A View from Afar: PRADA vs. PRHA

A View from Afar: PRADA vs. PRHA

Justice Manmohan Singh of the Delhi High Court has remarked in a judgment, “The world is a global village.” This sentiment captures the essence of our interconnected era, where globalization and interconnected markets continually redefine our world. Today, the judgments handed down in courtrooms across the globe can have far-reaching consequences and the ripples of these legal decisions extend far beyond their local jurisdictions, influencing economies and industries worldwide.

Welcome to "A View from Afar," a series dedicated to examining international judgments and their far-reaching impacts. Through this series, we aim to bridge the gap between diverse legal systems and their global repercussions, offering you a panoramic view of the intricate interplay between law and commerce.

We will delve into landmark rulings from various corners of the world, unpacking the legal reasoning behind such decisions and scrutinizing their practical implications. Each article will provide a thorough analysis, shedding light on how these judgments affect not only the parties directly involved but also affect the regulatory frameworks, corporate strategies, and market dynamics on a global scale.

Whether it is a judgment delivered in any country across the world, we will share our views on its profound impact in other jurisdictions navigating through the labyrinth of international jurisprudence.

Join us in this further instalment of "A View from Afar" as we analyse a recent decision by the Taiwan Intellectual Property Office (TIPO) wherein it ruled in favor of PRADA S.A. in its opposition to the registration of the trademark "PRHA." This ruling, underscores the importance of protecting internationally renowned brands from potential brand dilution and reinforces Taiwan’s commitment to upholding stringent trademark laws to prevent consumer confusion in the marketplace. By analyzing the key legal principles, factual determinations, and the implications of this ruling in other jurisdictions, this article provides a comprehensive overview of the case and its significance in trademark jurisprudence.

PRADA S.A., a renowned luxury fashion house, is the registered proprietor of the trademarks "PRADA" bearing registration number 00596574 and "PRADA MILANO" bearing registration number 02274404 in Taiwan. These marks have been in use in Taiwan since 1993 and have acquired a high degree of brand recognition among consumers due to extensive marketing efforts and widespread retail presence. PRADA’s strong market position is further cemented by its presence in top-tier department stores.

In April 2023, an application was filed for the trademark "PRHA" (registration number 02354409), designating goods in Class 18, which included handbags, purses, wallets, backpacks, suitcases, and briefcases. The mark was officially registered on February 1, 2024. Consequently, PRADA S.A. filed an opposition to the registration on April 30, 2024, based on Articles 30.1.10, 30.1.11, and 30.1.12 of Taiwan’s Trademark Act. Under Taiwan's trademark law,?opposition proceedings are in the form of post-registration, meaning a trademark may be opposed after its examination, publication and registration, however not before.?This opposition period lasts for three months, and the grounds for opposition include lack of distinctiveness, likelihood of confusion with prior marks, and misleading the public.?

PRADA S.A.’s contention primarily relied on Article 30.1.10 of the Taiwan Trademark Act, which prohibits the registration of a trademark that is:

• Identical or similar to an earlier registered trademark or an earlier-filed trademark.
• Applied for goods or services identical with or similar to those for which the registered or earlier-filed trademark is designated.
• Likely to cause confusion among relevant consumers.

PRADA also cited Articles 30.1.11 and 30.1.12, which address unfair competition and the protection of well-known marks; however, TIPO found sufficient grounds for opposition under Article 30.1.10 alone.

Under the Taiwan trademark law, one of the primary considerations in trademark opposition cases is the degree of similarity between the disputed marks. TIPO conducted a thorough phonetic, visual, and conceptual comparison of "PRADA" and "PRHA." Its findings were as follows:

• Visual Similarity: The two trademarks shared the same first two letters ("PR") and the last letter ("A"), creating a strong resemblance. The only distinguishing factor was the substitution of the letter “D” in PRADA with an “H” in PRHA, which was deemed insufficient to create a distinct commercial impression.
• Phonetic Similarity: The pronunciation of "PRHA" was found to be similar to that of "PRADA," particularly when spoken quickly or in non-native accents which increased the likelihood of confusion in oral communication.
• Conceptual Similarity: It was observed by TIPO that while "PRADA" was an established brand name with global recognition, "PRHA" lacked independent meaning, making it more likely to be perceived as an imitation of and/or being associated with PRADA.

Another crucial element in this opposition was the overlap in the designated goods covered under both trademarks. PRADA’s trademarks protected a wide range of fashion accessories, including handbags, briefcases, backpacks, and suitcases, which were identical to the goods covered by the contested trademark “PRHA.” TIPO noted that when trademarks share both phonetic similarity and identical product categories, the likelihood of confusion is significantly heightened. The presence of both brands in the same commercial sector would likely mislead consumers into believing that the two marks were associated with the same entity or that "PRHA" was a sub-brand or extension of PRADA.

TIPO also placed significant weight on PRADA’s long-standing presence in Taiwan. The brand’s history of continuous marketing, combined with its strong retail presence in major shopping destinations, reinforced its distinctiveness. This factor was crucial in determining that consumers were more likely to associate "PRHA" with PRADA, thereby strengthening PRADA’s claim of potential confusion.

Based on the aforementioned factors, TIPO concluded that allowing "PRHA" to remain registered would likely mislead consumers into believing that it was affiliated with PRADA and ordered the refusal of the mark "PRHA."

Author’s Note

The Indian trademark law permits initiating opposition proceedings against a trademark application before it is registered, offering a proactive safeguard against potentially infringing marks. Had this matter arisen in India, Prada would have swiftly opposed the "PRHA" mark at the pre-registration stage, preventing its approval altogether. If this matter had been adjudicated in India, the outcome would likely have been similar to the ruling of the Taiwan Intellectual Property Office (TIPO), with the Indian Trade Marks Registry refusing the registration of “PRHA” under relevant provisions of the Trade Marks Act, 1999.

Section 11(1) of the Indian Trade Marks Act, 1999 prohibits the registration of a trademark that is identical or deceptively similar to an earlier registered mark, particularly when applied in respect of similar or identical goods or services.

Moreover, given PRADA’s active presence in Indian luxury retail and the fashion industry, the adoption of the mark "PRHA" would be held to be in bad faith with the intent to capitalize on PRADA's brand reputation as attempting to free-ride on PRADA’s goodwill, leading to refusal of the mark under absolute grounds for refusal.

PRADA is a globally recognized luxury brand & in light of its prior trademark registrations, and strong consumer association, the opulent brand qualifies to be recognized as a well-known trademark under the Indian trademark law. Inclusion of PRADA’s mark in the list of well-known trademarks maintained by the Trade Marks Registry would have accorded it broader protection & prevent any third party from registering or using a similar mark irrespective of whether the mark applied for is used for similar or dissimilar goods and/or services.

This case highlights the importance of robust trademark enforcement strategies and the need for continuous monitoring to safeguard intellectual property assets in competitive markets like Taiwan and India.