Judgment of the General Court (Sixth Chamber) of 27 September 2012 — El Corte Inglés v OHIM — Pucci International (PUCCI)

(Case T-39/10)

‛Community trade mark — Opposition proceedings — Application for the Community word mark PUCCI — Earlier national figurative and word marks Emidio Tucci and E. TUCCI — Application for the earlier Community figurative mark Emidio Tucci — Relative grounds for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation No 207/2009 — Genuine use of the earlier mark — Article 42(2) and (3) and Article 15(1)(a) of Regulation (EC) No 207/2009 — Unfair advantage taken of the distinctive character or the repute of the earlier mark — Article 8(5) of Regulation No 207/2009’

1. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Meaning — Interpretation having regard to the rationale of Article 42(2) and (3) of Regulation No 207/2009 (Council Regulation No 207/2009, Art. 42(2) and (3)) (see para. 17)

2. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Meaning — Criteria for assessment (Council Regulation No 207/2009, Art. 42(2) and (3)) (see paras 18-21)

3. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Meaning — Criteria for assessment — Requirement of solid and objective evidence (Council Regulation No 207/2009, Art. 42(2) and (3)) (see paras 22, 30)

4. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Use of the mark in a form differing by elements not altering the distinctive character of the mark (Council Regulation No 207/2009, Arts 15(1), second para., (a) and 42(2) and (3)) (see paras 33, 35-36)

5. 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 — Assessment of the likelihood of confusion (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 40, 51, 85, 88)

6. 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 — Word mark PUCCI — Figurative marks Emidio Tucci and word mark E. TUCCI (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 44, 65, 84, 86-87)

7. 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 — Similarity of the marks concerned — Criteria for assessment — Complex mark (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 52)

8. Community trade mark — Appeals procedure — Appeal before the EU judicature — Jurisdiction of the General Court — Review of the lawfulness of decisions of the Boards of Appeal — Account taken by the General Court of matters of law and fact which have not been raised previously before the departments of OHIM — Exclusion (Rules of Procedure of the General Court, Art. 135(4); Council Regulation No 207/2009, Art. 65) (see para. 71)

9. 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 — Similarity between the goods or services in question — Complementary nature of the goods or services (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 73-77)

10. 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 enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions (Council Regulation No 207/2009, Art. 8(5)) (see para. 92)

11. 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 enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Aim (Council Regulation No 207/2009, Art. 8(5)) (see para. 93)

Re:

ACTION brought against the decision of the First Board of Appeal of OHIM of 29 October 2009 (Case R 173/2009-1), relating to opposition proceedings between El Corte Inglés, SA and Emilio Pucci International BV.

Operative part

The Court:

1. Dismisses the action;

2. Orders El Corte Inglés, SA to pay the costs.

Judgment of the General Court (Sixth Chamber) of 27 September 2012 — El Corte Inglés v OHIM — Pucci International (PUCCI)

(Case T-39/10)

‛Community trade mark — Opposition proceedings — Application for the Community word mark PUCCI — Earlier national figurative and word marks Emidio Tucci and E. TUCCI — Application for the earlier Community figurative mark Emidio Tucci — Relative grounds for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation No 207/2009 — Genuine use of the earlier mark — Article 42(2) and (3) and Article 15(1)(a) of Regulation (EC) No 207/2009 — Unfair advantage taken of the distinctive character or the repute of the earlier mark — Article 8(5) of Regulation No 207/2009’

1. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Meaning — Interpretation having regard to the rationale of Article 42(2) and (3) of Regulation No 207/2009 (Council Regulation No 207/2009, Art. 42(2) and (3)) (see para. 17)

2. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Meaning — Criteria for assessment (Council Regulation No 207/2009, Art. 42(2) and (3)) (see paras 18-21)

3. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Meaning — Criteria for assessment — Requirement of solid and objective evidence (Council Regulation No 207/2009, Art. 42(2) and (3)) (see paras 22, 30)

4. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Use of the mark in a form differing by elements not altering the distinctive character of the mark (Council Regulation No 207/2009, Arts 15(1), second para., (a) and 42(2) and (3)) (see paras 33, 35-36)

5. 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 — Assessment of the likelihood of confusion (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 40, 51, 85, 88)

6. 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 — Word mark PUCCI — Figurative marks Emidio Tucci and word mark E. TUCCI (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 44, 65, 84, 86-87)

7. 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 — Similarity of the marks concerned — Criteria for assessment — Complex mark (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 52)

8. Community trade mark — Appeals procedure — Appeal before the EU judicature — Jurisdiction of the General Court — Review of the lawfulness of decisions of the Boards of Appeal — Account taken by the General Court of matters of law and fact which have not been raised previously before the departments of OHIM — Exclusion (Rules of Procedure of the General Court, Art. 135(4); Council Regulation No 207/2009, Art. 65) (see para. 71)

9. 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 — Similarity between the goods or services in question — Complementary nature of the goods or services (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 73-77)

10. 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 enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions (Council Regulation No 207/2009, Art. 8(5)) (see para. 92)

11. 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 enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Aim (Council Regulation No 207/2009, Art. 8(5)) (see para. 93)

Re:

ACTION brought against the decision of the First Board of Appeal of OHIM of 29 October 2009 (Case R 173/2009-1), relating to opposition proceedings between El Corte Inglés, SA and Emilio Pucci International BV.

Operative part

The Court:

1. Dismisses the action;