PRADA's trade mark application rejected in the EU
The European Union Intellectual Property Office (EUIPO) recently made a decision that shook the fashion industry. PRADA's EU trade mark application for a pattern mark was partially rejected, and the Board of Appeal (BoA) confirmed the respective refusal due to the contested sign being deemed non-distinctive. The sign in question was a repeating triangle pattern intended for use on various goods and services ranging from perfumery and clothing to retailing and marketing. Further details are available in the BoA's decision R 0827/2023-2.
(EUTM Application No. 018683223 (pattern mark) , source: EUIPO)
The BoA's decision was based on the argument that the pattern lacked distinctive character, consisting of the repetition of basic geometric shapes of black and white triangles, which is a commonplace design found throughout the industry. Despite PRADA's reputation for innovation and style, the pattern failed to stand out as a unique indicator of commercial origin. Without any verbal or other distinguishing elements, consumers would perceive it merely as a decorative motif rather than a distinctive trade mark. Importantly, it has to be mentioned the assessment relates only to the lack of inherent distinctiveness from the side of the EUIPO because PRADA has not relied upon proving possible acquired distinctiveness throughout the EU.
The struggle for trade mark protection is not unique to PRADA. Another fashion powerhouse, Louis Vuitton, faced similar challenges in proving the acquired distinctiveness of its chequerboard pattern.
Louis Vuitton’s figurative trade mark cancelled
In October 2022, the General Court upheld the cancellation of Louis Vuitton's (LV) trade mark registration for a chequerboard pattern, citing insufficient evidence to demonstrate acquired distinctiveness through use. Further details are available in the Court's decision T-275/21.
As the mark in question is figurative, without any verbal elements, the relevant territory where to prove acquired distinctiveness as a defence in the invalidity proceedings claiming non-distinctiveness of the mark is the whole EU. Acquired distinctiveness for the purposes of obtaining an EU trade mark must be evidenced throughout the markets in each of the EU countries. Despite its global presence and widespread recognition, Louis Vuitton failed to provide sufficient evidence of consumer awareness across all the EU Member States.
(EUTM No. 0986207 (figurative mark), source: EUIPO)
The evidence was sufficient to persuade the Court that the mark has acquired distinctiveness in a number of the EU Member States. However, the crux of the matter boiled down to consumer awareness in Eastern Europe, namely Bulgaria, Estonia, Lithuania, Latvia, Slovakia and Slovenia, together with Malta, due to various reasons. For example, LV does not have physical stores in these territories. Evidence was submitted that there were, albeit a smaller number of sales in these countries, and advertisements and magazines were available in these territories. However, the level of awareness was nonetheless low.
Takeaway
These cases serve as a reminder that trade mark protection is not guaranteed, even for fashion giants. In an industry driven by innovation and creativity, brands must remain vigilant in safeguarding their intellectual property rights, carefully navigate their trade mark strategy and always gather respective evidence of trade mark use. From intricate designs to iconic logos, every element of a brand's identity is subject to scrutiny and must meet the stringent criteria set forth by trade mark authorities.
As consumers, we play a crucial role in shaping the perception and value of fashion brands. Our recognition and association with specific designs and logos contribute to their distinctiveness and ultimately, their trade mark protection. While fashion giants like PRADA and Louis Vuitton continue to redefine luxury and style, their battles in the realm of trade mark law remind us of the delicate balance between creativity and legal protection in the fashion industry.
