating to the relative prohibition of registration had been met. However, the CJEU concluded, in line with the ruling of the General Court, that “the use of the appellant’s forename, that is, Kenzo, in the composition of the mark KENZO ESTATE was not enough to constitute due cause for the use of that sign, within the meaning of article 8.5 of Regulation No. 207/2009.”

Indeed, for the CJEU, the fact that the term Kenzo is the forename of Mr. Tsujimoto does not imply the existence of just cause. Consistent with the statements of the advocate general, the CJEU considers that “the weighing of the different interests involved cannot undermine the essential function of the earlier mark to guarantee the origin of the product.” Bearing in mind that the regulation grants ample protection to well-known trademarks, the judgment holds that the General Court was correct in concluding that Mr. Kenzo did not prove just cause and that he actually intended to take undue advantage of the KENZO brand’s fame.

In short, according to CJEU case law, Community trademark applicants do not have unconditional rights to register their names as trademarks (see also the General Court ruling of May 25, 2011, regarding Prinz von Hannover).

Authors: Ane Alonso and Miquel Peguera

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