Judgment of the General Court (Second Chamber) of 5 June 2018 –

Prada v EUIPO — The Rich Prada International (THE RICH PRADA)

(Case T‑111/16)

(EU trade mark — Opposition proceedings — Application for EU word mark THE RICH PRADA — Earlier national and international word and figurative marks PRADA — Relative grounds for refusal — Article 8(5) of Regulation(EC) No 207/2009 (now Article 8(5) of Regulation (EU) 2017/1001) — Taking unfair advantage of the distinctive character or repute of the earlier mark — Detriment to the distinctive character or repute — Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001) — Likelihood of confusion)

1. EU trade mark—Definition and acquisition of the EU trade mark—Relative grounds for refusal—Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation—Protection of well-known earlier mark extended to dissimilar goods or services—Conditions—Reputation of the mark in the Member State or the EU—Meaning—Criteria for assessment (Council Regulation No 207/2009, Art. 8(5)) (see paras 26, 28)

2. EU trade mark—Definition and acquisition of the EU trade mark—Relative grounds for refusal—Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation—Protection of well-known earlier mark extended to dissimilar goods or services—Aim (Council Regulation No 207/2009, Art. 8(5)) (see para. 27)

3. EU trade mark—Definition and acquisition of the EU trade mark—Relative grounds for refusal—Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation—Protection of well-known earlier mark extended to dissimilar goods or services—Conditions—Link between the marks—Criteria for assessment (Council Regulation No 207/2009, Art. 8(5)) (see paras 29-34)

4. EU trade mark—Definition and acquisition of the EU trade mark—Relative grounds for refusal—Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation—Protection of well-known earlier mark extended to dissimilar goods or services—Word mark THE RICH PRADA—Word and figurative marks PRADA (Council Regulation No 207/2009, Art. 8(5)) (see paras 53, 55, 57)

5. EU trade mark—Definition and acquisition of the EU trade mark—Relative grounds for refusal—Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation—Protection of well-known earlier mark extended to dissimilar goods or services—Conditions—Detriment to the distinctive character of the earlier mark—Burden of proof, etc. (Council Regulation No 207/2009, Art. 8(5)) (see para. 56)

6. EU trade mark—Definition and acquisition of the EU trade mark—Relative grounds for refusal—Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services—Likelihood of confusion with the earlier mark—Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 62)

Re:

Action brought against the decision of the Second Board of Appeal of EUIPO of 13 January 2016 (Joined Cases R 3076/2014-2 and R 3186/2014-2), as rectified on 14 March 2017, relating to opposition proceedings between Prada and The Rich Prada International.

Operative part

The Court

1. Dismisses the action;