15/02/2024
It is common practice for items of clothing and accessories to become highly sought after simply because of the presence of a brand name or logo. The ability for an item to be recognised by such symbols is arguably the underlying driving force for the consumer’s desire to own designer items. The question we now ask concerns a logo and whether it can still act as the origin indicator of the goods even without the presence of any word element(s).
Prada has been influential in the fashion industry since the early 20th century. Their distinctive triangle logo, referred to as the “Saffiano”, has been used and developed by Prada for decades. In 2021, they registered at the EUIPO the two figurative marks below; their triangle mark both with and without the inclusion of the words PRADA MILANO.
Despite having registered trade mark protection for their triangle without the presence of words (as shown above), in a recent EUIPO decision Prada’s application for a repeating pattern of such triangles was refused (Prada SA v EUIPO (Case R0827/2023-2)). Prada appealed the initial refusal, however, the EUIPO’s position did not change. The Board of Appeal agreed with the initial finding that the repeating triangle pattern was devoid of any distinctive character. They held that Prada’s application was simply for a repeating pattern of a commonplace geometric shape. Despite having granted Prada protection for their blank triangular shape it appears that, in the eyes of the EUIPO, when repeated in this manner the logo loses the key function of a trademark: to indicate the origin of goods or services.
In this case, Prada did not try to argue that the pattern in question had acquired distinctiveness through use over time in the EU.
Prada have other challenges to face around their triangle logo registrations. An older EUTM registration for the mark below is currently subject to an application for cancellation based on non-use.
The Applicant for revocation argues that they cannot see any evidence of use of the mark in the form it was registered. In some cases, use of a mark with written elements can also be regarded as use of that mark without the written elements. We are awaiting the EUIPO’s decision as to the success of the cancelation application, and it will be very interesting to see the view they take.
Prada are not shying away from applying for, and in turn successfully registering, new forms of their triangular branding.
Given the growing need for businesses in all areas, not just within the fashion industry, to consider their environmental impact, Prada launched ‘PRADA RE-NYLON’ and ‘RE-PRADA’. This collection consists of pieces using material “crafted from a regenerated nylon created through the recycling and purification of plastic collected from oceans, fishing nets, landfills and textile fibre waste globally”.
The marks shown above were selected for EUTM registration. None of the three marks shown above faced objection prior to their registration. There was no requirement to rely on acquired distinctiveness to assist in their admissibility. This therefore means that the EUIPO deemed the marks to be inherently distinctive.
Therefore, Prada’s triangle on its own, even when linked to recycling, is still considered distinctive by the EUIPO. We can see that it is only when it is repeated to appear as a pattern that the EUIPO hold that the inherent distinctiveness qualities are lost.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
