This article first appeared on WTR Daily, part of World Trademark Review, in June 2018. For further information, please go to www.worldtrademarkreview.com.
Fashion house Prada opposed registration of THE RICH PRADA by Bali-based hotel
Prada failed to establish existence of link between marks in relevant public’s mind
Somewhat surprising decision considering PRADA’s significant reputation
In Prada SA v European Union Intellectual Property Office (EUIPO) (Case T-111/16, 5 June 2018), the General Court has upheld the decision of the Second Board of Appeal of the EUIPO, thereby allowing the registration in the European Union of the trademark THE RICH PRADA, in spite of Italian fashion house Prada's "exceptional reputation" in its PRADA mark.
In 2011 Indonesia-based hotel The Rich Prada International PT applied to register the word mark THE RICH PRADA in the European Union, covering a wide range of goods and services in Classes 30, 32, 35, 36, 37, 41, 43, 44 and 45.
Prada opposed the application on the basis of registrations for the word and stylised marks PRADA in various EU member states. Prada's registrations covered goods and services in Classes 18, 25 and 35. The Opposition Division of the EUIPO partially upheld the opposition, rejecting registration of the mark for some services in Classes 35, 41, 43 and 44 (eg, "retail services relating to clothing", "education", "hotel services" and "hygienic and beauty care"), but allowing registration for the remainder. Both Prada and The Rich Prada International appealed. The Board of Appeal upheld The Rich Prada International's appeal for some of the services in Classes 35 and 41, but otherwise dismissed both appeals.
General Court decision
The General Court upheld the Board of Appeal's decision in its entirety. Prada based its opposition on claims under Articles 8(5) and 8(1)(b) of Regulation 207/2009 (now Regulation 2017/1001). These are addressed in turn below.
Article 8(5) - prior mark with a reputation
Prada's primary claim was under Article 8(5) of the regulation, which provides that a trademark must not be registered if it is identical or similar to an earlier trademark that covers different goods and services, where the earlier mark has a reputation, and the use without due cause of the trademark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark.
The General Court pointed out that, where these types of injury occur, they "are the consequence of a certain degree of similarity between the marks at issue, by virtue of which the relevant section of the public makes a connection between those marks, that is to say, establishes a link between them".
Prada referred to its very strong reputation in the PRADA mark (already acknowledged by the Board of Appeal) and argued that, through "brand extension", the relevant public has become accustomed to seeing luxury brands in business sectors that are not directly linked to the principal goods and services covered by their registrations.
The Board of Appeal had found that Prada failed to establish the required "link", in part because of the distance between the respective goods and services:
[F]or the public to associate the marks on the basis of goods and services as far apart as the services linked to the road cleaning or mining extraction sectors and fashionable handbags or elegant evening gowns, the signs must be characterised by an extremely high degree of similarity, possibly even being identical.
The Board of Appeal went on to hold that even if the required "link" were established, Prada had still not established the existence of detriment, as required by Article 8(5).
The General Court held that Prada had failed in its appeal to submit "a substantiated challenge to the specific conclusions relating to the dissimilarity of the goods and services reached by the Board of Appeal". Instead, Prada had sought to rely on its exceptional reputation and the concept of brand extension. Because Prada had not properly challenged the Board of Appeal's relevant findings, the General Court upheld them and found that the requisite "link" was not established.
Finally, the Generally Court noted that all of Prada's arguments before it had been centered on establishing a "link" (which it ultimately failed to do) and that Prada had not directly contested the Board of Appeal's finding that no detriment had been established; therefore, this too was upheld.
Article 8(1)(b) - similar marks, similar goods/services
Prada also alleged breach of Article 8(1)(b) of the regulation, which provides that a trademark must not be registered if it is identical or similar to an earlier trademark that covers the same or similar goods/services and there is a likelihood of confusion. Prada alleged that the Board of Appeal had failed to acknowledge the similarity of services covered by the respective rights in Class 35, at least in respect of The Rich Prada International's "retail services relating to food and drink". The General Court dismissed this ground of appeal with the cryptic comment that Prada "did not advance any argument that calls into question the Board of Appeal's reasoning… concerning the similarity of the goods and services in question".
Prada’s appeal was dismissed it its entirety and Prada ordered to pay costs. Unless a further appeal is filed, the trademark THE RICH PRADA will go on to register for a wide range of goods and services, covering everything from "coffee" to "rental of road sweeping machines" to "babysitting services".
Considering the significant reputation of the PRADA brand, this is perhaps a surprising decision, but it does show the difficulty claimants can have in establishing the required "link" in Article 8(5) claims where the goods and services are particularly dissimilar. It also appears from the decision that Prada may not have fully substantiated its appeal by contesting all the relevant findings of the Board of Appeal.
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