General Court confirms likelihood of confusion between RADA and PRADA
Good news for Prada. On 26 July 2023, the General Court dismissed the appeal brought by ‘Rada Perfumery SRL’ (‘applicant’) against the EUIPO’s decision refusing registration of its denominative trade mark ‘Rada’ on the grounds of likelihood of confusion with earlier marks of the Italian luxury house Prada (‘intervener’).
Background to the dispute
On 22 January 2020, the applicant filed an EU trade mark application with EUIPO for the figurative sign ‘RADA perfumes’ for the goods and services in and of the Nice Classification. On 4 May 2020, Prada SA filed a notice of opposition to the registration of the mark applied for, based on the following earlier European Union trade marks:
- ‘PRADA’: EU figurative mark No 11918331 designating goods in Class 3
- ‘PRADA’: EU figurative mark No 12443362 designating services in Class 35
- ‘PRADA Milano’ EU figurative mark No 13400635 designating goods in Class 3
The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of Regulation (EU) 2017/1001 on the European Union trade mark (‘EUTMR’). On 4 August 2021, the Opposition Division partially upheld the opposition in the basis of Article 8(1)(b) of EUTMR in respect of all the goods in Class 3 and some in Class 35 on the ground that there was a likelihood of confusion. On 20 September 2021, the applicant filed an appeal with EUIPO, and the Board of Appeal dismissed it on the same grounds. The applicant appealed to the General Court essentially relying on a single plea in law, alleging infringement of Article 8(1)(b) of EUTMR. Article 8 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods and services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected.
Judgement of the General Court
The comparison of the goods and services
The applicant claimed that the perfumes it markets are oriental perfumes with a different composition, bottles, smell and packaging from the goods designated by the earlier marks, which were packaged in ‘European’ and ‘elegant’ bottles with inscriptions in French or English. The General Court stated that, for the purposes of assessing whether there is a likelihood of confusion, only the description of the goods and services in respect of which registration of the mark is sought is relevant; however, the intended or actual use of that mark cannot be considered. Thus, the composition, smell, or packaging of the goods, are ineffective for the purposes of determining whether the goods and searches concerned are similar. Consequently, the Court confirmed the Board of Appeal’s finding that the goods and services at issue were identical.
The comparison of the signs
- The earlier marks No 11918331 and No 12443362 (‘the first two earlier marks’) consist of the single word element ‘prada’, in stylised capital letters.
- The earlier mark No 13400635 (‘the third earlier mark’) consist of the same word element, below which are the word element ‘milano’ in smaller uppercase letters, the word element ‘dal 1913’ in the centre of a figurative element representing a banner and a figurative element representing a coat of arms.
- The mark applied for consists of the word element ‘rada’ in capital letters below which the word element ‘perfumes’ appears, smaller, in fine capital letters. Two red strokes or dashes appear on the left and right of that latter element.
The first two earlier marks consisted of a single word element, namely ‘prada’, which performed a decorative role. Likewise, that word element constituted the dominant element in the third earlier mark, whose additional elements, namely ‘milano’, ‘dal 1913’ and the coat of arms and banner, were, by contrast, weak, descriptive or non-distinctive.
As regards the mark applied for, the Board of Appeal found that the word element ‘rada’ was its dominant element, while the word element ‘perfumes’ was descriptive of the goods and services covered by that mark.
The visual comparison
The applicant argued that the signs at issue differ in the fonts used and in the graphic elements that differentiate them, namely the additional word element ‘perfumes’ in the mark applied for, and the word elements ‘milano’ and ‘dal 1913’ as well as the figurative elements representing a coat of arms and a banner, in the third earlier mark.
The Court stated that, as the fonts used in those marks are neither particularly fanciful nor unusual, the differences between them have only a marginal impact on the visual comparison and are not sufficient to rule out the high degree of visual similarity between the mark applied for and the first two earlier marks, which have in common the sequence of letters ‘r’, ‘a’, ‘d’ and ‘a’. As regards the third earlier mark, on account of the presence of the word elements ‘milano’ and ‘dal 1913’ and of the figurative elements representing a coat of arms and a banner, which are not present in the mark applied for, the visual similarity between the mark applied for and the third earlier mark is only average.
