22 February 2024

Can Prada’s Iconic Triangle Pattern be Protected as a Trade Mark?

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The EUIPO has ruled on whether Prada can protect their triangle pattern, referred to by Prada themselves as being their “iconic Triangle”. The EUIPO Board of Appeal has ruled that the pattern would not be inherently distinctive, but what does this mean?

Some background to the Prada Triangle case

Prada applied to register its triangle pattern (depicted below) in April 2022 as an EU trade mark (EUTM Application No 018683223) in relation to the goods and services in Classes 3, 9, 14, 16, 18, 20, 24, 25, 27, 28, 35, which includes everything from non-medicated cosmetics and toiletry preparations to clothing and video games.

prada triangle pattern

The Examiner prosecuting the application raised the objection that the trade mark lacked inherent distinctiveness pursuant to Article 7(1)(b) EUTMR for the majority of the goods and services applied for.

Prada argued that the iconic upside-down isosceles triangles had clearly become their iconic signature; they had already successfully registered “Triangle” figurative trade marks before with the EUIPO; and that the pattern had been extensively used and promoted. 

The case was refused by the Examiner for the majority of goods and services applied for and was allowed only for certain classes of goods and services that were of little use to Prada, including computer software, business administration and marketing research. 

Prada appealed the decision but specifically refrained from relying on acquired distinctiveness through use, relying solely on their inherent distinctiveness argument.

Decision of the Second Appeal Board 

To achieve inherent distinctiveness, in the absence of verbal elements or other elements that could allow the sign to be perceived by consumers prima facie as trade mark, the EUIPO generally considers that the overall impression created by simple shapes following a pattern, as in the mark applied for, is devoid of any distinctive character. In other words, consumers will not perceive the pattern as a badge of trade origin, but merely as a decorative pattern of a style which is commonplace in the field of textiles and other industries concerned in the case at issue.  This is outlined in the EUIPO trade mark guidelines

The Board of Appeal concluded in its decision that the triangle-shaped pattern is indeed “a basic and commonplace figurative pattern” and “does not contain any notable variation in relation to the conventional representation of a triangle-shaped pattern and is the same as the traditional form of such a pattern”.

Specifically, regarding clothing, textiles and similar goods, the Board of Appeal agreed with the Examiner to find that the pattern is “commonly used” and “the targeted public would merely perceive the repeating pattern as a typical design of decorative elements, as opposed to a trade mark”.  The average consumer would consider the Prada pattern “as an attractive detail of the product in question, or as a banal decorative element, rather than as an indication of its commercial origin”.

prada bags with triangle pattern

As such, the Board of Appeal found the pattern lacked inherent distinctiveness. The Board of Appeal could not say whether the triangle pattern could have acquired distinctiveness through its use because Prada did not rely on Article 7(3) EUTMR in the appeal.

Inherent vs Acquired Distinctiveness

Although it was claimed that the pattern was “iconic”, which could lead to a finding of distinctive character acquired through use, Prada did not rely on the acquired distinctiveness of the sign and as such, the EUIPO could only assess its inherent distinctiveness in respect of a very wide range of goods, and which the application was found to be lacking.

Proving that a mark has acquired distinctiveness is a means to bypass a lack of inherent distinctiveness. However, this is no easy task as the mark must have acquired distinctiveness through a significant portion of the EU to be accepted by the EUIPO. 

In this case at least, it appears that acquiring distinctiveness is the only way this triangle pattern may be accepted by the EUIPO for goods and services of use to Prada.

27 December 2023

Trade Mark Infringement Decision: Lifestyle Equities CV vs. Royal County of Berkshire Polo Club

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A long-running trade mark dispute has finally reached a conclusion in the High Court, with the judgement delivered earlier this year.  The case involved Lifestyle Equities CV, a licensee of Beverly Hills Polo Club, who had brought multiple actions against rival polo clothing brands, including our client, the Royal County of Berkshire Polo Club (RCB).

