Prada’s triangle logo was first used in 1913 by Mario Prada - founder of the brand a mark of quality and craft and a symbol of luxury. In present times it has become a shape immediately associated with Prada echoing the shape of the -A-of the brand’s name.
The isosceles triangle logo has not only been a marker of the brand identity and a source identifier but also a source of inspiration for its iconic “Symbole” pattern or its Paradoxe Eau De parfum bottle. PRADA recently encountered a legal challenge at the European Union Intellectual Property Office (EUIPO) concerning its trademark registration for the Triangle mark. The trademark's validity was contested on the grounds of non-use, with the claim asserting that PRADA had failed to utilize the mark in a manner sufficient to maintain its distinctiveness and recognition among relevant consumers and trade channels. Consequently, this resulted in a partial revocation of the trademark under the applicable provisions of EU trademark law.
The following article discusses how PRADA protected its trademark registration at the EUIPO.
Prada vs. Erickstyle: The Triangle Logo Battle Explained
In a ruling last month, EUIPO's First Board of Appeal upheld Prada's registration for a relatively new-in-the-market version of its iconic triangle trademark. The aim was to ensure the brand's triangle logo remained protected across various goods, including suitcases, sports bags, briefcases, purses, and vanity cases. The decision was based upon Prada's ability to demonstrate genuine use of the pared-back triangle mark to reaffirm the brand's rights and safeguard its intellectual property.
This matter began in April 2023 when Italian leather goods manufacturer Erickstyle S.r.l., challenged Prada's trademark registration by initiating an invalidation proceeding with EUIPO, arguing that Prada had failed to meet the threshold of genuine use required to maintain the trademark for specific goods. EUIPO's Cancellation Division, in March 2024, partially revoked Prada's registration, asserting that the brand needed to successfully provide adequate evidence of the logo's use on products within Class 18, such as suitcases, sports bags and purses. This setback prompted Prada to file an appeal, determined to protect its rights to the triangle symbol- a key element of its brand identity.
The challenge posed was whether Prada's iconic triangle logo met the threshold of "genuine use."
The concept of genuine use comes from the requirement that a trademark must be actively and effectively used in commerce rather than merely being reserved without purpose, demonstrating sufficient and consistent application in the relevant market to identify and distinguish a brand's goods or services.
"Genuine Use" could be understood by observing the broader vision and implication of the various statutes across various jurisdictions which intend to lay down the legal premise on the same, for instance, Article 47 of the European Union Trade Mark Regulation (EUTMR), requiring "use in commerce" to maintain a trademark.
The idea remains the same; the trademark owners must provide solid and objective evidence of active and sufficient use in the market to support the validity of their trademark.
Thereby, the contested brand is required to prove the prevalence of its mark beyond assumptions or probabilities and to demonstrate that the mark has been used commercially to create or sustain market share.
In the appeal, Prada made a compelling case to prove the genuine use of its triangle logo. ; The brand presented invoices evidencing sales of goods featuring the logo across multiple EU countries such as Austria, Germany, Italy, Spain and France, along with photographs showcasing the triangle symbol applied to various leather goods, albeit with some minor variations. The design captured attention, where the triangle logo featured two solid lines with an inner dotted line. Prada contended that such changes did not detract from the logo's established distinctiveness but represented natural design evolutions commonly observed in several brands. Prada also highlighted excerpts from leading magazines featuring its products prominently marked with the triangle logo to cement its widespread reach and acceptance further.
Turning its attention to the triangle mark itself, the EUIPO's Board of Appeal, which had evolved from Prada's original design by excluding elements such as "PRADA Milano," "DAL 1913," the ribbon design, and the small coat of arms. The Board duly considered the simplicity of the geometric design, concluding that in its "overall structure," the logo transcends being a basic geometric shape and reassuring by describing it as a "complex whole" characterised by carefully arranged lines and shapes impart distinctiveness.
Dismissing Erickstyle's claim that minor modifications like using a dotted line instead of a solid line negate the mark's distinctiveness. The Board further noted that these changes were inconsequential and did not alter the core character of the registered trademark. The Board clarified that since Prada's registered trademark lacked dominant elements for years, such modifications could not significantly impact its distinctiveness.
Another noteworthy aspect of the Board's decision was its evaluation of the product sales volume featuring Prada's pared-back triangle logo. Submitting invoices spanning five years from April 2018 to April 2023, documented sales of 14 suitcases and sports bags totalling €12,760, 9 briefcases and folders totalling €7,810, 142 purses generating €111,322, and 69 vanity cases for €47,303, resulting in a cumulative revenue of €179,195. Whilst regarded as modest when viewed from the lens of voluminous sales and revenue, which is usually expected, the Board found it sufficient to demonstrate the genuine use of Prada's trademark when assessed with other factors. Including the images of the products adorned with the logo and the extensive media coverage of goods bearing the mark.
The Board highlighted that the "overall assessment of the intensity of use" must consider multiple dimensions, noting that "a low volume of products marketed under the said trademark may be compensated by a considerable intensity or by great constancy over time of use of that trademark and vice versa."
The nuanced understanding developed here is that luxury brands, like Prada, often sell fewer items than mass-market companies, but they invest heavily and rely considerably on high-impact marketing strategies- such as ad campaigns, runway shows, and red-carpet placements, to reach a global audience. Reinforcing the luxury market's perspective of the importance of quality over quantity in assessing genuine use. The Board, in this case too, emphasized that the turnover and number of sales must be evaluated not in a vacuum but alongside other relevant factors, such as the volume of the commercial activity based on the industry type and the production or marketing capacity of the brand.
