Prada’s Pattern Mark: A fight for Trademark Recognition

A recent decision notably pronounced by the Second Board of Appeal on December 19, 2023, concerned PRADA S.A.’s pattern mark (case R 827/2023-2). Prior to this appeal, the examiner in European Union trademark application No. 18 683 223 initially rejected the disputed pattern trademark due to the observation of a lack of distinctiveness, prompting PRADA to file for a re-examination of the decision through an appeal.

The Issue of Distinctiveness:

The central discourse in this case revolves around the concept of distinctiveness in trademark law. PRADA S.A., a distinguished entity in luxury fashion, sought to register a pattern featuring triangular elements as a European Union trademark. They contended that this pattern, an evolution of their iconic upside-down isosceles triangle, had become synonymous with their brand identity. However, the primary question remained whether this pattern met the criteria of distinctiveness outlined in Article 7(1)(b) of the European Union Trademark Regulation (EUTMR).

The Office, acting as a gatekeeper, raised significant protest, contending that the pattern, based on a repetition of basic geometric shapes, would most likely be perceived as a conventional design element rather than an inherently distinctive trademark. Despite PRADA’s plea that the specific arrangement of triangles created a unique visual impression linked to their brand, the Office remained sceptical, emphasizing directly on the pattern’s simplicity and ubiquity. This scepticism was echoed by the Second Board of Appeal, which ultimately justified and upheld the Office’s decision, citing the pattern’s lack of acquired distinctiveness under Article 7(3) of the EUTMR.

Nice Classes Tied to PRADA Trademark:

It is interesting to note that although most classes applied for were rejected, some were not, thus resulting in a partial refusal. For the Prada brand, being a brand that operates and prioritizes itself within the realm of fashion, the Nice Classes that were, in fact, rejected are the ones that had anything to do with it’s material luxury goods, such as clothing, headwear, games, and even toiletry preparations, this clearly evidences the importance of classification of goods, while the pattern was deemed to lack distinctiveness in relation to classes attributed to fashion, the Board concluded that it is distinctive in relation to other unrelated Classes, including Classes 9, 20, and 35, which are related to a variety of digital media.

In conclusion, the recent decision by the Second Board of Appeal underscores the complexity of establishing trademark distinctiveness. Despite PRADA’s arguments, the pattern mark was ultimately rejected, highlighting the necessity of demonstrating either inherent or acquired distinctiveness. This outcome presents strategic challenges for PRADA, particularly in terms of class acceptance, potentially requiring adjustments in market strategy. Notably, the failure to assert Article 7(3) EUTMR as a means to claim acquired distinctiveness through use suggests a missed opportunity. Had PRADA pursued this avenue, it could have bolstered its case and possibly securing the trademark registration on the grounds of acquired distinctiveness.

Read More: Prada’s triangle-shaped pattern is not inherently distinctive – EUIPO (europa.eu)


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