A Tale of Two Kenzos

29 August 2013

Cyril Chua

Kenzo v Tsujimoto Kenzo [2013] SGIPOS 2

Tsujimoto Kenzo (Applicant) applied to protect the trade mark “KENZO ESTATE” in Singapore in respect of “Wine; alcoholic beverages of fruit; western liquors (in general)". This application was opposed by Kenzo (Opponent), the fashion house founded by Kenzo Takada, who has an interest in the manufacture, sale, and distribution of a wide range of products including clothing, fragrances, skincare products, houseware and leather goods.

The opposition proceeding was heard before the Principal Assistant Registrar of Trade Marks, Ms See Tho Sok Yee, who found for the applicant.

In dismissing the opposition, the Principal Assistant Registrar found, inter alia, that the use of the Applicant’s trade mark is unlikely to cause confusing connection with the Opponent. The Principal Assistant Registrar was guided by the following factors enunciated in Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another and another appeal [2013] SGCA 26:

(a) the disparity in the prices of the goods or services, where this goes towards drawing out the real and substantive differences between them or towards highlighting the different degrees of care likely to be applied by the prospective customer in each instance.

(b) the nature of the customer and of the article in question

(c) the degree of similarity between the contesting marks and the overall impression given by them;

(d) the imperfect recollection of the average consumer;

(e) the locations at which the goods or services concerned are sold or offered (because this might aid in assessing the real similarities or differences between the goods or services as well as between the respective groups of customers that each category of goods or services might attract

(f) the steps taken by the defendant to differentiate his goods or services from those of the registered trade mark proprietor, because this goes directly to the degree of similarity or difference between the goods or services in question; and

(g) the importance of the goods or services concerned to the consumer, whether or not acquired on prescription, and dietetic products in general may be regarded as products to which consumers who are reasonably well-informed and reasonably observant and circumspect will pay a high degree of attention.

In the present case, the nature of the goods and services of the Opponent and the Applicant were very different. The Opponent deals in retail and wholesaling services in the field of high-end fashion, their offerings being mainly clothes, shoes, perfumes, cosmetics and other accessories whereas the Applicant is a Californian wine producer.

The Principal Assistant Registrar found that given that Applicant's wine is likely to be sold to exclusive wine retailers and/or directly to hotels and restaurants with a reputation for fine dining, while the Opponent's goods are likely to be sold in Singapore mainly through their Ngee Ann City Boutique. Whilst the locations at which the Opponent’s and Applicant's goods are sold will not be the same, they appear targeted at the same relevant public. However, given the high prices of both the Opponent's and the Applicant's goods, the relevant consumer is likely to attach more importance to what is being purchased and exercise a higher degree of circumspection in this regard. Upon encountering the Applicant's wine bottle, it would be quite obvious to the relevant consumer that the wine comes from the Napa Valley in California and is not a wine of French origin. As a discerning consumer he or she would know that wines are typically identified by the region that they come from. The reference to the word "ESTATE" in "KENZO ESTATE" would evoke a place in the Napa Valley to the relevant consumer. Being from a discerning class of consumers, he or she is likely to be able to differentiate the Applicant's wine easily from the "KENZO" fashion brand which is of French origin.

Overall, on a balance of probabilities, it was held that the Opponent’s have not established that the use of the Applicant’s mark would indicate a confusing connection with the Opponent.