General Court was fully entitled to conclude that word mark KENZO ESTATE of which registration was applied for was similar to the earlier word mark KENZO: mark applied for consists of earlier mark + element that lacks distinctiveness. Use of appellant’s forename in mark applied for does not constitute a due cause: the weighing of the different interests involved cannot undermine the essential function of the earlier mark to guarantee the origin of the product.
Appeal against two General Court judgments in which the appeals against the decisions of the Board of Appeal of the EUIPO were dismissed. The Board of appeal decided that the word marks applied for “KENZO ESTATE” take unfair advantage of, or are detrimental to, the distinctive character or reputation of the earlier KENZO mark. In case C-86/16 however, the Board decided that this was not the case for goods in classes 29-31 (e.g. olive oil, confectionery and grapes).
The CJEU rules that the General Court was fully entitled to conclude that the two marks at issue were similar, because one of the marks consists exclusively of the earlier mark with the addition of an element that lacks distinctiveness.
The General Court ruled in both cases that it was highly likely that the mark applied for would ride on the coat-tails of the earlier trade mark. The General Court was fully entitled to rule that the use of appellant’s forename does not constitute a due cause. The mere fact that the term ‘kenzo’ which is a component of the mark KENZO ESTATE corresponds to the appellant’s forename is irrelevant to the issue of whether the use of that term constitutes due cause within the meaning of the EU Trade Mark Regulation (207/2009), since the weighing of the different interests involved cannot undermine the essential function to guarantee the origin of the product.