The phonetic comparison
The applicant submitted that the letter 'p' makes a clear distinction between the signs at issue, since that letter is 'sonorous' and, followed by the consonant 'r', transforms the element 'prada' into a 'strong ... word', unlike the element 'rada', composed of two consonants and two vowels, which appears, according to the applicant, as a ‘weak but melodious word’.
The General Court stated that the word element ‘perfumes’ in the mark applied for, and the elements ‘milano’ and ‘dal 1913’ in the third earlier mark are unlikely to be pronounced by the relevant public, since they occupy a secondary position in relation to the elements ‘prada’ and ‘rada’ —they are written in small-sized letters and they are descriptive of the goods and services in question. Regarding the dominant elements, the General Court stated that, notwithstanding the difference linked to the presence of the letter ‘p’ at the beginning of the earlier marks -which the Court considered it a voiceless consonant-, the sequence of letters ‘r’, ‘a’, ‘d’ and ‘a’, common to the signs at issue, was pronounced the same way in both signs. Therefore, it stated that the phonetic similarity between the elements ‘prada’ and ‘rada’ is high.
The conceptual comparison
The General Court stated that the element ‘prada’, present in the earlier marks, did not have a clear conceptual meaning for the relevant public. Although that element corresponds to the name of the founder of those marks, the General Court argued that there is nothing to indicate that the relevant public may associate that element with a family. The same applies to the word element ‘rada’ of the mark applied for. The applicant has not provided any evidence that the relevant public would associate the term ‘rada’ with the first name of a person, still less with the first name of the founder of the mark.
However, the Court noted that the other word elements do have a clear conceptual meaning for the relevant public: the word element ‘perfumes’(attached to the ‘Rada’ mark) is easily understood because its spelling proximity to the French term ‘parfums’, the element ‘milano’ is associated with the Italian city and the element ‘dal 1913’ is understood by it as meaning ‘since 1913’. Thus, the General Court concluded that the marks at issue were conceptually dissimilar.
The overall assessment of the likelihood of confusion
The General Court stated that the goods and services at issue are identical, the degree of visual similarity between the marks at issue varies from average to high and the degree of phonetic similarity between those marks is high. Even though the marks at issue are conceptually different, the conceptual differences between those marks are not sufficient to outweigh the visual and phonetic similarities. For this to be the case, at least one of the marks at issue must have a clear and specific meaning which the relevant public can grasp it immediately, and the other mark must have no such meaning or a completely different meaning. In the present case, the applicant has not shown that a significant part of the relevant public was aware that the word element 'prada' in the earlier marks referred to the name of its founder and, still less, that such a meaning was clear and specific in the mind of that public. The same applies to the meaning of the mark applied for.
The General Court concluded that the single plea in law relied on by the applicant must be rejected. Consequently, it dismissed the action in its entirety, confirming that the ‘Rada’ application could not go through.
The eyewear logo requested by Nike differs from that of Multiópticas
Last 12 of July, the General Court dismissed the appeal filed by Multiópticas against Nike Innovative CV in Case T-487/22. Multiópticas had opposed the registration of a trade mark for the sale of eyewear filed by the sporting goods giant because of the alleged similarity with its earlier signs.
Background to the dispute
On 19 November 2019, Nike Innovate CV filed an application for registration of an EU trade mark with EUIPO in respect of the figurative sign linked here for the services in Class 35 of the Nice Classification corresponding to the following description: ‘Retail store services in relation to eyewear; and online retail ordering services by means of a global computer network in relation to eyewear’.
