O/274/21 892Kb

O/274/21 892Kb

O/274/21 TRADE MARKS ACT 1994 IN THE MATTER OF APPLICATION NO. UK00003406669 BY BERNARD MULHOLLAND LTD FOR THE FOLLOWING TRADE MARK: gucci.llc IN CLASSES 18 AND 25 AND IN THE MATTER OF OPPOSITION THERETO UNDER NO. 417895 BY GUCCIO GUCCI S.P.A. BACKGROUND AND PLEADINGS 1. On 13 June 2019, BERNARD MULHOLLAND LTD (“the applicant”) applied to register the trade mark shown on the cover page of this decision in the UK. The application was published for opposition purposes on 28 June 2019 and registration is sought for the goods set out in the Annex to this decision. 2. On 30 September 2019, Guccio Gucci S.p.A. (“the opponent”) opposed the application based upon sections 5(2)(b), 5(3), 5(4)(a) and 3(6) of the Trade Marks Act 1994 (“the Act”). Under sections 5(2)(b) and 5(3) of the Act, the opponent relies upon EUTM no. 121988 for the trade mark GUCCI.1 The opponent’s mark was filed on 1 April 1996 and was registered on 24 November 1998. For both sections, the opponent relies upon some of the goods for which the mark is registered, namely: Class 18 Leather and imitations of leather, and goods made of these materials and not included in other classes; handbags; purses; trunks and travelling bags; backpacks; briefcases; card cases [notecases]; pocket wallets; rucksacks; shopping bags. Class 25 Clothing, footwear, headgear. 3. Under section 5(2)(b), the opponent claims that there is a likelihood of confusion because the parties’ respective trade marks are similar and the goods are identical or similar. 4. Under section 5(3), the opponent claims that use of the applicant’s mark would, without due cause, take unfair advantage of, or be detrimental to, the distinctive character and/or reputation of the earlier mark. 1 Although the UK has left the EU and the transition period has now expired, EUTMs, and International Marks which have designated the EU for protection, are still relevant in these proceedings given the impact of the transitional provisions of The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 – please see Tribunal Practice Notice 2/2020 for further information. 2 5. Under section 5(4)(a), the opponent relies upon the sign GUCCI which it claims to have used throughout the UK since at least 1961 in relation to “various fashion goods, including goods and accessories made of leather and imitations of leather, bags, clothing, headwear and shoes”. 6. Under section 3(6), the opponent claims: “The Applicant knew of the reputation and success of the Opponent’s business and prior marks and filed this Application with the intent to secure a monopoly by capitalising on and appropriating the goodwill and reputation in the Opponent’s business and prior marks without paying to the Opponent. The mark applied for is currently used by the Applicant as a domain name that redirects visitors to another website operated by the Applicant. The filing of this Application falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced operators, and amounts to the Applicant having acted in bad faith at the time of filing the Application. Accordingly, the Application should be rejected in its entirety.” 7. The applicant filed a counterstatement denying the claims made. 8. Both parties filed evidence in chief. The opponent did not file evidence in reply. A hearing took place before me on 16 March 2021, by video conference. The opponent was represented by Charlotte Blythe of Counsel, instructed by Wiggin LLP. The applicant was self-represented, with its Director, Dr Bernard Mulholland giving submissions on its behalf. EVIDENCE AND SUBMISSIONS The Opponent’s Evidence 9. The opponent filed evidence in the form of the witness statements of Vanni Volpi dated 25 August 2020 and Joanna Laura Gibbs dated 30 July 2020. Mr Volpi is the Intellectual Property Director of the opponent, a position he has held since 1 January 2017. He has worked in the opponent’s Intellectual Property Department since 2006. 3 Mr Volpi’s statement was accompanied by 16 exhibits. Ms Gibbs is the Solicitor acting on behalf of the opponent in these proceedings. Ms Gibbs’ statement was accompanied by 7 exhibits. 