Published article in WTR Daily (26 July 2012) 

In Guccio Gucci SpA v Office for Harmonisation in the Internal Market (OHIM) (Case T-389/1 1, July 12 2012), the General Court has partially annulled a decision of the First Board of Appeal of OHIM in the context of opposition proceedings filed by Guccio Gucci SpA against a Community trademark (CTM) application for GUDDY.

On March 20 2008 Mr Chang Qing Qing filed a CTM application for the denominative trademark GUDDY. The application covered the following goods in Classes 9 and 14 of the Nice Classification:
  • Class 9: ‘Scientific, nautical, surveying, photographic and optical apparatus and instruments’.
  • Class 14: ‘Precious metals, horological instruments, jewellery, precious stones’.
Gucci filed a notice of opposition pursuant to the Community Trademark Regulation (207/2009) in respect of the goods referred above on the basis of the earlier Community trademark GUCCI registered, among other things, for goods in Classes 9 and 14.
In its decision of November 192009, the Opposition Division rejected the opposition. It argued that, despite the identity of the goods and any highly distinctive character that the earlier mark might have, the marks were sufficiently different to exclude any likelihood of confusion.
Gucci appealed. On April 14 2011 the First Board of OHIM annulled the Opposition Division’s decision insofar as it had rejected the opposition in respect of the goods which were covered by the categories of horological instruments and jewellery in Class 14. Therefore, the board rejected the application for GUDDY in respect of those goods in Class 14, and dismissed the appeal asto the remaining goods.
In particular, the board found that the evidence provided by Gucci showed the highly distinctive character of the earlier mark due to the public’s recognition of the mark in the field of luxury goods, including watches and jewellery. Since there were some differences between the marks, the Board of Appeal concluded that there was a likelihood of confusion only in respect of the goods in relation to which the highly distinctive character of the earlier mark had been proved (ie, horological instruments and jewellery).
Gucci appealed, requesting that the General Court annul in part the decision of the Board of Appeal insofar as it rejected the opposition in respect of the goods in Class 9 and the goods in Class 14 other than horological instruments and jewellery.
In the contested decision, the Board of Appeal had argued that the mark GUCCI was one of the world’s leading brands in the field of luxury goods, ‘which includes watches and jewellery’. It had referred to several documents provided by Gucci relating to watches and jewellery and also, generally, to the highly distinctive character of the earlier mark in respect of luxury goods. However, the board had concluded that that character had been proved only in respect of horological instruments and jewellery, and not for precious stones and precious metals in Class 14, or for the goods claimed in Class 9.
The General Court held that the board’s findings did not make it possible to understand the reasons why the documents provided by Gucci were not sufficient to prove the distinctive character of the mark in relation to the remaining goods in Classes 14 and 9. Therefore, the General Court concluded that the board’s decision was vitiated by an infringement of the obligation to state the reasons on which the decision was based.
On the basis of the above, the board’s decision was partially annulled insofar as it dismissed the appeal brought against the Opposition Division’s decision rejecting the opposition in respect of the goods in Class 9 and in respect of the goods in Class 14 other than horological instruments and jewellery.

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