Keywords
Summary

Keywords

1. Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark – Figurative marks ‘EMILIO PUCCI’ and ‘EMIDIO TUCCI’

(Council Regulation No 40/94, Art. 8(1)(b))

2. Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark – Extended protection of the earlier mark for goods or services which are not similar – Condition – Reputation of the mark in the Member State or in the Community – Definition – Criteria for assessment

(Council Regulation No 40/94, Art. 8(5))

Summary

1. There is no likelihood of confusion on the part of Spanish end consumers between the figurative sign EMILIO PUCCI, for which registration as a Community trade mark is sought in respect of ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery’ and ‘Textiles and textile goods, not included in other classes; bed and table covers’ within Classes 18 and 24 of the Nice Agreement, and the figurative marks EMIDIO TUCCI, registered previously in Spain in respect of ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices’ and ‘Clothing, footwear, headgear’ within Classes 3 and 25 of that agreement.

Although the conflicting signs are in fact similar within the meaning of Article 8(1)(b) of Regulation No 40/94, a likelihood of confusion can be ruled out because there is no similarity between the goods in question, in so far as they differ in many respects, such as their nature, intended purpose, origin and distribution channels, and there is also no competition between those goods.

(see paras 38, 43-44, 59)

2. In order to satisfy the requirement of reputation within the meaning of Article 8(5) of Regulation No 40/94 on the Community trade mark, which provides for extended protection of the registered mark for goods or services which are not similar, an earlier national or Community mark must be known by a significant part of the public concerned by the goods or services covered by that trade mark. In examining whether this condition is fulfilled, the national court must take into consideration all the relevant facts of the case, in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the amount spent by the undertaking in promoting it.

(see para. 67)