The IPKat's attention was drawn by Lawtel to this recent decision of Appointed Person Richard Arnold QC in Case O-168-07 Kavanagh v Emilio Pucci Srl, rendered on 13 June but now surfacing on the internet.
This was an appeal by Emilio Pucci against the dismissal of its opposition to Kavanagh's application to register the sign PUCCI (mainly a word, but with a dog-bone shaped "i") as a UK trade mark for "cosmetics, shampoos and materials for grooming of pets" in class 3 and "leather and imitation leather goods, clothing and accessories for pets" in class 18. Emilio Pucci, who held an earlier UK registration of the word mark EMILIO PUCCI for "articles of outerclothing for women" in class 25, opposed on the bases that (i), given the similarity of the respective marks and goods, there was a likelihood of confusion, and that (ii) given the earlier mark's reputation, Kavanagh's mark would damage its repute or distinctive character.
The hearing officer dismissed the opposition: 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. Nor, or the evidence, was it established that the EMILIO PUCCI mark had the requisite reputation. Emilio Pucci appealed.
Richard Arnold QC dismissed the appeal. In his view the hearing officer was entitled to conclude that Emilio Pucci had not established that its trade mark had a sufficient reputation at the relevant date to justify either an enhanced scope of protection beyond that justified by its inherent distinctiveness or protection in relation to its reputation; there was no error of principle in his approach. The hearing officer had not erred in his characterisation of the relevant market; he was also entitled to conclude that the degree of similarity between Kavanagh's goods and those of Emilio Pucci was low, particularly so far as class 3 goods were concerned, but not so low as by itself to preclude a likelihood of confusion.
At para.28 the Appointed Person added:
"Counsel for the opponent complained that the hearing officer’s decision was “generally suffused with a predisposition to be sceptical, rude and disrespectful of certain persons or classes of persons and of the general contention that there can be ‘canine couture’.” In my view there is no substance in this complaint."The IPKat fully endorses this position. Anyone who has ever had to deal with the UK-IPO staff will know that they are all fervent believers in the concept of canine couture. Yes, says Merpel, who suspects that one or two of them have been known to dress a la MONGRELLE ...
Canine couture here, here and here