The Board upheld Prada's appeal, overturning the Cancellation Division's earlier decision to partially revoke its registration. Prada successfully demonstrated genuine use of its triangle mark on goods such as leather bags and other contested items.
However, there have been other instances wherein the distinctiveness of Prada’s triangle mark has been brought into question. While the standalone inverted isosceles triangle has gained enough distinctiveness to be recognised as a trademark, the same is not the case for its other adaptations.
Prada’s Loss: The Symbole Pattern Trademark Case
The Symbole pattern - a pattern depicting a set of black and white triangle elements which are repeated regularly- which was applied for registration with the EUIPO by the brand for registration was held to be not inherently distinctive.
The Application for the pattern mark was filed in 2022, under Application No. 18683223 concerning goods and services in classes 3, 9, 14, 16, 18, 20, 24, 25, 27, 28, and 35 of the Nice Classification.
Why Prada’s Pattern Mark Was Rejected
The objection was raised under Article 7(1)(b) EUTMR for many of the classes applied for by the EUIPO, as it held that the pattern was not inherently distinctive and thereby was incapable of being recognised as a trade mark.
The IPO held that “the consumers are not in the habit of assuming a commercial origin of a pattern depicting a set of black and white triangle elements which are repeated regularly and being nothing else than the outward appearance of the goods unless the particular arrangement is striking and memorable” which it held was not the case in the present case.
The office held that the upside-down isosceles triangle was a rather common mark and did not contain any unusual or distinguishing features which allowed it to be significantly differentiated from other upside-down isosceles triangles, considering the wide range of similar patterns already available in the market. The office also referred to the upside-down triangle of the mark of the brand GUESS which although did not have two angles of the same size still was quite similar to Prada’s applied mark.
The Appeal and BOA’s Key Findings
In 2023, Prada filed an appeal against the office’s decision and asserted that the trade mark applied was a very specific pattern with the following distinguishing features; “(i) a striated and granulated surface, (ii) closely intertwined with the representation of PRADA’s very iconic protected upside-down isosceles triangle, (iii) in black, (iv) replicated and (v) connected to each other by its angles, (vi) in order to form successive horizontal lines, (vii) presented in staggered rows and (viii) creating as many empty neutral intervals”
The brand also contested that even if the pattern was ‘simple’ or ‘common’ it would be perfectly registered as a trade mark as long as it was capable of identifying the goods and/or the services for which the registration has been requested, suitable for identifying them as coming from a specific company and thereby capable of distinguishing these products and/or these services from those of other competing companies.
The brand also emphasized that its singular mark had already been applied and registered and thereby the repetition of the same distinctive element as a pattern trademark must also be eligible for registration.
In its analysis, the Board of Appeal highlighted that the distinctive character must first be assessed by reference to the products or services in respect of which registration has been applied and second by reference to the perception of the relevant public which consists of average consumers of the products or services in question, who are reasonably well informed and reasonably observant and circumspect, which may vary according to the category of products and services in question.
The BOA held that however, the purpose of applying those criteria, the relevant public’s perception is not necessarily the same in the case of a three-dimensional mark, as it is in the case of a word or a figurative mark, which consists of a sign unrelated to the appearance of the products it denotes and the average consumers who are not in a habit of making assumptions about the origin of products based on their shape or the shape of their packaging in the absence of any graphic or word element and it could therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in the case of a word or figurative mark.
Concerning the contested mark, the BOA held that the form of a pattern intended either to be placed on part of the goods or to cover the whole of their surface area and thus corresponds to the outward appearance of the goods, as a design element in relation to the marketing or rendering of the services. Therefore, the assessment of the distinctive character of the contested mark shall primarily be based on the principles applicable to three-dimensional marks. The BOA noted that very simple and commonplace shapes have no distinctive character and when affixed to the products applied for may be perceived in some cases as indications of commercial origin, it does not mean that any pattern would be perceived that way.
The court held that even when the pattern was applied to several of the goods cited in the application, it was not distinctive enough to be registered as a trade mark. With specific regard to clothing, textiles and the likes, the BoA found that the Examiner had been correct to find that the pattern in question is “commonly used”, with the result that “the targeted public would merely perceive the repeating pattern as a typical design of decorative elements, as opposed to a trade mark”. It would follow that the average consumer when seeing the Prada pattern, would consider it “immediately and without further thought … as an attractive detail of the product in question, or as a banal decorative element, rather than as an indication of its commercial origin.”
It must also be noted that in the present case, PRADA specifically refused to rely on Article 7 (3) of the EUTMR which discusses the “acquired distinctiveness” of the mark as a means of proving the capability of the pattern mark to act as a source identifier of Prada’s products, however even then the registration of the mark was not guaranteed as other luxury brands such as Louis Vuitton have failed to register its pattern mark “Damier Azur” under the guise of “acquired distinctiveness”.
In a manner, the two cases, clearly demonstrate the challenge luxury brands face in protecting their evolving visual identities, especially when it comes to shapes and symbols of common parlance which may eventually be deemed to be purely ornamental instead of being perceived as distinctive and as an indicator of the brand.
In the case of PRADA, the isosceles triangle was the subject matter of both applications, however, its depiction, manner of use and dimensions are entirely different from each other thereby creating a difference in the general perception of the consumers and the persons interacting with the goods as was noted by the Board of Appeal. The case thereby serves as a reminder to brands to place more importance on strategising the usage and placement of their distinctive elements to prevent them from becoming purely ornamental and thereby losing distinctiveness.
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