TUESDAY, 2 OCTOBER 2012
General Court tales: who came first, Pucci, Tucci or Tuzzi? (Part I)
On September 27, 2012 the General Court issued four judgments regarding opposing fashion designers from three different jurisdictions taking place in the most European battle ground for trademarks, the OHIM.
In Case T-535/08, El Corte Inglés (Spain) had registered the figurative trademarkwhich was opposed by Tuzzi Fashion GmbH (Germany) on 21 March 2008 on the basis of earlier German right and international trademark with effect in Austria, France, Benelux and Poland, namely the word sign TUZZI.
The Opposition was rejected by OHIM because the marks were found dissimilar. The Court upheld the Board of Appeal's decision and dismissed the opponent’s arguments that the marks would be very similar as far as TUCCI and TUZZI.
It found that even if for the Italian and Spanish consumer, the surname is usually held to be the most distinctive element, according to case-law, the signs have to be examined on a case by case basis. In the present case, the word TUCCI will not be seen as the most distinctive element of the contested CTM because the name EMIDIO is just as uncommon as the surname. Further, even if EMIDIO TUCCI is a well-know designer in Spain, the relevant public is outside of Spain, and given the visual differences between the sign (the contested CTM is represented as a signature whereas the earlier right is a word mark), there is no likelihood of confusion between the signs in question.
Thus, in this case the Spanish designer protected efficiently its trademark signature EMIDIO TUCCI and tried to enforce it against EMILIO PUCCI in the following case.
In case T-39/10, Emilio Pucci (Netherlands) had applied for CTM registration PUCCI in classes 3,9,14,18,25 and 28 which was opposed by El Corte Inglés (Spain) in 2006 on the basis of earlier CTM and Spanish figurative marks and word mark E. Tucci registered for goods in Classes 3,9,14,25 and 28.
The OHIM, as confirmed by the General Court, dismissed the opposition.
First, it held that the opponent had provided sufficient proof of the genuine use of the trade marks referred to only for ‘ clothing and footwear’ included in Class 25 and covered by the Spanish figurative mark registered under No 855782. However, an advertisement representing George Clooney bearing the Opponent’s clothes and carrying tennis rackets and golf clubs was not held sufficient to prove genuine use for goods in Class 28 since the accessories are purely illustrative or suggestive elements.
As regards the comparison of goods, the Court stated that only the goods in Class 25 covered by the mark applied for were identical or similar to the goods covered by the earlier mark. Furthermore, there is a similarity between the goods in Class 25 covered by the earlier mark and some goods in Class 18, namely shoulder bags, attache-cases, briefcases, pouches, pocket wallets, purses, key-holders and card holders, covered by PUCCI whereas the goods in Class 25 covered by the earlier mark and those in Class 28 covered by the mark applied for are not similar.
With regard to the likelihood of confusion, the Court found that the marks at issue would be perceived as being different by the relevant public because of the word element ‘emidio’ of the earlier mark, their different length and the different initial letters of the surnames making up those marks.
Therefore, even if it considered that the earlier mark is well-known in Spain for men’s clothing and footwear, it found that the visual and phonetic differences between the two marks were sufficient to preclude a likelihood of confusion between the marks at issue. Third, with regard to the damage to the reputation of the earlier mark, since the marks are dissimilar, there is no basis to examine this ground.
Before drinking his favorite coffee (what else), George used to model "la marca del hombre" (the man's brand) here, here and here.
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