10. Mr Volpi explains that the opponent was founded in 1921, when the first store was opened in Florence, Italy. Initially, the opponent focused exclusively on leather goods but subsequently expanded into clothing, footwear and accessories. The opponent opened its first store in London in 1961 and in Paris in 1963. Mr Volpi has provided the following table for goods by the opponent: 11. With regard to market share, Mr Volpi has provided the following figures, which include the estimated size of the market for personal luxury goods: 4 12. Mr Volpi states that as of 31 December 2019, the opponent had 106 directly owned and operated stores in Western Europe. Mr Volpi states that all of these stores feature the earlier mark prominently. For example, the opponent has provided the following image of its concession in Harrods, London:2 And of its store in Rome: 2 Exhibit VV3 5 13. The opponent has 16 stores or concessions in the UK. These are located in Bicester, London, Birmingham, Edinburgh, Glasgow and Manchester. Opening dates are not provided for all of the stores, but of those that are provided they opened between February 2004 and September 2015. In Italy, the opponent has 32 standalone stores, franchise stores or concessions. These are located around the country including Capri, Florence, Milan, Naples, Bologna, Rome, Turin, Venice and Bari. Again, opening dates are not provided for all of these stores, but of those that are provided, they opened between July 2004 and June 2019. 14. The opponent’s mark also features in its e-commerce domain names e.g. gucci.com/uk/en_gb. Mr Volpi has provided the following visitor numbers for the opponent’s website: 6 15. Mr Volpi confirms that the opponent also sells its goods through third parties. For example, in the UK, this includes Flannels (a luxury fashion retailer within 27 stores in the UK), Net-A-Porter (an online only luxury fashion retailer), Childsplay Clothing (a children’s fashion retailer with one store in Ilford) and Pekino Childrenswear (a children’s fashion retailer with one store in Glasgow). In Italy, this includes Biffi Boutiques (a luxury fashion chain with 3 stores in Milan and one in Bergamo), G & B Negozi (a luxury fashion chain with stores in Flero, Ponte di Legno, Courmayeur and Aosta), Pure Sermoneta (a children’s clothing store in Rome) and Julian Fashion (a luxury fashion chain with stores in Milan, Lido degli Esensi and Rimini). The opponent has sold through all of the retailers named above for at least 5 years. 16. Mr Volpi explains that the opponent’s social media accounts have a significant number of worldwide followers. In this regard, Mr Volpi has provided the following figures: 17. Mr Volpi confirms that during the relevant period, the opponent spent tens of millions of Euros on marketing in the EU. This included between €1million and €10million in each of Italy and the UK. 18. The opponent has won a number of awards, including:3 a) In 2014, the opponent won best “International Luxury Brand” at the Walpole British Luxury Awards; 3 Exhibit VV5 7 b) In 2015 and 2016 respectively, “Alessandro Michelle for Gucci” won best “International Designer” and best “International Accessories Designer” respectively at The Fashion Awards; c) In 2018, the opponent won “Brand of the Year” at The Fashion Awards; d) In 2018, the opponent won “International Luxury Brand of the Year” at the Walpole British Luxury Awards. 19. Mr Volpi also confirms that: a) “Between 2000 and 2014 (inclusive) and in 2016, Gucci was ranked as the number one Italian brand across all industries in Interbrand’s annual ranking of the ‘Top 100 Best Global Brands’”; b) “In a 2017 report on ‘Fashion’s Hottest Brands’ prepared by Lyst and the Business of Fashion, Gucci was identified as the number one brand and labelled “the hottest fashion brand on the planet” with “four Gucci products in the 10 best-selling products globally”; and c) “In 2018, Gucci was ranked as the number one Italian luxury brand by Brand Finance”. 20. Mr Volpi confirms that the opponent takes part in approximately 5 fashion shows each year. Mr Volpi confirms that between 23 June 2014 and 28 May 2019 the opponent took part in 20 fashion shows, 17 of which were in the UK or Italy. Photographs from the 2016 show in London include coats, handbags, belts, dresses, high-heeled shoes and hats.4 Examples from later shows display tops, ties, shirts and shorts. Mr Volpi confirms that a number of its fashion shows are streamed electronically and that it was ranked as number one in Vogue Runway’s “Top 10 Most Viewed 2017 Spring Collections”, “Top 10 Most Viewed 2017 Fall Collections” and “Top 10 Most Viewed Fall 2018 Collections”. Mr Volpi notes that the opponent 4 Exhibit VV6 8 collaborates with celebrities such as Sir Elton John (with whom he states the opponent has a long-standing relationship and whose image was used in the Spring/Summer 2018 collection) and Harry Styles (with whom they collaborated for the Fall/Winter 2018 collection). 21. Mr Volpi states that the earlier mark features on all of its products either by being stamped into the leather on goods such as wallets, belts or footwear or on labels in goods such as handbags, clothing and hats. Mr Volpi states that the mark also features on tags and product packaging.

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