Trade mark decision

BL Number: O/256/06
Decision date: 11 September 2006
Hearing Officer: Mr G Salthouse
Mark: PUCCI
Classes: 03, 18
Applicant: Caroline Kavanagh
Opponent: Emilio Pucci S.R.L.
Opposition: Sections 5(2)(b), 5(3), 5(4)(a) & Section 56

Result

Section 5(2)(b): Opposition failed. Section 5(3): Opposition failed. Section 5(4)(a): Opposition failed. Section 56: Opposition failed.

Points Of Interest

The opponent appealed to the Appointed Person. In his decision dated 13 June 2007 (BL O/168/07) the Appointed Person upheld the Hearing Officer's decision and dismissed the appeal.

Summary

The opponent owns a registration in Class 25 for the mark EMILIO PUCCI in respect of a range of outer clothing for women. It also filed evidence of use of its mark and claimed there had been user in respect of ladies clothing, some items of clothing for men and home furnishings. The evidence indicated turnover of almost £1m in 2002 but the supporting documentation was not well focused and the Hearing Officer was unable to find that the mark EMILIO PUCCI had an enhanced reputation through use. However, he accepted that it was a distinctive mark.

The letter “i” in the applicant’s mark is in the shape of a bone for dogs and the cosmetic goods etc in Class 3 and the leather goods in Class 18 are all for the care and grooming of pets. The applicant says the mark in suit was chosen with the famous fashion house GUCCI in mind to suggest “fashion for dogs”.

Under Section 5(2)(b) the Hearing Officer compared the respective goods and concluded that they were not similar. He accepted that fashion houses might extend their trade into goods in Classes 3 and 18 but this did not mean the goods were similar, particularly so in this case as the goods of the applicant are for the care and grooming of pets. As regards the respective marks EMILIO PUCCI an PUCCI (stylised) the Hearing Officer decided that they were not confusingly similar as EMILIO PUCCI would be seen as a name whereas PUCCI (stylised), in relation to goods for pets, would be seen as a play on the word “pooch” a recognised slant term for a dog. Overall there was no likelihood of confusion and opposition failed on this ground.

The opponent also failed on the grounds under Sections 5(3), 5(4)(a) and Section 56 because of the lack of a signification reputation and goodwill and because of the Hearing Officer’s finding under Section 5(2)(b) that the respective marks were not confusingly similar.

Full decision O/256/06 77Kb