A registration for a version of Prada’s signature triangle trademark is safe from revocation in the European Union. In a decision issued late last month, the European Union Intellectual Property Office (“EUIPO”)’s First Board of Appeal held that Prada had demonstrated genuine use of its triangle logo across a variety of goods, including (but not limited to) suitcases, sports bags, briefcases, purses, and vanity cases. Siding with Prada, the Board of Appeal considered the complexity (or lack thereof) of Prada’s pared-back triangle mark and the necessary level of sales of goods bearing the triangle logo to establish “genuine use” of the trademark.
The Background: The matter got its start back in April 2023 when Italian leather goods manufacturer Erickstyle S.r.l. Initiated an invalidation proceeding with the EUIPO, arguing that Prada had not engaged in the requisite “genuine use” of the triangle symbol across various goods to warrant a registration. In March 2024, the EUIPO’s Cancellation Division partially revoked Prada’s trademark, asserting that the Italian luxury goods brands had not adequately demonstrated use of the triangle symbol on specific goods in Class 18, including suitcases, sports bags, briefcases, folders, purses, and vanity cases, prompting an appeal from Prada.
On appeal, Prada argued that it had used its triangle logo in a commercially meaningful way on the contested items, and submitted invoices documenting sales of the goods in question bearing the logo in multiple EU countries, including Austria, France, Germany, Italy, and Spain. Prada also submitted photographs showing the triangle symbol on a range of leather goods, with some minor variations. In certain instances, for example, the triangle featured two solid lines with a dotted inner line, which Prada argued did not detract from the mark’s distinctiveness.
And finally, Prada pointed to excerpts from prominent magazines that featured images of its goods marked with the triangle logo. This coverage, it argued, underscored the symbol’s recognition in the EU market and reinforced its identity as a marker of Prada’s luxury goods.
The Nature of Prada’s Mark
Siding with Prada on appeal, the First Board of Appeal found that the evidence submitted by the Miuccia Prada and and Patrizio Bertelli-run company – including sales invoices (and “the considerable amounts indicated therein”), product imagery, and extracts from various magazines – is “sufficient to establish that the use of the [mark] in dispute for the contested products is effective … when assessed as a whole.”
In what might be the more interesting aspect of the decision, however, the Board reflected on the triangle logo, itself, which has evolved from Prada’s original triangle mark but excludes the words “PRADA Milano,” along with “DAL 1913,” and the ribbon design and tiny coat of arms that are traditionally included within the bounds of the shape. The Board held that the mark “is not particularly complex, but on the contrary, is formed by rather simple geometric elements, none of which, taken individually, presents an average distinctive character.”
Nonetheless, in its “overall structure,” the mark “does not appear to be a simple geometric figure, but is configured in a complex whole, characterized by lines and shapes that generate a normal distinctiveness,” the Board held.
Ultimately, the Board determined that Prada’s pared-back version of the triangle (regardless of the level of complexity of its make up) functions as a trademark, as the company’s consistent placement of the mark on high-end leather goods and accessories enables the logo to fulfill a trademark’s essential purpose: to identify the origin of the goods upon which it appears.
The Board also noted that despite Erickstyle’s arguments to the contrary, minor modifications to the Prada triangle mark are not significant from a distinctiveness point of view. In its decision, the Board said it “agrees with the Cancellation Division that the omission of one of the lines” to form a dotted line as opposed to a solid line, for example, “is not capable of altering the distinctive character of the registered mark.” This is particularly relevant, according to the Board, “if one takes into account the fact that the registered trademark has no dominant elements, the omission of which could have a significant impact.”
At the same time, the Board stated that the evidence submitted by Prada showed the triangle mark depicted “in line with the colour of the product itself,” and that such use did not impact the distinctiveness of the mark, as such uses still showed the mark being used in the same “form in which it is registered with regard to the shapes and proportions of the triangle, including its orientation” (even if the color varied).
The Bar for Luxury Goods Brands
Another interesting takeaway comes by way of the Board’s consideration of the volume of sales of goods bearing the Prada triangle mark. Based on the invoices that Prada produced for sales goods bearing the pared-back triangle logo for the time frame at issue (a five year period between April 2018 and April 2023), the Board held that Prada sold 14 suitcases and sports bags, for a total of €12,760; 9 briefcases, folders, and leather envelopes for a total of €7,810; 142 purses for a total of €111,322; and 69 vanity cases for a total of €47,303 – a grand total of €179,195.
While this is a relatively small number of products and revenue, the Board found it to be sufficient to show genuine use of the mark by Prada when considered in conjunction with other factors, including images of the range of products upon which the mark appears and the media attention to goods bearing the mark. In particular, the Board emphasized that the “overall assessment of the intensity of use” requires looking at a number of different factors. “In fact, a low volume of products marketed under the said trademark may be compensated by a considerable intensity or by a great constancy over time of use of that trademark and vice versa,” the Board stated.
The Board further asserted that “the turnover achieved and the number of sales of products [bearing] the trademark … must be assessed in relation to other relevant factors, such as the volume of commercial activity, production or marketing capacity or the degree of diversification of the undertaking which exploits the trademark, as well as the characteristics of the products and/or services in the market concerned.”
Citing the EU General Court’s decision in Sunrider Corp v. OHIM (Case T-203/02), the Board stated that for the use of a mark to be considered “genuine,” it is “not necessary for it to always be quantitatively significant.” This is likely meaningful for companies in the luxury goods market more broadly, where quantities of goods sold tend to be lower than those sold in by mass-market entities, for instance, but at the same time, where marketing efforts (whether they be ad campaigns, runway shows, red carpet placements, etc.) tend to be big-budget endeavors that reach a sizable pool of consumers across the globe.
The Bottom Line: The Board granted Prada’s appeal and reversed the Cancellation Division’s partial revocation of its registration, finding that Prada demonstrated genuine use of the mark on goods like leather bags.
The case is Prada S.A. v. Erickstyle S.r.l, R 815/2024-1 (EUIPO First Board of Appeal).
Share
