“Compromises are made for relationships, not for wine” – Sir Robert Scott Caywood
For those interested in fashion, here is a first case that illustrates the issues concerning trademark infringements in an accessible way. Kenzo, the french fashion house founded in 1970 by the japanese- born designer Kenzo Takada, filed a lawsuit against the owner of a winery back in 2013. The cause was an alleged trademark infringement on the luxury fashion house´s brand.
The winery, called Kenzo Estate, was about to launch their alcoholic beverages in Singapore and had therefore filed a trademark registration for the “KENZO ESTATE” word mark, which also eventually got published. But, the french fashion house opposed this matter since they already had a Kenzo fashion store in the country. So, was the winery´s use of the word mark “Kenzo Estate” to be considered as a trademark infringement on the Kenzo brand?
For something to be considered as a trademark infringement, the concept of the likelihood of confusion is at a central focus. An important distinction must be made between the cases where the right- owner and the alleged infringer are dealing with competing goods or services, and the cases where the goods at hand are completely unrelated.
If the former situation is at hand – the court will most likely find a trademark infringement. This, given that the two brands are sufficiently similar so that the consumers most likely will be confused about the origin of the goods (applied in this case, thinking that the fashion house Kenzo is selling the wine).
If the latter is at hand, the game plan changes. Confusion is stated to be unlikely when the goods are unrelated and when the brands are visually dissimilar – as the court claimed in this case with the fashion house Kenzo and the winery Kenzo Estate.
Since Kenzo Estate´s products were alcoholic beverages and the fashion house Kenzo was in the fashion industry, the court said that the two companies were not dealing with competing goods. In combination with the fact that the brands were found to be dissimilar, the court concluded that no confusion among consumers allegedly could occur. This resulted in the fact that the registration of the Kenzo Estate word mark was not claimed to constitute a trademark infringement on the fashion house Kenzo in Singapore.
And so, this time the french fashion house lost the battle against the Kenzo Estate, and the winery´s beverages could start flowing in the streets of Singapore.
Compromises are obviously made for relationships, not for wine.