Prada scents victory at EU court in perfume TM clash
Fashion house’s earlier marks deemed broad enough to cover relevant goods of any geographic or ethnic origin | General Court underscores independence of the EU trademark regime from national laws.
Prada has secured a win at the EU General Court in its dispute with a Romanian perfumery that had sought to trademark the word sign ‘Rada’.
The eighth chamber of the court delivered the decision on July 26, finding in favour of the Italian luxury brand’s arguments that the disputed mark would cause consumer confusion due to its phonetic and visual similarity to Prada’s own registered marks.
Background to the dispute
In January 2020, Moldova-based Rada Perfumes filed an application for the registration of an EU trademark with the EU Intellectual Property Office ( EUIPO) for the figurative sign ‘Rada Perfumes’ to cover classes 3 and 35 of the Nice Agreement.
The disputed mark related to cosmetics, perfume oils; perfume, body deodorants as well as advertising, promotional materials and marketing services concerning perfumes.
In May 2020, Prada filed a notice of opposition, arguing that its own registered marks, ‘Prada’ and ‘Prada Milano, Dal 1913’ covered the same goods and services.
In August 2021, the EUIPO Opposition Division partially upheld the opposition in respect of all the goods in class 3 covered by the mark applied for, and in respect of the services in class 35 corresponding to “online retail services relating to cosmetics; mail order retail services for cosmetics; wholesale services in relation to fragrancing preparations”.
In September 2021, the applicant filed a notice of appeal with EUIPO, which was later dismissed on the ground that there was a likelihood of consumer confusion.
Geographic and ethnic origin
On further appeal, the company argued that the perfumes which it markets are oriental perfumes “with a different composition, different bottles, and different smell and packaging” from those of the goods covered by Prada’s earlier marks.
“The various aspects of the goods marketed by the applicant refer, according to the latter, to the Arab world, whereas those of the intervener are packaged in ‘European’ and ‘elegant’ bottles containing inscriptions in French or English,” it said.
But the General Court found the goods and services covered by the mark applied for either appeared identically in the list of goods and services covered by Prada’s earlier marks, or are included in the description of the goods or services covered by the Italian brand’s marks.
“Since only the description of the goods and services is relevant, the applicant’s arguments, based on the composition, smell or packaging of the goods which it markets, are therefore ineffective for the purposes of determining whether the goods and services concerned are similar,” said the court.
It further held that the Board of Appeal had correctly concluded that the goods covered by the earlier marks “were described so broadly as to include relevant goods of any geographic or ethnic origin”.
The General Court also found that Rada hadn’t produced any evidence to show that the relevant public didn’t perceive the goods and services at issue as being identical.
Conceptual differences insufficient
The court noted how the mark applied for consists of the word element ‘Rada’ in stylised capital letters below which the word element ‘perfumes’ appears, smaller, in fine capital letters. Two red strokes or dashes appear on the left and right of that latter element.
Rada insisted that the graphic aspects of the signs at issue differ considerably because there is no similarity between the fonts used and the mark applied for and Prada’s marks.
But the General Court found that the differences between the signs—namely the presence of an additional letter ‘p’ at the beginning of the earlier marks, the word element ‘perfumes’, the two red strokes or dashes placed on both sides of that element in the mark applied for and the different fonts used in those marks—were not sufficient to rule out the high degree of visual similarity between the mark applied for and Prada’s earlier marks.
While it noted that the marks at issue were conceptually different, the court ruled that the degree of visual and phonetic similarity between those marks and the low level of distinctiveness of the differentiating elements rendered this difference irrelevant.
EU regime is autonomous
The court also rejected Rada’s assertion that the Board of Appeal had contravened its ‘fundamental right’ to use a first name or surname in a business, in accordance with Article 4 and Article 14(1)(a) of Regulation 2017/1001.
It pointed out that such provisions are intended only to enable, under certain conditions, the use by a third party of his or her family name, and not the registration of that family name as an EU trademark.
Rada further claimed that the Board of Appeal should have taken into consideration the fact that a word mark ‘Rada’ had already been registered in Romania and had been used since 2015.
In response, the court concluded:“The EU trademark regime is an autonomous system with its own set of objectives and rules peculiar to it, which apply independently of any national system. Accordingly, the registrability of a sign as an EU trade mark is to be assessed on the basis of the relevant legislation alone.
“The fact that the national word mark ‘Rada’ was registered in Romania is therefore irrelevant to the question whether there is a likelihood of confusion, within the meaning of Regulation 2017/1001, between the marks at issue.”
“Consequently, any reputation of that national mark in Romania is also irrelevant.”
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