Joined Cases C‑85/16 P and C‑86/16 P

Kenzo Tsujimoto

v

European Union Intellectual Property Office (EUIPO)

(Appeal — EU trade mark — Applications for registration of the word mark KENZO ESTATE — Earlier EU word mark KENZO — Regulation (EC) No 207/2009 — Article 8(5) — Relative ground for refusal of registration — Reputation — Due cause)

Summary — Judgment of the Court (Tenth Chamber), 30 May 2018

1. EU trade mark—Appeals procedure—Appeal against a decision of the Opposition Division of EUIPO—Examination by the Board of Appeal—Scope—Facts and evidence not produced in support of the opposition within the period prescribed for that purpose—Account taken—Discretion of the Board of Appeal—No contrary provision

   (Council Regulation No 207/2009, Art. 76(2); Commission Regulation No 2868/95, Art. 1, Rules 20(1) and 50(1), third para.)

2. EU trade mark—Definition and acquisition of the EU trade mark—Relative grounds for refusal—Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation—Protection of well-known earlier mark extended to dissimilar goods or services—Conditions—Link between the marks

   (Commission Regulation No 207/2009, Art. 8(5))

3. Appeal—Grounds—Inadequate statement of reasons—Reliance by the General Court on implied reasoning—Lawfulness—Conditions

   (Statute of the Court of Justice, Arts 36 and 53, first para.; Rules of Procedure of the General Court, Art. 117)

4. EU trade mark—Definition and acquisition of the EU trade mark—Relative grounds for refusal—Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services with a reputation—Protection of well-known earlier mark extended to dissimilar goods or services—Use of the trade mark sought without just grounds—Applicant’s forename—No just grounds—Word marks KENZO ESTATE and KENZO

   (Commission Regulation No 207/2009, Art. 8(5))

1.  See the text of the decision.

   (see paras 44, 45)

2.  See the text of the decision.

   (see para. 56)

3.  See the text of the decision.

   (see para. 82)

4.  The protection conferred by Article 8(5) of Regulation No 207/2009 on the European Union trade mark to trade marks with a reputation is extended. The specific condition of that protection consists of a use without due cause of a sign, identical or similar to a registered mark, which would take unfair advantage of, or would be detrimental to, the distinctive character or the reputation of that mark. Nevertheless, as is clear from Article 8(5) of Regulation No 207/2009, the user of a sign similar to a mark with reputation may rely on ‘due cause’ for the purposes of using that sign, that being an expression of the general objective of that regulation, which is to strike a balance between, on the one hand, the interests of the proprietor of a trade mark in safeguarding the essential function of that mark and, on the other, the interests of a third party in using, in the course of trade, such a sign for the purposes of denoting the goods and services that it markets. In so doing, the claim by a third party that there is due cause for using a sign which is similar to a mark with a reputation cannot lead to the recognition, for the benefit of that third party, of the rights connected with a registered mark, but rather obliges the proprietor of the mark with a reputation to tolerate the use of the similar sign.

   In that regard, 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. 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 Article 8(5) of Regulation No 207/2009, since the weighing of the different interests involved cannot undermine the essential function of the earlier word mark KENZO, which is to guarantee the origin of the product.

   Accordingly, taking into account the extended protection granted by Regulation No 207/2009 to trade marks with reputation, the Board of Appeal was entitled to find that no due cause had been demonstrated by the applicant for the word mark KENZO ESTATE and that, as a result, the latter wanted to take unfair advantage of the reputation of the earlier word mark KENZO.

   (see paras 89-92, 94, 95)