The Applicant, Rada Perfumery, applied to register the sign RADA PERFUMES (below) in the EU in classes 3 and 35, covering cosmetics, perfumes, essential oils, and advertising, marketing and retail services relating to perfumery, cosmetics and beauty products – full spec below.
Prada opposed the application on the basis of its below registrations for PRADA and PRADA MILANO, relying on likelihood of confusion (8(1)(b) and reputation (8(5)).
The OD upheld the opposition for all the class 3 goods of Rada Perfumery’s application and for the highlighted terms in class 35, on the likelihood of confusion ground. The opposition was rejected for the remaining terms in class 35.
Rada appealed against the OD’s decision, but the BOA dismissed the appeal on the ground that there was a likelihood of confusion.
Rada then appealed to the GC, contending that the GC should (a) annul the BOA’s decision, (b) reject the application and (c) grant registration of the applied-for mark.
An interesting practice point at (c) is that the GC held it was outside its jurisdiction to grant registration of the mark – may be something to consider when filing appeals, e.g., when asking which remedies are being sought.
The BOA held:
The application to the GC was dismissed in its entirety.
This case raised the question that parties should consider when the use and register position of a trade mark differ significantly. The parties had co-existed in Romania for some time, with RADA even securing Romanian registrations without challenge from Prada. They operate a retail website selling perfumes under the RADA name. Their EUTM application planted them firmly in Prada’s sights.
The additional elements in the mark as filed and one of the earlier rights held by Prada came into play. They did not alter the end decision here but do demonstrate how important it is to carefully consider the mark you file.
Parties need to remember there is no right to register a name, you must give the same considerations to clearance of a name, as any other mark.
The case served as another reminder that new evidence cannot be introduced on appeal and the importance of evidencing key points, namely the co-existence of the marks and the apparent common nature of the later mark as a name.