EN Official Journal of the European Union C 63/9

Appeal brought on 12 December 2012 by El Corte Inglés, S.A. against the judgment of the General Court (Sixth Chamber) of 27 September 2012 in Case T-373/09 El Corte Inglés v OHIM — Pucci International (Emidio Tucci)

(Case C-582/12 P)

2013/C 63/16

Language of the case: Spanish

Parties

Appellant: El Corte Inglés, S.A. (represented by: J.L. Rivas Zurdo and E. Seijo Veiguela, abogados)

Other parties to the proceedings: Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) and Emilio Pucci International BV

Form of order sought

The appellant claims that the Court should:

— set aside the judgment of the General Court of 27 September 2012 in Case T-373/09 inasmuch as it conflicts with the present action

— order OHIM to pay the costs of El Corte Inglés, S.A.

— order Emilio Pucci International BV to pay the costs of El Corte Inglés, S.A.

Pleas in law and main arguments

The prospectuses or periodicals or copies of other documents submitted by the opposing party have never been produced in full or in their original form. The result is that the evidence presented by the opposing party could not be taken into account for any specific class. Nonetheless, the General Court, in paragraphs 26 and 27 of its judgment, which focuses on the need to present only original documents, considers that there is no fraud, which is certainly not what had been alleged.

The documents set out in Annex 2 must be excluded because the dates and the references to publication have clearly been inserted by the opposing party. Given that those issues have not received an adequate response in the judgment, the applicant also considers that the documents contained in the second item of evidence should be declared inadmissible and, consequently, neither use nor reputation of any of the opposing trademarks in class 25 can be deduced from those publications.

As to the comparison of the goods and services at issue, and all the submissions made up to this point: the opposing party, Emilio Pucci International, B.V. has not proved the use of its earlier Italian trademarks and therefore it is sufficient to carry out a comparison in respect of the application inasmuch as it refers to Classes 18 and 24 of community trademark 203570.

The opposing party acknowledged that the ‘Emilio Pucci’ trademark fell into disuse after the 70s. Further, it should also be noted that the trademark ‘Emidio Tucci’, which is a renowned trademark in Spain and has clearly proved to be a success in that country, relates to the name and surname of two real persons, Emidio Tucci and Emilio Pucci. These issues are part of the submissions which lie at the heart of the proceedings before the OHIM.

Evidence of an unfair advantage taken of the distinctive character or the repute of the trademark of the opposing party must show the existence of an intention to trade upon its reputation (see Spa-Finders, paragraph 51 (1)). Nonetheless, the opposing party has not made any submissions in that regard.

Therefore, when the opposing party alleges real prejudice or an unfair advantage, it must provide evidence thereof, or carry out an assessment of the probabilities and provide evidence which shows that the risk of unfair advantage is not merely hypothetical (paragraph 64 of the judgment), in relation to the type of prejudice allegedly suffered, or to the applicant’s unjust advantage; the mere general allegation of Article 8(5) of Regulation No 40/94 (2) is not sufficient.

The opposing party, Emilio Pucci International, has not fulfilled its obligation to substantiate those allegations; rather, it simply reasons in general, without detail, about those issues, despite which the General Court, in our respectful opinion, inappropriately, supplements the opposing party’s omission (see paragraph 65 of the judgment) and considers in its judgment that the matter has been proved.

The consequences for the case come about in paragraphs 66 to 68 of the judgment, which are based on the premise that has previously been shown to be incorrect: if the opposing party, which bears the burden of proof, has not shown the unfair advantage or prejudice to repute, it cannot avoid carrying out the assessment of which goods fall foul of the restrictions set out in Article 8(5) of Regulation No 40/94.

(1) Case T-67/04 Spa Monopole v OHIM — Spa-Finders Travel Arrangements (SPA-FINDERS) [2005] ECR II-01825

(2) Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 011 p. 1)