No mark is invincible, even with strong reputation

In El Corte Ingles v Office for Harmonisation in the Internal Market (OHIM) (Case T-39/10), Tuzzi fashion v OHIM (Case T-535/08), Pucci International v OHIM (Case T-357/09) and El Corte Ingles v OHIM (Case T-373/09), the General Court has considered El Corte Ingles' attempt to defend and register the   and EMIDIO TUCCI trademarks. 

El Corte Ingles' Community trademark (CTM) application for  in Classes 1 to 45 of the Nice Classification was subject to opposition by Pucci International on the basis of Pucci's earlier CTM registrations, which included  and EMILIO PUCCI, on the grounds that:

• the application was similar to its earlier marks under Article 8(1)(b) of the Community Trademark Regulation (40/94), now the Community Trademark Regulation (207/2009); and
• the application would take unfair advantage of, and/or be detrimental to, the distinctiveness and reputation of its earlier marks under Article 8(5). 

At OHIM’S Opposition Division and Board of Appeal, it was deemed that the application was not to be allowed in relation to goods in Classes 9, 18, 20, 22, 24 and 25 on the grounds of Article 8(1)(b); further, the application was not allowed in respect of "cleaning materials" and "steel wool" in Class 12 on the grounds that the application of the later mark would cause detriment to the repute of Pucci’s earlier marks. 

Both El Corte Ingles and Pucci appealed the decision of the Board of Appeal (Cases T-357/09 and T-373/09). Pucci appealed in an attempt to have the application disallowed in relation to additional goods (including "watches", "jewellery", "cosmetics" and "glasses") and Emidio Tucci appealed the decision in an attempt to have its application accepted for all the goods it had covered. In respect of these appeals, Pucci was partially successful, as the General Court refused El Corte Ingles’ CTM application in respect of "watches", "jewellery", "cosmetics", "glasses" and "toilet paper", in addition to the goods for which the mark had already been refused.

In parallel, Tuzzi fashion opposed El Corte Ingles’ CTM Application for (Case T-535/08) on the basis of earlier German and international registrations for TUZZI in Class 25. El Corte Ingles opposed Pucci's trademark applications for PUCCI (Case T-39/10) on the basis of its earlier EMIDIO TUCCI (word and stylised) trademark registrations in Europe. Both oppositions were refused by the Opposition Division and Board of Appeal of OHIM on the grounds that the marks at issue were dissimilar, and El Corte Ingles and Tuzzi fashion appealed against these decisions respectively. Both appeals were rejected on the grounds that the marks were not similar.

The cases raised the following pertinent points.

First, with regard to the assessment of the similarity between the marks, the cases raised the issue of the relevance of a mark being a name. The above cases compared the following marks:

•  and  (found to be similar);
•  and TUZZI (found to be dissimilar); and
•  and PUCCI (found to be dissimilar).

Whilst there is a practice according to which Spanish and Italian consumers see surnames as more distinctive with regard to marks which are peoples’ names (see Fusco v OHIM (Case T-185/03), Paragraph 54; Murua Entrena v OHIM (Case T-40/03), Paragraphs 66 to 68), this has limits and is not automatically the case. It was emphasised that the comparison of the marks in question was not from the viewpoint of the average Spanish or Italian consumer, but instead from the viewpoint of the average consumer without considerations of nationality. Attention still had to be given to the particular constituent elements of the name in question, and which elements the average consumer would notice more. 'Emidio' was considered an unusual name, especially in Spain, while 'Tucci' is a much more common Italian surname; therefore, 'Emidio' was the most distinctive part of the mark. As the 'Emidio' element was the first part of the mark a consumer would see and hear, it could not be disregarded, and was an essential part of the mark. El Corte Ingles’ and Tuzzi fashion’s argument that the distinctive element of the EMIDIO TUCCI marks was 'Tucci' - and, therefore, was similar to TUZZI and PUCCI - was not accepted, and the marks were found to be dissimilar.

Even where an earlier mark is distinctive and has a reputation, if the marks in comparison are not similar, this cannot compensate for a lack of similarity in showing a likelihood of confusion. For there to be a likelihood of confusion, there must be some similarity between the marks so that the average consumer would believe that the two undertakings were economically linked. 

