Luxury goods manufacturers are sadly well used to dealing with counterfeit products. However, there appears to be a developing trend for companies or individuals to file applications for trade marks which are, some might say, similar to the luxury brand but which can in the right circumstances achieve registration because they are sufficiently removed from the luxury brand name itself.
Calvin Klein were successful in preventing registration of CAIVENKELIN in the European Union. Prada, however, fared less well.
It is interesting to note that Prada’s Opposition to registration of PULADA failed on likelihood of confusion because the EUIPO decided that the trade marks were not sufficiently visually or aurally similar and conceptually neither mark had any meaning. The EUIPO did not regard the typeface used in PULADA, which is identical to Prada’s to be distinctive or to depart from commonplace fonts. The EUIPO also considered it irrelevant that PULADA is a Chinese transliteration of PRADA because Chinese is not an official language of the European Union. Luxury goods manufacturers have a significant client base of wealthy Chinese Nationals who travel to Europe to purchase luxury goods. This was not raised in the proceedings, however, even it had been it is unlikely that such an argument would have had any persuasive effect without hard evidence to support it.
It would have been interesting to see how the PULADA Opposition would have got on if Prada had filed more extensive evidence of its reputation. Arguably PRADA is a well-known mark within the meaning of the International Paris Convention on trade marks and it may be that Prada decided that its reputation in its name stood on its own merits. However, the EUIPO did not see things this way and determined that the evidence of reputation filed by Prada was insufficient, principally because the evidence came from the records of Prada rather than being independent evidence.
A cautionary tale then for brand owners with a reputation to be aware of the importance of filing independent evidence of that reputation when seeking to oppose a conflicting application.
The general public is sophisticated in its approach to trade marks and this development in the protection of trade marks which are seeking to ride on the coat-tails of well-known marks is something brand owners need to be aware of. They should also take very seriously the need to file good evidence of their reputation and use at the Opposition stage as further evidence may not be allowed at any Appeal stage.
Brand owners should also consider ensuring that they have comprehensive watching services in place, and should not rely on Trade Mark Registries to notify them of conflicting applications. A commercial watching service should identify any conflicting marks and our Trade Marks team would be happy to advise on watching services as well as protection and enforcement strategies.