In July of 2023, Prada won a judgment in the EU General Court for their trademark dispute over Rada Perfume’s “Rada” brand. Prada claimed that Rada would cause confusion in the market since they both sold perfume. The court agreed with Prada, and Rada Perfumes was made to change their trademark. But how did Prada score this win? And what can you do to protect your perfume brand similarly? Let’s dive in with today’s blog.
Trademark Classification of Goods
Prada is already an industry giant when it comes to things like handbags, travel accessories, and shoes. However, among other fashion and beauty products, Prada also sells perfume. When the Moldova company Rada Perfumes first filed their trademark registration application, they had to select a classification of goods that their brand would provide. Class 35 goods in the EUIPO includes:
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- “Online retail services relating to cosmetics”
- “Mail order retail services for cosmetics”
- “Wholesale services in relation to fragrancing preparations”
The problem was that Prada also offered class 35 goods under their Prada and “Prada Milano, Dal 1913” brand. Additionally, Rada’s proposed trademark logo was simply the word “Rada” in all capital letters with “perfumes” in lower case beneath, which looked strikingly similar to Prada’s trademark logo.
Because Prada had already been established in this classification of goods for many years, they had a strong case that Rada’s trademark might be used to cause market confusion, driving customers to Rada under the mistaken impression that it was Prada. Although Rada pointed out that their fragrances were different from Prada’s, taking on a more oriental inspiration compared to Prada’s more Western European aesthetic, the court found that the differences were not distinct enough to prevent market confusion.
The Complexities of International Trademarks
Rada Perfumes argued to the Board of Appeal that their “Rada” trademark had been registered in Romania since 2015. Since Romania is a part of the European Union, it’s easy to understand how Rada might have expected that to add weight to their EUIPO trademark application.
But the EU General Court said that wasn’t the case. “The EU trademark regime is an autonomous system,” they responded, “with its own set of objectives and rules peculiar to it, which apply independently of any national system.” The Romanian trademark, thus, was irrelevant to this case.
This is an important reminder of international trademark rights. Prada not only has registered trademarks in the United States, Italy, and the European Union. If you plan to have a business in multiple national jurisdictions, it’s important to look at the trademark rights in each region.
Prada won their case based on details that Rada Perfumes might have seen as small, which highlights how important it is to pay attention to those small details. Even better, have an experienced intellectual property attorney like Garcia-Zamor on your side. We can handle your trademark applications, research, and even international intellectual property rights. Contact us today to learn more about how we can help you protect your perfume brand.