What did the trademark infringement consist of?

Claims of registered trade mark infringement were made by Lifestyle Equities, alleging that RCB’s logo (below, left) was confusingly similar to the logo of Beverly Hills Polo Club (below, right), and also that RCB’s logo took advantage of the reputation of the Beverly Hills logo.  In addition, Lifestyle Equities alleged passing off by RCB, although the parties agreed that this would only be considered if there was first found to be registered trade mark infringement.

 

The approach taken by Lifestyle Equities appeared overly aggressive, naming 10 other individuals and companies as defendants in the case, while also claiming a “conspiracy to injure” by RCB, and this was criticised by the judge in the case deeming this to be “as oppressive as possible and not proportionate”.

The elephant in the room

Ultimately, the claims of infringement failed, with the judge noting that the primary point of distinction between the two was the names of the brands with no weight or distinctiveness being afforded to the horse and rider motifs or the words “polo club”.  Consequently, the average consumer would make no link between the two logos.

A key factor in the decision made by the judge was the existence of a coexistence agreement in place between RCB and the “dominant” polo brand in the marketplace: Ralph Lauren.  The dominant position in the marketplace held by Ralph Lauren’s polo brand significantly reduced the degree of distinctive character of the Beverly Hills mark.

Further, the coexistence agreement between RCB and Ralph Lauren, which was negotiated and put together by trade mark attorneys at Bailey Walsh & Co. LLP, indicated that Ralph Lauren considered its horse and rider motif to be sufficiently different from those of RCB and Lifestyle Equities such that there would be no confusion on the part of the average consumer.  The judge considered this to provide a very useful and practical insight into the polo brand marketplace.  In addition, further evidence compiled by Bailey Walsh & Co. LLP was key in showing the existence of other polo brands coexistence agreements.

The final outcome

As a result, the judge found there to be no evidence of confusion and the claim of trade mark infringement was dismissed, and consequently the remaining claims were also dismissed.

Despite the “overly oppressive” approach taken by Lifestyle Equities, the work carried out by attorneys at Bailey Walsh & Co. LLP was instrumental in ensuring a positive outcome for our client.

If you have any questions or would like further information regarding any of the above, or would like to understand how we could help you, please do not hesitate to contact us, either by email at mail@bailey-walsh.com or by telephone on +44 (0)113 243 3824.

21 January 2023

UK address for service is imperative for UK registered trade mark applicants and proprietors

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The UKIPO has issued a notice on 25th January 2023 advising of a change in practice regarding serving documents relating to any cancellation, rectification or opposition proceedings on UK designations of International Registrations (IRs)

Where no UK address for service is recorded against the UK designation of an IR, before any documents are considered to be formally served, the UKIPO will notify the WIPO representative, or the holder of the IR directly by post only, that a UK address for service will be required in the UK within one month of the issuance of the notification and to confirm the intention to defend the action.

This highlights the importance for overseas holders of IRs designating the UK to have a UK address for service in place and, in view of the tight deadline of such notices from the UKIPO, we would strongly recommend that a UK representative be appointed as early as possible.

21 October 2022

Importance of a UK address for service for WIPO registrations highlighted in MARCO POLO case

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The recent United Kingdom Intellectual Property Office (UKIPO) Marco Polo decision highlights the risks of the owners of International Registrations not appointing a UK address for service for the UK designations.

In this case, the mark was cancelled after the owner did not respond to a notice issued by the UKIPO because the office in Australia was closed due to the COVID-19 pandemic.

Current practice of the UKIPO, where no UK address for service is recorded, is to directly notify the proprietor and not the WIPO representative.  There was no UK address for service in the Marco Polo case and as such, the invalidity notice was sent directly to the owner.  The owner failed to file a defence to both the first and second notices and consequently, the mark was cancelled.

The owner appointed a UK address for service and appealed the decision.

The matter is currently being reviewed by the UKIPO and we expect to receive guidance on this issue in the near future.