Prada’s triangle is undoubtedly a commonplace feature of the Prada brand. First used by Mario Prada, the founder of the fashion house, in 1913 as a symbol depicting quality and luxury, the triangle now features as of one of Prada’s logos, forms the basis of the shape of many of their products (e.g. the Paradox perfume), and is used as a decorative pattern on goods ranging from bags and scarves to plates and bowls. 

This decision doesn’t relate to Prada’s first registration for the triangle motif. Prada has several registrations for variations of the triangle, including the variation used as a logo: 

Prada has also successfully registered a standalone upside-down triangle (but this may too be at risk due to cancellation proceedings):

However, the self-proclaimed “iconic” triangle faced a knock back last month when the EUIPO rejected Prada’s appeal to register the pattern as a trade mark (for most goods and services applied for) on the ground that it is devoid of distinctive character. 

Background

In April 2022, Prada filed to register the below pattern (the “Triangle Pattern”) for goods and services in several classes, which covered, amongst other things, clothing, cosmetics and textiles: 

The Examiner raised an objection to the Triangle Pattern in respect of some of the goods and services for which protection was sought, pursuant to Article 7(1)(b) EUTMR. Article 7(1)(b) states that a trade mark shall not be registered if it is devoid of distinctive character. The Examiner considered the Triangle Pattern to lack inherent distinctiveness as the average consumer would perceive it as nothing more than the decorative outward appearance of the goods, as opposed to an indication of origin. 

Despite Prada’s response that the triangle had become its “iconic signature”, the Examiner partially refused the registration, allowing it only in respect of elements of classes 9, 20, and 35. 

Recent decision 

Prada appealed this decision stating that (1) the upside-down isosceles triangle is already registered as a trade mark so a repetition of this mark should also be registrable, and (2) there is an established trade practice in the fashion sector to use patterns, and consumers generally attribute an “identifying function” to the pattern. Prada did not seek to rely on Article 7(3) i.e. that despite lacking distinctive character, the Triangle Pattern should be registered as it has acquired distinctiveness through use. 

The Board of Appeal rejected the appeal. 

The Board explained that the case law applicable to three-dimensional marks is also applicable to pattern marks, and although the criteria for assessing distinctiveness of such marks is no different to other categories of marks, it may be more difficult to prove distinctiveness of pattern marks as opposed to e.g. word or graphic marks. This is because the relevant public is more likely to perceive the pattern mark as a representation or attractive detail of the product, rather than an indication of its commercial origin. As a result, only marks that depart significantly from the norm, and therefore fulfil the function of indicating origin, will be considered distinctive. The Board stated that Triangle Pattern is “basic and commonplace” and does not depart from the norm, therefore the public would perceive it as a decorative design in relation to the goods applied for, and a banal design element in relation to the services. 

The Board noted in relation to the arguments that the Triangle Pattern is “iconic” and a trade practice in the fashion industry that “it is precisely in that context where signs might acquire distinctiveness on account of the use they made of the sign on the relevant sector”. However, as Prada did not rely on Article 7(3), these arguments could not succeed. 

Key takeaways 

It is difficult to know whether Prada would’ve succeeded in registering the Triangle Pattern had they relied on the acquired distinctiveness argument. It would be challenging to provide evidence that the relevant public (average consumers in the EU), would identify products bearing the Triangle Pattern as originating from Prada, particularly as other fashion houses have failed at this hurdle. In 2022, Louis Vuitton was unsuccessful in registering it’s Damier Azur pattern (you can read our article on this decision here). 

Either way, this decision highlights the added challenges of showing distinctiveness of three-dimensional and pattern marks.