PRADA S.A v. The Rich Prada International PT

The Board of Appeal (BoA) dismissed the applicant’s appeal and partially upheld the opponent’s appeal with regard to a number of services in Classes 35 and 41. It found that, in view of the similarity of the marks, there would be a risk of unfair advantage being taken of the distinctive character or the repute of the earlier trade marks within the meaning of Article 8(5) EUTMR for the services closely linked to the fashion sector. The opponent appealed to the General Court (GC) for the annulment in part of the BoA decision relying on two pleas in law: (i) infringement of Article 8(1)(b), and (ii) infringement of Article 8(5) EUTMR. SUBSTANCE: Dissimilarity of the goods and services. The opponent failed to demonstrate that the public would be able to establish a plausible link with the different subcategories of goods, even those furthest removed from the sectors of fashion and luxury items to which the earlier marks refer (paras 47-50). Unfair advantage of the repute or of the distinctive character. Similarly, it is not sufficient to refer to the concept of brand extension and to generically submit that consumers will feel more attracted to the later marks due to their link with the reputed earlier mark; on the contrary, the opponent must submit specific, convincing arguments relating to the transfer of the positive values and image of the earlier marks to a later mark covering goods and services of a different nature (paras 54, 55). Detriment to the distinctive character. The opponent also failed to submit arguments and evidence that demonstrate a change in the economic behaviour of the average consumer or a serious likelihood that such a change will occur in the future (paras 55, 56).