With regard to the assessment of the similarity of the goods and services, whilst in Case T-357/09 it was found that the marks in question were similar, and that the  mark had an enhanced distinctive character due to its longstanding use and reputation for luxury ladies clothing and footwear, there was a limit to the goods for which the marks would be considered similar. 

For goods and/or services to be considered similar on the grounds that they are complementary, it must be demonstrated that a consumer cannot use one without the other, or it would be important to use one of the goods in conjunction with the other. The fact that goods such as "jewellery", "watches", "cosmetics" and "glasses (eyewear)" were commonly marketed by fashion brands, which was accepted by the court, was insufficient to demonstrate that "clothing" in Class 25 was similar to "jewellery", "watches", "cosmetics" and "glasses".

The cases also raised the issue of the level of evidence required to provide proof of use. Where the opponent’s earlier rights were more than five years post-registration, the applicants in the above case challenged their use of the marks.  

The General Court offered some guidance as to what evidence would be acceptable to demonstrate that a mark has been used. In Case T-373/09, the court stated that, where a document clearly shows the mark affixed to a particular product, it is not always necessary to provide a translation of the document - as it has been demonstrated how the mark is used. In addition, press articles do not need to be complete to be admissible, and may be photocopied. A copy of the front page of a publication from which an article originates would be considered enough to demonstrate the authenticity of such article.

In terms of what the documents can prove, in Case T-39/10 the General Court stated that the use demonstrated must be with regard to a particular good or service. Therefore, evidence such as a Chamber of Commerce Certificate attesting to sale of “accessories” was considered too vague to show that the mark had been used in respect of goods such as "glasses" and "tie pins". An advertising campaign showing a mere suggestion of characteristics of the good, such as a photo of a celebrity wearing a suit playing golf, does not show that the mark has been used in relation to all of the goods and services involved in the evidence provided (in this case, sports equipment).

For evidence of proof of use to be accepted, where the mark in the evidence of use is not identical to the one for which proof of use is required, the distinctive character of the mark must not be substantially altered. Use related to a scripted handwritten device version of the word mark in question was considered to be a significant alteration of the distinctive characteristic of the mark.

The cases also showed the extent to which a reputation can prevent registration of a mark in respect of dissimilar goods and services. In Case T-357/09, the General Court noted the cumulative nature of Article 8(5) and the need to demonstrate all required factors. Where a mark has a very strong reputation, the proprietor of the earlier registration may not need to submit any evidence to demonstrate that unfair advantage was taken of, or detriment was caused to, the later application, as there would already be a prima facie case. However, consideration must be taken of the goods and services upon which the subject application would be used, and the assessment must be made in relation to each of these.

It was found that the registration of the application in question would take advantage of Pucci in respect of goods such as "jewellery", "watches", "glasses" and "cosmetics", as they are goods that are commonly marketed by holders of famous fashion brands. Consumers of those goods bearing the proposed mark would clearly establish a link between the marks in their mind, which would take advantage of the reputation of Pucci’s earlier marks.

The General Court accepted that the use of the proposed mark in relation to not only "steel wool" and "cleaning products" (which was accepted by the Board of Appeal), but also "toilet paper", would cause detriment to Pucci’s luxury reputation and would devalue the brand, as toilet paper is an everyday, low-value product, with a purpose clearly at odds with the luxury image of Pucci’s brand.

Where goods and services are completely unrelated to those for which the registered trademark proprietor in question has a reputation, such as goods and services in Classes 1, 13 and 40 ("chemicals", "firearms" and "treatment of materials") in this case, and for which the average consumer is not the same as that for the goods covered by the registered trademark (in relation to the goods in Classes 1, 13 and 40, it was deemed to be a specialist professional consumer, and not a member of the general public), it would be difficult to demonstrate that the subject application would take unfair advantage of, or cause detriment to, the distinctive nature or reputation of the earlier trademark. As such, the application in question was accepted for registration in respect of these goods and services.

In summary, these cases demonstrate that no mark, even with a strong reputation, is invincible, and that there are clear limitations to the basic principles of trademark law outlined above.

Amanda McDowall, Squire Sanders (UK) LLP, London