Luxury fashion house Kenzo has failed in a bid to protect its name down under, with authorities dubbing its reputation here “somewhere on the scale between modest and moderate”.
The Japanese designer brand has been unsuccessful in preventing an Australian trade mark registration from wine brand Kenzo Estate.
In a decision handed down by the Trade Marks Office, the hearings officer ruled that while the two marks were substantially identical, the goods produced under both brands were not similar. This was despite two previous collaborations between Hennessy and Kenzo for a line of cognac, which was dismissed as a one-off exercise in co-marketing rather than product extension.
The Trade Marks Office was also skeptical about the reputation of Kenzo, deeming it “somewhere on the scale between modest and moderate” and better known among fashion conscious females than males. The hearings officer ruled that Kenzo was not a unique title and that same marks co-existed on the US Trade Marks Register.
“Neither do I consider that the degree and extend of the reputation of the opponent’s Kenzo trade marks is so large that it is, on its own likely to lead to confusion or deception.”
A similar case involving Gucci and alcoholic beverages erupted in 2004, but the matter never proceeded to a hearing and the opposed trade mark was withdrawn.
