The Rich Prada Case: The Limits of Fame

  With a decision rendered on June 5, 2018the Court of Justice of the European Union is bringing to an end a procedure begun seven years earlier. The judges consider that the mark Prada, although having a well-known character, cannot claim a monopoly on the name. A look back at this case.  

Prada v. The Rich Prada

  In August 2011, an Indonesian company filed an application for a European trade mark. The Rich Prada ». The activity envisaged behind this repository is the opening of a 5 star hotel in Indonesia. Prada, considering that this new mark was confusing with its own well-known mark, formed oppositionbased on several earlier marks.  

Principle of speciality and notoriety

Under the specialty principlethe trade mark proprietor shall enjoy a monopoly of exploitation only for the goods and services designated in his registration and which are the subject of an real exploitation. It may not a priori oppose a similar mark which would cover different goods and services. But there is one exception: notorious trademark. Indeed, the owner of a trademark with a high reputation enjoys extensive protection. In particular, he may oppose a similar application when it seeks to take unfair advantage of the distinctive character of the well-known trademark. Prada thus asserted the well-known character of its mark before the Opposition Division.  

Prada: a well-known brand?

With more than a century of activity - indeed, it was in 1913 that the craftsman Mario Prada opened his leather goods store in Milan - the brand has established itself in the luxury sector, while diversifying its activities through ready-to-wear collections, and perfume and make-up ranges. To appreciate the notoriety of the markthe judges use the cluster method. The aim is to assess the knowledge of the mark by a relevant public, in a given territory and at a given time.  

Prada: fame without monopoly

EUIPO's assessment of reputation

The Opposition Division of EUIPO recognized in 2014 the reputation of the mark Prada as well as the similarity between the two signs. It therefore granted Prada's applications by expunging hotel services, but also allowed the registration of The Rich Prada brand for products and services considered to be far removed from the luxury sector. As both parties filed oppositions, the Board of Appeal had to decide on this case in 2016 and 2017. The Board of Appeal confirmed the decision of the Opposition Division: The Rich Prada benefits from the reputation of the Prada trademark (evoking glamour, quality and prestige) only for products and services strongly linked to the fashion industry, such as high-end catering or hospitality services. For the other goods and services referred to in the application, this undue benefit is not established.  

The repute of the trademark does not offer absolute protection

  Prada then filed a new appeal, which was rejected by the Court of Justice of the European Union (CJEU). The judges held that the well-known character of the mark does not allow its proprietor to enjoy an absolute monopoly on the term in question. They therefore ordered Prada to pay the costs. That decision is part of the the case law of the Community judgeswhich gives a central place to the principle of speciality. However, the brand The Rich Prada Since Prada's core business no longer includes hotel services, it is clear that Prada did not completely waste its time and money in this matter. Thanks to the brand monitoringPrada was able to defend its rights.