EL CORTE INGLES APPEAL FAILS

The Court of First Instance (CFI) ruling in Case T-8/03 El Corte Inglés v OHIM, which dates from 13 December 2004, has now been made available in English. The IPKat thanks Melonie Atraghji (an IP PSL at Freshfields) for letting him know.

Somebody applied to register as a Community trade mark a figurative mark containing the words EMILIO PUCCI for goods in Classes 3, 18, 24 and 25. El Corte Inglés opposed, as the proprietor of the national figurative marks EMIDIO TUCCI for goods in Classes 3 and 25. The opposition was only partially successful, so El Corte Inglés appealed. The issue before the CFI was likelihood of confusion under Article 8(1)(b) of Council Regulation 40/94.

Emilio Pucci: stylish CTM application succeeds in part

Dismissing the appeal, following a lengthy review of the law and the facts, the CFI said (at para.73):

"OHIM and the intervener are therefore right to take the view, like the Board of Appeal, that the high level of distinctiveness allegedly acquired by the applicant’s earlier marks as a result of the recognition of those marks on the market and, accordingly, the reputation allegedly enjoyed by the marks were not sufficiently established by the material submitted by the applicant during the administrative procedure since it did not include adequately substantiated or verifiable objective evidence to make it possible to assess the market share held by the marks EMIDIO TUCCI in Spain, how intensive, geographically widespread and long-standing use of the marks has been or the amount invested by the undertaking in promoting them (see, by analogy, Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee [1999] ECR I‑2779, paragraph 51)".

Emidio Tucci: known, but not well known enough to fend off sound-alike rival

The IPKat is unhappy about the CFI's terminology. The applicant for the CTM is referred to as "the intervener" and the opponent is referred to as the applicant. While this may be technically correct, it's jolly difficult for us cats to follow. Surely if someone starts life as "the applicant" because he's the one who applies for the trade mark, it makes little sense to call someone else "the applicant" further on in the same proceedings.