Emilio Pucci SRL v the Shoe Corporation Pty Ltd

[2003] ATMO 26

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS, WITH REASONS

Re:Opposition by EMILIO PUCCI SRL to registration of trade mark application 777373(25) - PUCCI - filed in the name of THE SHOE CORPORATION PTY LTD.

Date of Decision:

30 April 2003

Delegate:

Terry Williams

Representation:

Opponent: Corrs Chambers Westgarth, Solicitors

Applicant: Unrepresented

Decision:

Section 52 opposition: s 60 ground established despite earlier application of s 44(3) and (4).  Registration refused.

Background

1. Trade mark application 777373 was filed by The Shoe Corporation Pty Ltd ("the applicant") on 5 November 1998.  It is for a device as shown below: 

    
   

   and the goods specified in the application are "ladies imported footwear".

   2.     The application was examined by the Trade Marks Office and advertised as having been accepted for registration.  In view of what follows, I will note that the application was accepted under the provisions of subsections 44(3)(a) and 44(4) of the Trade Marks Act 1995 ("the Act").  These allow the acceptance of an application, despite the existence of a conflicting, deceptively similar, registered trade mark, if it is established that, respectively:

   ·     there has been honest concurrent use of the two trade marks, and/or

   ·     the applied-for mark was used before the priority date of the deceptively similar registration.

   3.     Registration of the applied-for mark has been opposed by two separate entities.  I have already decided one of these oppositions, the one by Swoss Pty Ltd.  Swoss Pty Ltd is the registered owner of one of the trade marks that led to the application of the provisions to which I have just referred.  Swoss's registration (number 755437) is for the trade mark GINO PUCCI, registered for "Footwear". 

   4.     There were some aspects of my earlier decision that have ramifications for the present matter, the separate opposition filed by Emelio Pucci srl.  I will set out the ones that are relevant.

   5.     My decision, on 17 May 2002 of the earlier opposition by Swoss, was that the opponent had failed to establish the only ground of opposition on which it relied, that under s 60.  This provides as a ground of opposition that, in simple terms, the use of the trade mark by the applicant would lead to deception or confusion because of a conflicting reputation resident in someone else's deceptively similar trade mark.

   6.     The applicant did not take part in the earlier Swoss opposition hearing but relied on written submissions.  In answer to the earlier opposition, it attempted to rely on the evidence filed by it to gain acceptance of the application.  This consists of a declaration by John Perpignani, a senior officer in the applicant company, together with five supporting letters that show that there are a number of stores that sell goods bearing the trade marks at issue, without apparent conflict. 

   7.     Where section 44 is in question, evidence that goes to the use of one trade mark in the face of another can become crucial.  The applicant has at no stage served a copy of Mr Perpignani's evidence on Emilio.  Because I dealt with the matter in my earlier decision, the applicant was aware both of the need to do this and that my exclusion of the evidence would be a likely consequence of failing to do so.  Despite this, the applicant has not served a copy of the material on Emilio, although it has attempted to rely on the material in the written submissions it made.  It is not entitled to rely on that material, and I intend to set it aside.  Therefore, in what follows, I will exclude Mr Perpignani's declaration and the trade declarations from the applicant's evidence.  The evidence that remains is as follows:

   8.   Evidence

   Emilio's evidence in support

Declaration by	Annexures
Nathalie Moulle-Bertreaux	NMB1-6

The applicant's evidence in answer

Declaration by	Annexures
Jane Fong

Issues and Decision

9.     In the current opposition, Mr Perpignani, on behalf of the applicant, has made submissions.  These, aside from attempting to introduce material on which the applicant is not entitled to rely, are little more than a recitation of the history of the application and an assertion of his opinion that the application ought to be registered.

10.   Emilio has not made any written submissions.  It is clear from material on the file that its lawyers are aware of the details of my decision in the earlier Swoss opposition.  They have sought and been granted an extension of time in the opposition process in order to consider that decision.  Therefore, in the lack of any written submissions, I assume that Emilio, like Swoss before it, does not pursue any ground of opposition except that under s 60.  I set that provision out in full:

60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

Note 1:  For deceptively similar see section 10. ("For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.")

Note 2:  For priority date see section 12. (The priority date of the present application is its filing date, 5 November1998)

11.   From the applicant's point of view, s 60 is a particularly dangerous ground.  If it is established that, because of a reputation enjoyed at the relevant date by a conflicting trade mark, use of the present mark by the applicant would be the cause of deception or confusion, refusal of registration is mandated.  This will remain so despite the earlier and favourable application of s 44(3).  See McCormick & Co Inc v McCormick, 51 IPR 102 at para 96. I think, moreover, that the same logic extends to s 44(4).

