European Union

The European Court of First Instance (CFI) has allowed the marks EMILIO PUCCI and EMIDIO TUCCI to coexist. It held that Emilio Pucci Srl's proposed registration for EMILIO PUCCI in Classes 18 and 24 of the Nice Classification was not confusingly similar to El Corte Inglès's (ECI) Spanish mark EMIDIO TUCCI registered in Classes 3 and 25.

Both trademarks are figurative marks showing the name in a handwritten, underlined 'signature' style. In the decision under appeal, the Board of Appeal of the Office for Harmonization in the Internal Market (OHIM) found that the signs were visually and phonetically similar. This was not contested before the CFI. Consequently, the main issue was whether the degree of similarity of goods was sufficiently great to establish that the marks were confusingly similar.

The goods in question included leather goods and textiles (Classes 18 and 24) on the one hand, and clothing, footwear and cosmetics (Classes 3 and 25) on the other. ECI claimed that there was a very close link between the relevant goods as all the classes (i) relate to the fashion and textile sectors, and (ii) are concerned with clothing itself, textiles to be used in making them, accessories or cosmetics. Furthermore, the goods in question are sold through the same sales channels. In addition, ECI claimed that the EMIDIO TUCCI mark has a highly distinctive character.

Referring to case law, the CFI stated that the likelihood that the public might believe that the goods in question come from the same or economically-linked undertakings constitutes a likelihood of confusion. However, in the present case, the CFI found that the goods in question should not be regarded as similar and, consequently, the marks were not confusingly similar.

The CFI rejected the argument that the unusually high level of distinctiveness of the EMIDIO TUCCI mark should be taken into account in the overall assessment of the likelihood of confusion. It upheld the Board of Appeal's finding that there was insufficient evidence to rule that the use of the mark EMILIO PUCCI would take unfair advantage of, or be detrimental to, the distinctiveness or the reputation of the EMIDIO TUCCI mark.

Similarity of goods can be an extremely complicated aspect of the assessment of confusing similarity between trademarks. The fact that the OHIM Opposition Division, the Board of Appeal and the CFI came to different conclusions highlights this issue.

For discussion of another case involving ECI, see El Corte Inglès fails in bid for MUNDICOR registration.

Lisbet Andersen, Bech-Bruun Dragsted, Copenhagen

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