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

(Case T‑357/09)

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

1.                     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 20-24)

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 — Requirement of solid and objective evidence (Council Regulation No 207/2009, Art. 42(2) and (3)) (see para. 25)

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 — Criteria (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 39)

4.                     Community trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Amendment of a decision by the Office — Scope (Council Regulation No 207/2009, Art. 65(3)) (see para. 46)

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 — Similarity between the goods or services in question — Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 47)

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 — 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 50-52)

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 (Council Regulation No 207/2009, Art. 8(5)) (see paras 64, 66-68)

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 — Aim — 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 65, 70-71)

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 enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Figurative mark Emidio Tucci and work mark EMILIO PUCCI (Council Regulation No 207/2009, Art. 8(5)) (see paras 72, 77-89)

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. Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 18 June 2009 (Joined Cases R 770/2008-2 and R 826/2008-2) as regards, first, the proof of use of the spectacles in Class 9 and, second, the application of Article 8(5) of Regulation No 207/2009 to the spectacles in Class 9, to the jewellery, costume jewellery and watches in Class 14 and to the lavatory paper in Class 16;

2. Dismisses the remainder of the action;

3. Orders Emilio Pucci International BV to pay one-third of the costs and OHIM and El Corte Inglés, SA to pay two-thirds of the costs.