12.   The questions posed by s 60 are as follows:

·     Is there a conflicting - ie deceptively similar - trade mark (registered or otherwise)

·     Did that trade mark enjoy a reputation at the date that the applicant filed the opposed application

·     Will there, because of that reputation at that date, be deception or confusion arising from the fair use by the applicant of its trade mark for any goods for which registration is sought.

13.   Turning to the first of these, I need to consider the opponent's trade mark.  That consists of the words EMILIO PUCCI, registered as 206424 and 230031 for, among other things, "men's and women's clothing, both under and outer wear; and ladies' clothing including hats, hosiery and footwear".  Can it be said that the trade marks PUCCI MADE IN ITALY (allowing, to the proper degree, for the form actually sought to be registered) is deceptively similar to EMILIO PUCCI?

14.   Despite Emilio's evidence, to which I will come below, there are doubtless still many people in this country who are ignorant of the reputation of EMILIO PUCCI as a fashion house.  This is clearly not a case where "the mark, or perhaps an important element of it, is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services is a relevant consideration."[1] Therefore, in the present case, the comparison is the familiar one of trade mark law.  Would a person knowing of the trade mark EMILIO PUCCI, but perhaps knowing little about either the history of that trade mark or the firm behind it, be deceived or confused if, subsequently, that person encountered the trade mark of the applicant?

[1] Full Federal Court in CA Henschke & Co v Rosemount Estates Pty Ltd - 52 IPR 42 at 52

15.   The applicant has pointed out that Emilio's trade mark already coexists on the register with the mark GINO PUCCI.  I acknowledge that the state of the register is at best an unreliable guide.  This is the caution of Wilcox J in Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579 at 590:

That evidence should be disregarded, for the reasons expressed by Jacob J in British Sugar ...:

"Both sides invited me to have regard to the state of the register. ...  In particular the state of the register does not tell you what is actually happening out in the market and in any event one has no idea what the circumstances were which led the registrar to put the marks concerned on the register.  It has long been held under the old Act that comparison with other marks on the register is in principle irrelevant when considering a particular mark tendered for registration, see eg Re "Madame" Trade Mark [1966] RPC 541 and the same must be true under the 1994 Act. I disregard the state of the register evidence."

I add only that, although consistency in public administration is desirable, a public officer is not justified in persisting with error.  Marks may, in the past, have been wrongly registered.  It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not.

16.   For my part, I agree with this and note that consistency in administration is indeed desirable.  The coexistence of the marks EMILIO PUCCI and GINO PUCCI is not, on balance, something to which I can give any great weight, but I do not think, conversely, that I should ignore it entirely because it might, perhaps, be an error.  The coexistence suggests to me that the Trade Marks Office has, in the past, been reluctant to presume that a monopoly exists in what appears, and the opponent's evidence confirms, to be an Italian surname.  The Trade Marks Office database shows 78 instances of this surname on consolidated electoral rolls for Australia.

17.   The present case, however, does not involve the more difficult issue of the comparison of trade marks that are the names of individuals sharing the family name Pucci.  The applicant who seeks to register the present mark is prepared to send its goods out marked, in essence, PUCCI.  The applicant's trade mark is apparently capable of distinguishing the applicant's goods.  Therefore, prima facie, if there are other PUCCI marks in use, and if the applicant's mark is indeed capable of distinguishing, confusion is a risk.  In addition, the "other" PUCCI mark is not some novel or idiosyncratic use of the word PUCCI.  It consists of the name of a male person of apparently Italian extraction.  Thus, there is a very significant risk of deception, or at least confusion.  I decide that the matter should proceed on the basis on which it was accepted - that the applicant's trade mark is indeed deceptively similar to the trade mark EMILIO PUCCI.  In any case, for s 60 purposes, it is clear that the opponent also uses the trade mark PUCCI, which is obviously much closer to the opposed trade mark.

18.   Has Emilio demonstrated a reputation in the trade mark EMILIO PUCCI, prior to the filing date of the opposed application?  The evidence, as I have said, shows that Emilio Pucci was a fashion designer in Italy just after the Second World War.  His rich and colourful designs, using innovative fabrics, became famous.  His couture collection was worn, according to the evidence, by the likes of Marilyn Monroe, Jacqueline Kennedy and Grace Kelly.  The applicant's evidence does not dispute this.  Ms Fong, on behalf of the applicant, concedes that "Emilio Pucci is an icon in the fashion industry".  This use of the present tense suggests that she herself either does not realise that Emilio Pucci died in 1992, or finds that the distinction between the man and the label is immaterial.  The opponent's evidence fleshes the picture out, and it appears that Emilio Pucci's daughter, Laudomia, revived the business.  The driver behind this reputation was, and remains, an emphasis on colourful fabrics.

