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

(Case T-373/09)

‛Community trade mark — Opposition proceedings — Application for Community figurative mark Emidio Tucci — Earlier Community figurative and national word and figurative marks Emilio Pucci and EMILIO PUCCI — Relative grounds for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — Genuine use of the earlier mark — Article 42(2) and (3) 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 — Duty to state reasons — Article 75 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. 21)

2. Community trade mark — Appeals procedure — Action 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. 45)

3. 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 para. 47)

4. 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 — Reputation of the mark in the Member State or in the Community — Concept — Criteria for assessment (Council Regulation No 207/2009, Art. 8(5)) (see para. 58)

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 enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Figurative mark Emidio Tucci — Figurative marks Emilio Pucci and word marks EMILIO PUCCI (Council Regulation No 207/2009, Art. 8(5)) (see paras 59-69)

6. Community trade mark — Procedural provisions — Statement of reasons for decisions — Aim (Art. 253 EC; Council Regulation No 207/2009, Art. 75, first sentence) (see para. 61)

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 enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Link between the marks — Criteria for assessment (Council Regulation No 207/2009, Art. 8(5)) (see para. 63)

8. 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 — Proof to be adduced by proprietor — Future, non-hypothetical risk of unfair advantage or damage (Council Regulation No 207/2009, Art. 8(5)) (see paras 64-65)

Re:

ACTION brought against the decision of the Second Board of Appeal of OHIM of 18 June 2009 (Joined Cases R 770/2008-2 and R 826/2008-2), relating to opposition proceedings between Emilio Pucci International BV and El Corte Inglés, SA.

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 — OHIM v Pucci International (Emidio Tucci)

(Case T-373/09)

‛Community trade mark — Opposition proceedings — Application for Community figurative mark Emidio Tucci — Earlier Community figurative and national word and figurative marks Emilio Pucci and EMILIO PUCCI — Relative grounds for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — Genuine use of the earlier mark — Article 42(2) and (3) 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 — Duty to state reasons — Article 75 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. 21)

2. Community trade mark — Appeals procedure — Action 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. 45)

3. 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 para. 47)

4. 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 — Reputation of the mark in the Member State or in the Community — Concept — Criteria for assessment (Council Regulation No 207/2009, Art. 8(5)) (see para. 58)

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 enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Figurative mark Emidio Tucci — Figurative marks Emilio Pucci and word marks EMILIO PUCCI (Council Regulation No 207/2009, Art. 8(5)) (see paras 59-69)

6. Community trade mark — Procedural provisions — Statement of reasons for decisions — Aim (Art. 253 EC; Council Regulation No 207/2009, Art. 75, first sentence) (see para. 61)

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 enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Link between the marks — Criteria for assessment (Council Regulation No 207/2009, Art. 8(5)) (see para. 63)

8. 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 — Proof to be adduced by proprietor — Future, non-hypothetical risk of unfair advantage or damage (Council Regulation No 207/2009, Art. 8(5)) (see paras 64-65)

Re:

ACTION brought against the decision of the Second Board of Appeal of OHIM of 18 June 2009 (Joined Cases R 770/2008-2 and R 826/2008-2), relating to opposition proceedings between Emilio Pucci International BV and El Corte Inglés, SA.

Operative part

The Court:

1. Dismisses the action;