This article first appeared on WTR Daily, part of World Trademark Review, in (February/2015). For further information, please go to www.worldtrademarkreview.com

In Tsujimoto v Office for Harmonisation in the Internal Market (OHIM) (Cases T-322/13 and T-393/12, January 22 2015), the General Court (Seventh Chamber) has dismissed two actions against decisions of the Second Board of Appeal of OHIM in cases involving identical KENZO marks.

In Case T-322/13, Mr Kenzo Tsujimoto filed a Community trademark (CTM) application for the word sign KENZO for services in Classes 35, 41 and 43 of the Nice Classification, while in Case T-393/12, the same CTM was filed for goods in Class 33.
Kenzo filed two oppositions against these applications on the basis of its earlier CTM KENZO (word mark), registered for goods in Classes 3, 18 and 25, under Article 8(5) of the Community Trademark Regulation (207/2009) (reputation of the earlier CTM).
The Opposition Division rejected the oppositions and Kenzo appealed. The Second Board of Appeal of OHIM upheld the appeals, observing that:

• the marks at issue were identical;
• Kenzo had shown that its earlier trademark had a reputation; and
• there was a risk that the use of the mark by Tsujimoto would have taken unfair advantage of the reputation of the earlier trademark.

Tsujimoto filed appeals against the Baard of Appeal’s decisions, arguing that Kenzo had submitted evidence in order to prove the reputation of its mark after the deadline fixed by the Opposition Division. Therefore, according to Tsujimoto, the Board of Appeal, by taking into account the evidence submitted after that date, had infringed Article 76(2) of the regulation, pursuant to which OHIM ‘may disregard facts or evidence which are not submitted in due time by the parties concerned’.
In addition, Tsujimoto argued that:

• there was no proof that the earlier trademark had a reputation since the submitted material was not accompanied by any written explanation; and
• the Board of Appeal, in its assessment of whether there was a risk that use of the mark applied for would take unfair advantage of the reputation of the earlier mark, had taken into account only the identity of the signs at issue and the reputation of the earlier trademark.

Finally, Tsujimoto claimed that the mark applied for corresponded to his forename and that it was therefore applied for and used with due cause.
The General Court noted that the Board of Appeal has discretion to decide whether it is appropriate to take into account evidence submitted after the dates specified by the Opposition Division, and that this is justified where the material submitted later is genuinely relevant far the case. In the present case, same of the evidence submitted later were crucial for the assessment of the reputation of the earlier trademark and, in any case, the evidence submitted after the deadline simply confirmed what had already been shown by the evidence duly submitted before the deadline in relation to the earlier trademark’s reputation.
Further, the court noted that Tsujimoto had ‘not specified the legal provision on which he bases his argument that, in order to be taken into account, the evidence submitted by [Kenzo] had to be accompanied by explanations’ and that, in any event, the material submitted by Kenzo in order to demonstrate the reputation of its trademark was accompanied by a brief description.

In order to determine whether there was a risk that use of the mark applied for would take unfair advantage of the reputation of the earlier mark, the court took into account the following findings:

• the marks at issue were identical;
• the earlier trademark was inherently distinctive;
• the earlier trademark’s reputation was substantial; and
• there was a degree of closeness between the goods or services concerned because they targeted sophisticated consumers.

Lastly, the court noted that, according to the regulation and the relevant case law, the fact that the applicant’s forename was Kenzo was not enough to constitute due cause for the use of the mark applied for, let alone to register a forename as a trademark.
In the light of foregoing, the two actions brought by Tsujimoto were dismissed.