EU General Court dismisses Prada trademark appeal

The EU General Court has sided with the European Union Intellectual Property Office (EUIPO) and rejected a trademark appeal made by Prada.

Indonesia-based hotel Rich Prada International filed an application at the EUIPO for the word sign ‘The Rich Prada’ covering goods in classes 30, 32, 35, 36, 37, 41, 43, 44 and 45.

The goods and services covered in these classes include foodstuffs of plant origin; non-alcoholic beverages; business management; education and training; and services for providing food and drink.

In April 2012, fashion brand Prada opposed the registration in respect of all goods and services covered.

The opposition was based on Prada’s earlier trademarks including for the European and international word marks ‘Prada’.

Prada said that the applied-for trademark and the goods and services it covered could cause confusion among the public between the trademarks.

In October 2014, the Opposition Division partially upheld the opposition and dismissed the registration of the mark for services in classes 35, 41, 43 and 44.

Both parties lodged appeals against the Opposition Division’s ruling in December 2014.

The Second Board of Appeal of the EUIPO partially upheld Prada Rich International’s appeal in January 2016 and determined that the mark may be registered for all the classes it applied for, although it could not cover all the goods and services within those classes. At the same time, it dismissed Prada’s appeal.

In response, Prada asked the General Court to uphold its opposition and refuse to register Rich Prada International’s applied-for trademark.

Prada claimed the EUIPO infringed article 8(5) of Regulation No. 207/2009, which says that a trademark must not be registered if it is identical or similar to an earlier trademark that covers different goods and services and where the earlier mark has a reputation in the relevant market.

Prada argued that through “brand extension”, the relevant public have become accustomed to seeing luxury brands in business sectors that are not directly linked to the goods and services covered by the trademarks. As a result, it said that the relevant public is likely to make a link between its luxury brand and services that are not directly related.

The General Court said “the existence of the link between the marks at issue must be assessed globally”. It determined that Prada only argued the existence of a link, but it failed to establish such an existence. Therefore, this plea was rejected.

Second, Prada said that the Board of Appeal did not acknowledge the similarity of goods covered by the marks at issue in class 35, (retail services covering accessories such as cosmetics, perfume and jewellery) and that there was a high likelihood of confusion.

But the General Court agreed with the EUIPO that Prada did not “advance any argument” that questions the Board of Appeal’s reasoning, and that its decision must therefore be confirmed.

Prada’s appeal was dismissed and it was ordered to pay the costs.