A version of Prada’s iconic triangle trade mark has weathered a challenge to its registration and is safe from revocation in the European Union. The European Union Intellectual Property Office’s (“EUIPO”) First Board of Appeal upheld Prada’s rights to a pared-back version of its signature triangle mark and this decision may have implications for the broader luxury goods market.
The dispute commenced when Italian leather goods manufacturer Erickstyle S.r.l. filed an invalidation proceeding with the EUIPO. Erickstyle alleged that Prada had not engaged in the requisite “genuine use” of its triangle logo on several goods in Class 18, including suitcases, sports bags, briefcases, purses, and vanity cases.
The EUIPO’s Cancellation Division sided partially with Erickstyle, concluding that Prada had failed to demonstrate sufficient use of the triangle mark for some of the contested goods. Prada’s trade mark registration was partially revoked, prompting the company to appeal the decision.
On appeal, Prada argued that its triangle mark had been used in a commercially meaningful way across the contested product categories. The company presented a wealth of evidence to substantiate its claims, including:
Prada contended that these pieces of evidence, taken collectively, demonstrated genuine use of the trade mark.
An intriguing aspect of the Board of Appeal’s decision was its analysis of Prada’s triangle logo. The simplified version of the mark excludes the traditional text “PRADA Milano”, the ribbon design, and the small coat of arms that often accompany the shape.
It was acknowledged that the triangle mark is “not particularly complex” and comprises relatively simple geometric elements. However, it was noted that the consistent use of the triangle logo across Prada’s high-end leather goods allows it to function effectively as a trade mark, identifying the origin of the goods to consumers.
Importantly, the Board dismissed Erickstyle’s argument that minor variations in the mark’s design diminished its distinctiveness. For example:
Another critical takeaway from the decision was the Board of Appeal’s evaluation of Prada’s sales volumes. During the five-year period in question (April 2018 to April 2023), Prada sold:
In total, these sales amounted to €179,195.
While these figures might appear modest, it was held that they were sufficient to establish genuine use of the mark when considered alongside other factors. These included the high-end nature of Prada’s products and the considerable media attention given to the triangle logo.
The decision highlighted the principle that “genuine use” does not always require a significant number of sales. Instead, it involves an assessment of factors such as:
The Board referenced the EU General Court’s ruling in Sunrider Corp v. OHIM (Case T-203/02), emphasising that low sales volumes can be offset by consistent use over time or significant marketing efforts. This principle is particularly relevant in the luxury goods market, where products are often sold in limited quantities but enjoy widespread recognition due to high-profile marketing campaigns and media placements.
The decision to uphold Prada’s triangle trade mark reinforces the importance of consistent branding and strategic marketing in the luxury goods industry. For companies operating in this space, the ruling underscores that even minimal sales volumes can suffice to maintain trade mark rights, provided that the mark is used in a way that reinforces its association with the brand’s products and identity.
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