At the end of 2012, the EU court of Justice rendered three
decisions on the legal fight between El Corte Inglés S.A and
the Italian fashion designer Emilio Pucci, involving word trademark
"Pucci" and figurative trademarks "Emilio
Pucci" and "Emidio Tucci".
The passionate legal saga started in 1977, when El Corte
Inglés elected to operate in Spain, with an imaginary
Italian name Emidio Tucci. Emidio Tucci was a trademark intended to
be more attractive to consumers in conveying an image of Italian
Despite the opposition of Emilio Pucci, the trademark was
finally granted as a Spanish trademark to El Corte Inglés,
on the ground of lack of similarity between the names.
The fight re-ignited when both companies sought to register
their trademarks at the community level.
In the first round, the EU General Court (sentences
T-357/09 and T-373/09) refused
the registration of figurative trademark "Emidio Tucci"
in classes 3 and 21 due to its detrimental impact on the
exclusivity of the reputed trademark which was well known in Italy
and used to cover high-quality and luxury goods.
In the second round, the EU General Court (sentence
T-39/10) confirmed the registration of the word
community trademark "PUCCI" for original
classes 3, 9,
14, 1825 and
28, notwithstanding the opposition of El Corte
Inglés. The court stated that the likelihood of confusion
between trademark "PUCCI" and figurative
trademark has to be evaluated through consideration of the overall
impression given by the signs to the public and suggested that the
two trademarks are visually and phonetically different.
How will the saga unfold? Could there be more to come? Follow us
in future editions.
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