Prada, the globally renowned Italian fashion house, has failed to persuade the EU General Court that its reputation was such that it should be extended to prevent the registration of the word mark THE RICH PRADA for a hotel (and other related classes).

The decision emphasises the importance of the need for famous brands, known for a particular product or service, to evidence injury to its pre-existing mark and demonstrates that general statements alone about the public making links between the two marks and dilution would not be sufficient.

Background:

This was the latest in a long running dispute between the two. Rich Prada International filed its trade mark application in August 2011 for services in classes 30, 32, 35, 36, 37, 41, 43, 44 and 45. Following publication of the application on 30 January 2012, Prada unsurprisingly filed a notice of opposition in respect of all classes applied for. The opposition was based on a number of registered trade marks already owned by Prada, including the word mark PRADA and the below figurative mark:

The Opposition Division partially upheld the opposition in respect of certain classes and granted the application in respect of other classes. Both sides then appealed the decision and the Second Board of Appeal of EUIPO favoured Rich Prada International and held that the mark could be registered in respect of all classes applied for (though not in respect of all goods or services within those categories) and dismissed Prada’s appeal. Prada then escalated the battle to the General Court, in an attempt to prevent the applicant from gaining any protection for any services.

Key Issue for the EUIPO

Prada sought to rely on Article 8(5) of Regulation 207/2009 (as amended and replaced by Regulation 2017/1001) (the Regulation) which prevents the registration of a mark that:

1. is identical or similar to an earlier trade mark;
2. relates to goods or services that are not similar;
3. has a reputation in the EU; and

use of the mark applied for without due cause would:
a. take unfair advantage of;
b.be detrimental to the distinctive character of the mark; or
c.be detrimental to the repute of the earlier mark.

Although the General Court noted that the primary function of a trade mark is to provide “an indication of origin” the General Court also made the interesting point that trade marks have an “intrinsic economic value that is separate and distinct” from the goods and services to which they relate. For example, a mark can convey messages of quality and convey feelings such as luxury, lifestyle, exclusivity and youth. It followed that the message conveyed by a trade mark with a reputation has an important value which merits protection.

In order to be able to rely on Article 8(5), it must be shown that the registration of the mark would cause one of the three types of injury listed at 4(a) to 4(c) above. It has previously been established that such injury requires the relevant section of the public to make a connection or “link” between the two marks. The existence of such a link must be appreciated globally, which means taking into account all factors relevant to the circumstances (such as the degree of similarity between the marks, the nature of the goods or services and their similarity, the strength of the reputation of the earlier mark and its distinctiveness).

Brand extension and the requisite “link”:

Prada argued that its reputation as a luxury fashion house was such that the relevant public would make a “link” between the brand and the goods and services offered by Rich Prada International despite the types of goods and services not being related, i.e. clothing and hotels. Prada therefore relied on the concept of brand extension in which luxury brands become involved in fields outside their core business (such as sponsorship of exclusive events).

The General Court held that Prada failed to demonstrate how the public would be able to establish a plausible link with the different subcategories of goods and services in the classes applied for. In a further blow to Prada, it also took the view that even if Prada was able to establish a link, it failed to establish the existence of any detriment.

As regards unfair advantage, the General Court criticised Prada’s attempt to rely on brand extension “like a blunt tool to any goods and services and thereby achieve a vast but illegitimate trade monopoly”.

The General Court was really quite critical of Prada for seeking to rely on its global reputation without adducing real evidence to support the grounds on which it was seeking to challenge EUIPO’s decision. This was reflected in the General Court’s comments about Prada’s inability to show any detriment to the distinctive character of its mark because it had not evidenced any change in the economic behaviour of the average consumer.

Conclusion:

This decision serves as a useful reminder of the importance of presenting real evidence to the Court in support of your unfair advantage and/or detriment claim. Sweeping statements about global recognition will not suffice.

If you think your brand is being taken advantage of, support it with evidence such as social media following, marketing spend, search engine results, press commentary etc. This all helps the Court to see how famous your brand is, which makes it easier to show that the advantage being taken by the third party is unfair.

For detriment claims, it is also imperative to keep records of things like commentary on social media, press reports, changes in search engine results and customer queries/complaints. Without such records in support, it will be very difficult to persuade a Court that there is any detriment to your mark.

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