UK Intellectual Property Office Tribunal – Change of practice
Proceedings against trade marks and registered designs without a valid UK address for service.
In a dispute involving the Italian fashion brand Prada, the EU Intellectual Property Office (“EUIPO”) and the Indonesian hotel, The Rich Prada International PT (“The Rich Prada”), the EU General Court (“Court”) has upheld the EUIPO’s decision to allow the registration of the trade mark THE RICH PRADA, delivering a blow to Prada.
In 2011, The Rich Prada applied to register the trade mark ‘THE RICH PRADA’ in the EU, for a wide variety of goods and services including coffee, beers, advertising services, insurance services, entertainment services, hotel services and babysitting, in Classes 30, 32, 35, 36, 37, 41, 43, 44 and 45.
Prada opposed the application in respect of all goods and services. The opposition was based on its prior trade mark registrations, including the word mark ‘PRADA’, which covered goods and services including bags, clothing and retail services. Prada essentially pursued two grounds of opposition:
(1) that THE RICH PRADA was a similar trade mark to its PRADA marks and covered identical or similar goods and services, which would lead to a likelihood of consumer confusion between the marks; and
(2) owing to the reputation in the name PRADA, the use of THE RICH PRADA would take unfair advantage of, or be detrimental to, the distinctive character of the mark or its reputation.
The opposition was partially successful, resulting in the rejection of some of the services, including certain retail services, entertainment, hotel services, beauty and spa services. The application was accepted for the remaining goods and services.
Both parties appealed to the Board of Appeal (“BoA”).
The BoA dismissed Prada’s appeal and also held that the mark should only have been refused in relation to a narrower list of services.
Prada further appealed to the Court and the arguments focussed on the second ground of opposition noted above.
In order to succeed on this ground, it was necessary to show that (a) ‘PRADA’ has a reputation, (b) PRADA and THE RICH PRADA are similar marks and (c) there is a risk that the use of THE RICH PRADA would take unfair advantage of, or be detrimental to, the distinctive character or the reputation in PRADA.
Requirement (a) was satisfied, since the BoA had acknowledged that PRADA had a reputation and this was not questioned by the Court.
However, Prada failed to satisfy requirement (b). Whilst it is not necessary to prove that there is a likelihood of confusion between the respective marks, it needs to be shown that the public would establish a ‘link’ between them. Prada referred to its strong reputation and argued that, through the concept of ‘brand extension’ (essentially where a mark gains such a reputation that its scope extends beyond the goods and services it covers), 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 BoA had considered this and decided that Prada had failed to show that a link would be established, largely due to the dissimilarity between the goods and services, e.g. building construction services vs handbags. Despite Prada’s submissions, the Court upheld the BoA’s finding that no ‘link’ had been established.
In relation to requirement (c), the Court again agreed with the BoA in that, even if a link between the marks could be established, Prada had not established the existence of any detriment to its reputation or the distinctive character of its trade marks. Similarly, it was also held that there was no risk of THE RICH PRADA taking unfair advantage of the reputation or distinctive character of tTrhe trade marks, owing to the difference in the goods and services.
This decision highlights the difficulty that brand owners can have in applying the concept of ‘brand extension’ and trying to argue that the use of a similar mark is taking unfair advantage of, or is detrimental to, the distinctive character of a mark or its reputation. This is particularly evident given the significant reputation and status of the PRADA trade mark.
If you have any questions relating to the specific issue of trade mark reputation, or any other trade mark matter, please do not hesitate to get in touch with one of our attorneys.