On 15 April 2020, Multiópticas (“the applicant”) filed a notice of opposition to registration of the mark applied for on the grounds of Article 8(1)(b) and (5) of EUTMR. The opposition was based on the following earlier marks:
- The EU figurative mark registered on 29 July 2009 under No 7491095 covering the services in Class 35
- The EU figurative mark registered on 29 July 2009 under No 7490923 covering the services in Class 35
- The EU figurative mark registered on 7 October 2013 under No 11810595 covering the services in Class 35
- The Spanish figurative mark registered on 14 June 2013 under reference designation the services in Class 35
On 7 September 2021, the Opposition Division rejected the opposition under Article 8(1)(b) and (5) of EUTMR. On 13 October 2021, the applicant filed an appeal with EUIPO against the decision of the Opposition Division. By the contested decision, the Board of Appeal dismissed the appeal, holding that the signs at issue were not similar on the grounds of Article 8(1)(b) EUTMR. Having recalled that the conditions set out in Article 8(5) of EUTMR were cumulative and that one of them, in the present case the similarity of the signs at issue, was not satisfied, it also rejected the opposition on the basis of that provision. The applicant appealed to the General Court seeking the annulment of the contested decision alleging infringement of Article 8(5) of EUTMR (about grounds for opposition linked to the earlier trade mark having reputation). It submitted that there is a certain similarity between the signs at issue, so the Board of Appeal should have assessed whether the conditions laid down in that provision were satisfied.
Judgement of the General Court
First of all, the General Court stated that, for an earlier trade mark to be afforded the broader protection under Article 8(5) of EUTMR, the following cumulative conditions must be fulfilled: the earlier trade mark which is claimed to have a reputation must be registered; that mark and the mark applied for must be identical or similar; it must have a reputation in the EU (earlier EU trade mark) or in the Member State concerned (earlier national trade mark); the use of the mark applied for must take unfair advantage of, or be detrimental to, the distinctive character or reputation of the earlier trade mark.
The applicant submitted that the degree of similarity required in the context of each of those provisions is different. Whereas Article 8(1)(b) requires similarity giving rise to a likelihood of confusion, in the case of Article 8(5), such a likelihood is not necessary for protection. The General Court clarified that the criteria for assessing the similarity between the marks are the same whether it is for refusing registration due to likelihood of confusion (Article 8(1)(b)) or for refusing due to damage to the reputation of an earlier mark (Article 8(5)). In both cases, similarity requires visual, phonetic or conceptual elements, so that the marks at issue are at least partially identical from the point of view of the relevant public.
Visually, the applicant argued that the mark applied for could be seen as both the letter “n” and a lower case “m”, with the circle resembling a lower case “o”, all in bold black, which are key features of the earlier marks. It argued that, even if the similarity is minimal, the relevant public will still associate the two marks since, as the earlier marks form a family with common elements, it is to be expected that they will take various shapes. The General Court ruled that the mark applied for is purely figurative because it lacks distinct lines or outlines resembling letters. It consists of two solid black geometric shapes: a square with a rounded upper section and a basic circle, so that the average consumer will not link these shapes to any letter combination but will perceive the mark as a fanciful figurative design without any word element. By contrast, the earlier marks relied on in support of the opposition all clearly show word elements, namely the letter ‘m’ juxtaposed with the letter ‘o’ with an accent, so that the relevant public will immediately perceive those word elements as such.
On a phonetic level, the applicant submitted that the mark applied for is phonetically similar to the earlier marks in so far as it retains the pronunciation of the average Spanish consumer, namely “no” or “mo”. The General Court considered the phonetic comparison to be irrelevant when assessing the similarity of a figurative mark without words with another mark as wordless figurative marks are, by their nature, not pronounceable. The court stated that, as the public will not identify the letters 'n' and 'o' in the mark applied for, it will not pronounce them either, making the phonetic comparison irrelevant.
Conceptually, the General Court stated that, as neither of the signs at issue has a meaning taken as a whole, a conceptual comparison is not possible. The General Court confirmed the decision of the Board of Appeal by holding that the signs at issue were not similar -not even a lower degree-, but dissimilar.
Since the conditions laid down in Article 8(5) of EUTMR are cumulative, one of them not being fulfilled (the similarity between the signs), the General Court held that the single plea raised by the applicant must be rejected. It therefore dismissed the action in its entirety. As a result, Multiópticas could not succeed in opposing Nike’s registration.
- Publication date
- 5 September 2023
- European Innovation Council and SMEs Executive Agency