Prada gets Nada
Written by Mark Reed on 10 June 2018« Return to Reading Room
The EU General Court throws out Trade Mark appeal by Prada after Indonesian Hotel files the word mark ‘The Rich Prada’.
The Italian fashion house, Prada, lost an appeal against an Indonesian hotel called Rich Prada International after a judge found there to be an inadequate challenge presented by the Luxury Brand to refute the earlier decision by the EUIPO that there was a low degree of similarity between the two. Apparently, “the applicant did not demonstrate that a link could be established even in respect of goods and services as dissimilar from those covered by the earlier marks” so the action by Prada was dismissed in its entirety.
This dispute first came to light after the Indonesian ‘Rich Prada’ hotel filed an application to register this word sign, that would cover goods and services for non-alcoholic beverages, education and training, services for providing food and drink, and foodstuffs of plant origin among other classes. This was naturally opposed by the fashion house giants.
At first instance, the EUIPO Opposition Division actually sided with Prada to a degree, and ended up rejecting certain classes, such as class 35 regarding management of retail space, and class 41 on education, as examples. Three years later, and the Second Board of Appeal finally upheld Rich Prada's appeal and removed the decision of the Opposition Division.
It was first found in March 2017 that there was a “large dissimilarity” between the goods and services, and “it was difficult to imagine that a consumer may establish any significant link, whether positive or negative, between the marks at issue.” It was also felt that Prada “merely relied on the exceptional degree of reputation of its mark and the phenomenon of brand extension” in order to call into question the Board of Appeal’s assessment.Ultimately, the whole thing was thrown out because it appears that Prada had not established the existence of any such detriment even if a link between Prada, and The Rich Prada could be found.
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