RADA vs. PRADA: is it always lawful to use the founder’s name as a trademark?

What are patronymic trademarks?

Before examining the General Court’s judgment, it is worth briefly considering the legal protection afforded to so-called patronymic trademarks.

A patronymic trademark is a trademark consisting of a person’s first name and/or surname. Its legal framework is addressed by Article 14 of Regulation (EU) 2017/1001 on the European Union trademark. Under this provision, the rights conferred by a trademark do not entitle its owner to prevent a third party from using their own name in the course of trade, provided that the third party is a natural person. However, such use is permitted only where it complies with honest practices in industrial or commercial matters. For further discussion, see also: How distinctive is a patronymic trademark? The Hugo Boss case.

The provision therefore establishes that individuals may use their own names in the course of business, provided that such use complies with the principles of fair commercial practice. Nevertheless, the General Court’s interpretation has highlighted important limitations on the use of this type of trademark.

The EU General Court's decision (Case T-439/22)

The dispute between Rada Perfumery and Prada ultimately reached the General Court of the European Union, which was called upon to determine the fate of the “RADA PERFUMES” trademark. Despite the legal arguments put forward by Rada in support of its position, the General Court upheld the previous decisions.

Regarding the similarity of the goods and services, the Court reaffirmed a fundamental principle of European trademark law: the assessment of a trademark’s registrability must be based on the descriptions of the goods and services contained in the trademark applications. This approach, designed to ensure an objective assessment, is independent of the marketing strategies adopted by the companies or their intentions regarding the actual use of the trademark.

Turning to the comparison of the signs, the General Court focused on the sequence of letters “R-A-D-A”, which appears both in the “RADA PERFUMES” trademark and in Prada’s trademarks. The Court considered this similarity to be significant and not something that could simply be disregarded. Although certain visual and phonetic differences existed between the signs, they were considered insufficient to eliminate the likelihood of confusion among average consumers, who might mistakenly believe that there was some form of commercial association or affiliation between the two brands.

The General Court therefore emphasised that, even where RADA corresponds to the founder’s surname, trademark law imposes clear rules and limitations. The judgment highlights the need to balance an individual’s freedom to use their own name against the importance of preventing consumer confusion and ensuring that consumers can clearly distinguish the commercial origin of goods and services offered on the market.

The Court also clarified that the existence of earlier registered and well-known trademarks, such as those owned by Prada, requires particular caution when assessing new trademark applications, especially where there is a significant risk of overlap or confusion between the signs. The decision to uphold the partial refusal of the “RADA PERFUMES” trademark was therefore not based on an outright denial of the right to use one’s own name. Instead, it reflected a careful assessment of the potential consequences for the trademark system and consumers’ perception of the signs involved.

Practical implications for entrepreneurs

The General Court’s decision in the dispute between Rada and Prada offers important lessons for entrepreneurs and professionals working in intellectual property law. The judgment not only brings to a close a dispute between two significantly different businesses, but also establishes an important precedent regarding the treatment of patronymic trademarks within the EU trademark registration system.

For entrepreneurs, the case highlights the importance of exercising caution when deciding to use their own name, or that of a company’s founder, as a trademark. Although EU trademark law recognises the possibility of using one’s own name in commercial activities, the judgment makes it clear that this right is not absolute and may be restricted by the existence of earlier trademarks that are potentially similar or likely to cause confusion.

The case therefore demonstrates the importance of conducting thorough trademark clearance searches before applying to register a new trademark, particularly where the proposed sign contains personal names or surnames resembling those of established brands. Such searches, preferably carried out with the assistance of legal professionals specialising in trademark law, can help businesses avoid future disputes, saving both time and financial resources that would otherwise be invested in promoting and positioning the brand.

Furthermore, the Rada vs. Prada case reminds entrepreneurs that, in the event of a trademark dispute, marketing strategies and the intentions behind the use of a trademark may not play a decisive role in the Court’s assessment. What matters is the objective description of the goods and services provided at the time of registration and whether the trademarks, assessed in relation to those goods and services, enable consumers to distinguish their commercial origin without confusion.