The question thus becomes: can Prada’s Triangle pattern be protected as a trade mark?
According to the EUIPO Second Board of Appeal (BoA) in its decision on 19 December last (R 827/2023-2) the answer is mostly not, at least if the argument is that such a pattern would be inherently distinctive.
Let's see in greater detail what happened and what all this means more broadly.
Prada’s response was, among other things, that:
- “the iconic upside-down isosceles triangle … has clearly become PRADA’s iconic signature”,
- it has already successfully registered “Triangle” figurative trade marks with the EUIPO, and
- it has used and promoted the pattern extensively.
Eventually, the Examiner’s decision was to refuse registration in great part, including having regard to class 25. More precisely, the application was only allowed for some (useless) goods and services, specifically:
- Class 9: Recorded and downloadable media, computer software, blank digital or analogue recording and storage media; LED [light-emitting diodes]; electronic publications.
- Class 20: Shells; yellow amber.
- Class 35: Business management; business administration; office functions; auctioneering; business research; import-export agencies; marketing research; marketing studies; modelling for advertising or sales promotion; public relations; shop window dressing; organization of fashion shows for promotional purposes.
An appeal appeared unavoidable. Of particular interest is the point made by Prada that, in the fashion sector, it is an “established trade practice” to use patterns, with the result that consumers would attribute “an identifying function for pattern signs” when these are used systematically.
The BoA decision
In reaching its decision, the BoA first provided a summary of relevant case law concerning pattern marks and their inherent distinctiveness, including the well-known leitmotif that, while there is no different or enhanced standard of distinctiveness, consumers may see less conventional marks like 3D shapes and patters as not communicating commercial origin in themselves unless they represent a significant departure from the norm and customs of the reference sector.
The BoA's conclusion was that “the triangle-shaped pattern at issue is a basic and commonplace figurative pattern” which “does not contain any notable variation in relation to the conventional representation of triangle-shaped pattern and is the same as the traditional form of such a pattern.”
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.”
In sum: the Triangle pattern would not be inherently distinctive.
But could Prada’s pattern have acquired distinctiveness through use? The BoA could not say, since Prada had “explicitly refrained from relying on Article 7(3) EUTMR”.
The BoA also addressed Prada’s argument that, in the fashion sector, it is customary to use patterns as indicators of origin. The BoA appeared to agree that that is the case. HOWEVER, that practice would serve precisely for a pattern to gain distinctiveness on account of the use made of the sign! Translated: the BoA found Prada’s appeal not particularly well-construed and made a remark that reads a bit like a (figurative) slap on the wrist:
since in the case at issue the applicant is exclusively relying on the inherent distinctiveness of the mark applied for, this argument cannot succeed, since, in particular, as it has been concluded, the elements forming the sign applied for do not allow to conclude that it diverges from the norm or customs of the sector concerned.
It appears to me that the BoA could have not decided this case otherwise. Finding a (simple) pattern like Prada’s Triangle inherently distinctive would have meant going even further than paying EUR 700+ for a
The key to protection for a pattern like Prada’s as a trade mark is not and (correctly) cannot be inherent distinctiveness, but rather acquired distinctiveness. That, I think, could be found to subsist and consumers would see such a pattern as an indicator of origin rather than as a decoration.
A word of caution, however, is warranted.
Proving acquired distinctiveness is by no means easy, especially considering that (i) the relevant territory here is that of the European Union and (ii) so far EU authorities, including the EUIPO and the General Court, have rejected the idea that something like a “luxury consumer” does exist.
One example, also concerning a rather simple fashion pattern mark, comes readily to mind: it is Louis Vuitton’s (unsuccessful) attempt to register its Damier Azur pattern as an EU trade mark.
In sum: at this point for Prada the only (sensible) card to play – rectius: the only card that it should have played from the outset – seems to be claiming and demonstrating acquired distinctiveness of its Triangle mark, with however the awareness that many worthy fashion brands have fallen on this front already.
[Originally published on The IPKat on 7 January 2024]