At the end of 2012, the EU court of Justice rendered three decisions on the legal fight between El Corte Inglés S.A and the Italian fashion designer Emilio Pucci, involving word trademark "Pucci" and figurative trademarks "Emilio Pucci" and "Emidio Tucci".
The passionate legal saga started in 1977, when El Corte Inglés elected to operate in Spain, with an imaginary Italian name Emidio Tucci. Emidio Tucci was a trademark intended to be more attractive to consumers in conveying an image of Italian elegance.
Despite the opposition of Emilio Pucci, the trademark was finally granted as a Spanish trademark to El Corte Inglés, on the ground of lack of similarity between the names.
The fight re-ignited when both companies sought to register their trademarks at the community level.
In the first round, the EU General Court (sentences T-357/09 and T-373/09) refused the registration of figurative trademark "Emidio Tucci" in classes 3 and 21 due to its detrimental impact on the exclusivity of the reputed trademark which was well known in Italy and used to cover high-quality and luxury goods.
In the second round, the EU General Court (sentence T-39/10) confirmed the registration of the word community trademark "PUCCI" for original classes 3, 9, 14, 18 25 and 28, notwithstanding the opposition of El Corte Inglés. The court stated that the likelihood of confusion between trademark "PUCCI" and figurative trademark has to be evaluated through consideration of the overall impression given by the signs to the public and suggested that the two trademarks are visually and phonetically different.
How will the saga unfold? Could there be more to come? Follow us in future editions.
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