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Thursday, 4 October 2012

Pucci v Tucci: latest developments in a protracted legal saga

This Kat is a great admirer of all things Italian.  To name a few: its magnificent ancient architecture, dramatic Renaissance art, passionate opera, mouth-watering cuisine -- and the inimitable acting of its fabled footballers. One thing he has not hitherto fully appreciated, though, is the goodwill inherent in Italian surnames within the fashion sector, whether they are attached to real Italians or imaginary ones.  He is thus pleased to have received this handy summary by the excellent Marie-Gabrielle Plasseraud of the long and winding dispute between Pucci and Tucci which promises/threatens to assume positively Budweiserian proportions.  Let Marie-Gabrielle take up the story here:

Emilio Pucci v Emidio Tucci: latest developments in a protracted legal saga

Last week, the European Union's General Court ('GC') rendered three decisions in the longstanding international saga involving the trade marks ‘Emilio Pucci’ and ‘Emidio Tucci’.

Who hides behind the two Italian-sounding names ‘Emilio Pucci’ and ‘Emidio Tucci’ ?

Emilio Pucci: touchy
about Tucci
The Emilio Pucci fashion house, founded in the late 1940s by the Italian aristocrat Emilio Pucci, became famous in the 1960s. Celebrities such as Jackie Kennedy and Marilyn Monroe were known for sporting Pucci’s lively colours and geometrical designs. ‘Emidio Tucci’ is a menswear brand launched in the late 1970s by the Spanish department store El Corte Inglés. The name Emidio Tucci was initially coined to convey an image of Italian elegance. Its popularity increased in Spain when the actor George Clooney appeared in Emidio Tucci TV commercials across the country.

First Round: El Corte Inglés v Emilio Pucci

The saga started with a 2002 decision of the Fourth Board of Appeal of OHIM that upheld the Opposition Division’s rejection of a figurative Community trade mark (CTM) representing Emilio Pucci’s signature (R 370/2001-4, Emilio Pucci v El Corte Inglés, 16 December 2002).

In a second case, the Court of First Instance (CFI, now  the GC) dismissed El Corte Inglés’ appeal against an OHIM decision partially allowing the registration of another ‘Emilio Pucci’ figurative CTM – as reported here by the IPKat (T-8/03, El Corte Inglés v OHIM/ Emilio Pucci, 2004, ECR II-04297). The main claim of the Spanish company regarding the complementary nature of products of different classes was dismissed (para. 46-59). The appeal against this judgment was dismissed (C-104/05 P, El Corte Inglés v OHIM/ Emilio Pucci, 2006, ECR I-00096).

In a third case, El Corte Inglés opposed a CTM application for the word trade mark ‘Pucci’ in classes 3, 9, 14, 18, 25 and 28. The opposition was rejected in its entirety (B 994 758, 28 November 2008). Last week, the GC upheld OHIM’s decision (T-39/10, El Corte Inglés v. OHIM/ Emilio Pucci, 27 September 2012).

Second Round : Emilio Pucci v El Corte Inglés

Like the 2004 decision mentioned above, some of the GC rulings issued on 27 September are surprisingly not available in English (they're  only in French and Spanish). See the IPKat’s comments here on the language issue. Some insight into these decisions is provided below:

In 2008, the Opposition Division dismissed an opposition filed by Emilio Pucci against an ‘Emidio Tucci’ figurative CTM in classes 1 to 45 (B 815 185, Emilio Pucci v El Corte Inglés, 31 March 2008). Upon review, the Second Board of Appeal partially cancelled the challenged ruling concerning some products (Joined Cases R 770/2008-2 and R 826/2008-2, El Corte Inglés v Emilio Pucci, 18 June 2009). Pucci then filed an appeal with the GC (T-357/09, Emilio Pucci v OHIM/ El Corte Inglés, 27 September 2012).

The Court upheld OHIM’s finding that the 1966 Italian ‘Emilio Pucci’ trade mark had acquired a reputation in Italy with respect to apparel and shoes for women (para. 72). It examined whether this trade mark fulfilled the four cumulative conditions set forth by prior case-law for a trade mark to be afforded a broader protection under Article 8(5) of Regulation 207/2009. The Luxembourg judges confirmed OHIM’s ruling that the trade mark met the conditions and that its scope could thus be extended not only to perfume and cosmetics (Class 3) but also to products such as spectacles (Class 9), jewellery and watches (Class 14) (para. 83).

As far as the fourth condition of unfair advantage is concerned, OHIM ruled that the registration of ‘Emidio Tucci’ for cleaning products (Class 3), material for cleaning purposes and steel wool (Class 21) could damage the reputation of the earlier trade mark. In the present case, the CG applied the same reasoning to unscented toilet paper (Class 16) (para 85)!

In parallel, an annulment action was brought by El Corte Inglés against the 2008 OHIM decision mentioned above. This appeal was dismissed by the GC (T-373/09, El Corte Inglés v OHIM/ Emilio Pucci, 27 September 2012).

How about in the rest of the world?

In the USA, the Trademark Trial and Appeal Board upheld the Italian design company’s opposition against the registration of two ‘Emidio Tucci’ trade marks (Opp. No. 91169638 and 91188824, Emilio Pucci v El Corte Inglés, 1 April 2010).

In Europe, Italian and Czech courts have also rendered decisions in the battle between the two combatants.

What’s next ?

At this stage, a figurative Emilio Tucci’ CTM application remains pending. Two oppositions have been lodged against it, one of them by El Corte Inglés.

Surprisingly, the Gucci Group – named after its Italian founder Guccio Gucci – did not play any part in this ongoing legal saga. 
The IPKat really does not approve of this sort of litigation, which does nothing to enhance the brand strength of either party and makes them both look a little like characters in a comic opera.  El Corte Inglés -- which incidentally is one of this Kat's favourite stores -- should long ago have been persuaded to opt for an Italianate name that serves the same marketing function as the one it contrived, and the two businesses should then have been able to get back to their core activities of making and selling products for their respective markets. Merpel mewses on the value of an Italian spelling: Pucci is great, but poochy isn't.

Pucci, Tucci -- and Tuzzi! Two-part note on Class 46 by Laetitia Lagarde here and here.
What does Pucci mean? Click here

2 comments:

Daniela Ampollini said...

I read the link "What does Pucci means" which suggests that in Italian "Pucci" is the plural for "fleas". This is too wrong! Fleas in Italian is "pulci" which may sound similar, but really sounds different to an Italian audience. Instead it seems that Pucci, a Tuscan family name, is a diminutive for Jacopo (Jacopo, Jacopuccio, Puccio, Pucci) and that the Puccis therefore are the descendants of a famous Jacopo. In Italian Pucci is also generally used as a hypocoristic name, a "pet name". Could be a good name for a cat, in fact.

Anonymous said...

The readiness of "El Corte Inglés" to litigate over its trademarks signally contrasts with the rather low valuation it once (in)famously gave them.

(Short explanation for those who don't understand Spanish: "El Corte Inglés" is a family-owned private corporation whose shareholders, all heirs of the founder, are forbidden from selling their shares to investors from outside the family. When some of the heirs tried to cash out by selling the shares back to the company, his valuation and that given by the company differed by a very significant factor. One of the reasons for this difference what that the company gave its trademarks a value of...zero, arguing, with a straight face, that trademarks had no value since they were intangible. Somewhat surprisingly, although the company lost in first instance, it then won in appeal and forced a settlement on its own terms.)

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