Trade mark decision

BL Number

O/024/08

Decision date

30 January 2008

Hearing officer

Mr D Landau

Mark

PUCCI Designer Petwear & device of a Union Flag

Classes

06, 20, 21

Applicant

Pucci Petwear Ltd

Opponent

Emilio Pucci SRL

Opposition

Sections 5(3), 5(4)(a) & Section 56

Result

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

Points Of Interest

• 1. The Hearing Officer did not accept that the presence of a device of a Union flag in the applicant’s mark was a relevant feature.
• 2. The applicant states on its web site that it is not associated with EMILIO PUCCI. The Hearing Officer did not take this into account in reaching his decisions.
• 3. See also BL O/256/06 and BL O/168/07 involving the same parties. In the earlier proceedings the opponent failed in its opposition.

Summary

The opponent owns the mark EMILIO PUCCI in Class 25 in respect of a range of outer clothing for women. It operates in the designer sector of the market and it filed evidence to establish that it had a reputation and goodwill in the marks EMILIO PUCCI and PUCCI in relation to ladies clothing. It also filed evidence to show that famous fashion designers often extend their brand into goods for the care of pets, the field in which the applicant operates.

The Hearing Officer decided that the opponent did not have a sufficient reputation to sustain its ground under Section 5(3); nor was it a famous or well known mark in the context of Section 56. Both grounds dismissed.

Under Section 5(4)(a) the Hearing Officer accepted that the opponent had a reputation and goodwill in the mark PUCCI at the relevant date; the date of application of the mark in suit. Thus essentially identical marks were at issue and in view of the practice of “brand stretching” into activities such as pet care, the Hearing Officer decided that the public could well assume a connection with the PUCCI fashion house or by way of licence. The Hearing Officer went on to find the opponent successful on this ground

---

BAILII: Copyright Policy | Disclaimers | Privacy Policy | Feedback | Donate to BAILII
URL: http://www.bailii.org/uk/cases/UKIntelP/2008/o02408.html