19.   Ms Fong, however, goes on to suggest that the reputation is confined to a context of expensive and sophisticated products.  Her argument, to put it simply, is that anyone who knows of the EMILIO PUCCI label will know it in its proper context: these are not basic or everyday clothing lines for the masses. 

20.   On the matter of assessing the reputation of a trade mark, Hearing Officer Thompson observed in Hugo Boss AG v Jackson International Trading Company Kurt D Bruhl GmbH & Co KG, 47 IPR 423 at 436:

As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark.  The quantum of sales, advertising and promotion contributes to the `recognition' component of the trade mark's reputation.  The credit, image and values projected by a trade mark attaches to the `esteem' component of the reputation as do the public events and other trader's marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, `contra deals' and so forth.

It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it.

The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

Justice Kenny cited the above passage with approval in McCormick & Co. v McCormick, supra, at paragraph 85.

21.   Approaching the opponent's evidence with these principles in mind, I find that the reputation held by the opponent's trade mark is indeed that of an expensive, exclusive, clothing label, now somewhat fallen in stature after a triumphant heyday.  One undated magazine article in exhibit NMB5 uses the word "kaput", but this seems to be something of a journalistic excess.  However, there is insufficient evidence to show that Emilio had a reputation in Australia, at the priority date, in respect of shoes or other footwear.

22.   Will there be deception or confusion because of the reputation that is in evidence?  Here we come to the nub of the applicant's case.  Unfortunately for the applicant, it is the failing point of that case.  Ms Fong, setting out argument in her declaration, asserts that:

Any potential customer of 'Emilio Pucci' products is of a certain socio-economic standing and would be educated enough to not be confused or deceived by[2] the significant price differential between Emilio Pucci articles and our 'Pucci Made in Italy' footwear which is pitched at a retail price point of $100".

[2] (sic) - I assume Ms Fong means that the price difference will prevent confusion.

23.   Ms Fong goes on to argue that, while the applicant has used its trade mark since 1997, there has apparently been no complaint or hint of confusion by customers.  I must accept her evidence on this last point, and it reflects the honest manner in which the applicant has used its trade mark.  However, the question posed for me by s 60 is not "will there be deception if the applicant continues as it has?" so much as "what will happen if the applicant seeks to use its trade mark on other sorts of goods covered by the registration it seeks"[3].  There is simply no way that the applicant's registration can be realistically confined to low-price lines.  Nor, with due respect to the applicant's arguments, is it simply a question of price or socio-economics.

[3] Registrar of Trade Marks v Woolworths 45 IPR 411 at para 50

24.   Emilio's reputation, as I have said, is confined to the products to which Ms Fong has referred.  I have already said that no reputation has been shown in respect of footwear, in Australia and at the relevant date.  However, I think that, around that reputation, there will be a penumbra, as it were, of people, by no means stupid or otherwise exceptional, who are only partially informed about the opponent's trade mark, not fully informed.  Equally, it is too much to expect that the applicant will never wish to fairly imply that its goods are stylish Italian-made goods of high quality at an affordable if not budget price.  (I think I can fairly say that the applicant has already attempted to argue that its Italian-made goods are priced above those of Swoss, for instance.)  Such goods can be marketed in any number of ways that will bring about confusion in the minds of those shoppers in that penumbra, those who have heard of EMILIO PUCCI but know little about either the history of that trade mark or the firm behind it. 

25.   Also, I think it is clear that the opponent's trade mark has passed the zenith of its reputation, which was in its prime some 30 or 40 years ago.  It is reasonable for me to accept that there will also be a fair number of other, and perhaps better informed, consumers, those who were aware of that trade mark in its prime, and who realise that this prime has passed.  That knowledge would reasonably suggest a connection, now, given the passage of time, with stylish products labelled PUCCI MADE IN ITALY, marketed more affordably and including footwear, this being sometimes seen as an accessory line for a fashion house.  To judge from the portion of her declaration that I have already quoted, Ms Fong is either aware of genuine EMILIO PUCCI footwear available in Australia, or sees such goods as a credible possibility.  While she herself would not be confused, for obvious reasons, I find that a significant number of ordinary consumers are potentially open to just such confusion in terms of s 60.

26.   Accordingly, I find that Emilio has established the ground under s 60.

Conclusion

27.   I refuse to register the application.  Mr Perpignani, in his written submissions, sought an award of costs.  The application having failed, I direct that the applicant pay the costs of Emilio to the extent set out in the scale.

T. E. Williams

Hearing Officer

30 April 2003