EMILIO PUCCI tries to pick bone with PUCCI

United Kingdom

Richard Arnold QC, an appointed person of the UK Intellectual Property Office, has rejected an appeal by Emilio Pucci Srl against the dismissal of its opposition to an application to register the sign PUCCI as a UK trademark (Case O-168-07, June 13 2007).

Caroline Kavanagh's PUCCI application was for "cosmetics, shampoos and materials for grooming of pets" in Class 3 of the Nice Classification and "leather and imitation leather goods, clothing and accessories for pets" in Class 18. Emilio Pucci, which held an earlier UK registration of the word mark EMILIO PUCCI for "articles of outerclothing for women" in Class 25, opposed on the grounds that:

  • given the similarity of the respective marks and goods, there was a likelihood of confusion; and

  • given the earlier mark's reputation, Kavanagh's mark would damage its repute or distinctive character.

The hearing officer dismissed the opposition, finding that

  • Emilio Pucci's mark was clearly a man's name while Kavanagh's was equally clearly a play on the word 'pooch' (an allegedly endearing or informal term for a dog) - there was thus no likelihood of confusion; and

  • on the evidence, it was not established that the EMILIO PUCCI mark had the requisite reputation.

Emilio Pucci appealed.

The appointed person dismissed the appeal. In his view the hearing officer was entitled to conclude that Emilio Pucci had not established that its trademark had a sufficient reputation at the relevant date to justify an enhanced scope of protection beyond that warranted by its inherent distinctiveness; there was no error of principle in his approach.

The appointed person noted that the hearing officer's overall conclusion that there was no likelihood of confusion was based upon the combined effect of what he assessed as the low degree of similarity between the respective goods, bearing in mind that Kavanagh's goods were all for pets, and what he assessed as the low degree of similarity between the respective marks, bearing in mind in particular the fact that Kavanagh's mark would be seen as a play on the word 'pooch'. The appointed person considered that the hearing officer was entitled to reach this conclusion.

Jeremy Phillips, IP consultant to Olswang, London

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