Fashion brand PRADA successful in trademark opposition against trademark “PRHA”

On February 27, 2025, Taiwan’s IP Office (“TIPO”) ruled in the favor of PRADA S.A., finding the fashion brand’s iconic logos “PRADA” and “PRADA MILANO” (no .00596574 and no. 02274404, see blow, hereafter together as “PRADA”) may be confused due to registration of trademark “PRHA”.

The contested trademark, “PRHA” (no. 02354409, see below), was filed on April 10, 2023, and registered on February 1, 2024, designated for use in goods in class 18, including purses, bags, backpacks, suitcases, briefcases, wallets, handbags, etc. PRADA S.A. filed opposition on April 30, 2024, citing violations of Articles 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

TIPO sided with PRADA S.A. based on Article 30.1.10 of Trademark Act:

1.      Article 30.1.10 of Trademark Act provides that a mark shall not be registered if such a mark is identical with or similar to another person’s registered trademark or earlier filed trademark and to be applied for goods or services identical with or similar to those for which the registered trademark is protected or the earlier filed trademark is designated, and hence there exists a likelihood of confusion on relevant consumers.

2.      On similarity, TIPO found PRADA S.A.’s cited trademarks would form a strong impression of “PRADA”, which share the same initial letters “PR” and the last letter “A” with the contested “PRHA”. The letter “H” in the middle of the contested trademark is minor difference, and thus insufficient to distinguish the contested trademark from “PRADA”.

3.      On the designated goods, TIPO noted that the cited trademarks “PRADA” and “PRADA MILANO” were also applied for use in various kinds of bag products like handbags, briefcases, backpacks, suitcases, etc. TIPO opined that the products designated by trademark “PRHA” resemble those designated by PRADA S.A.’s trademarks.  

4.      Furthermore, TIPO noted that based on the records, PRADA S.A.’s cited trademarks have been used in Taiwan for very long time. For example, the cited trademarks were registered in Taiwan back in 1993. Since then, the brand has been continuously promoted on a variety of fashion magazines like ELLE, GQ, and VOGUE TAIWAN. Over the years, the brand has also established numerous physical stores in prestigious department stores, including Breez Plaza, Shin Kong Mitsukoshi, Hanshin, and MEGA City. In view of these records, TIPO concluded that PRADA S.A.’s trademarks have established strong recognizability, and local consumers would be more familiar with PRADA S.A.’s trademarks.

5.      Based on the above, given the similarity between “PRADA” and “PRHA”, the overlap of designated products, the facts that “PRADA” and “PRADA MILANO” are highly distinctive, and that local consumers are more familiar with PRADA S.A.’s cited trademarks, TIPO determined that the registration of “PRHA” may cause confusion with PRADA S.A.’s iconic brand. Hence, the contested trademark was canceled accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4WVplVk8ycDVpVjczS2E5eWlFRUU5dz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true