MIU MIU – Luxury Handbag or Fast Food?

The brand MIU MIU is known worldwide for luxury leather goods. But is this renown sufficient to successfully oppose the registration of an almost identical mark for fast food? The Federal Patent Court (BPatG) had to decide this question.

A restaurant chain for Asian fast food applied some time ago for the German word mark MIU MIU CHINA & THAI FOOD and others for advertising, franchising concepts and operation of fast-food restaurants. The mark was ultimately registered with the DPMA.

Against the registration, the Italian luxury label MIU MIU filed opposition based on severalword marks and word/figurative marks. The DPMA denied the likelihood of confusion with the earlier marks and rejected the oppositions altogether.

Against the decision of the DPMA, the mark owner belonging to the Prada Group filed an appeal.

Decision of the Federal Patent Court (BPatG): No likelihood of confusion between the MIU MIU marks

The Federal Patent Court (BPatG) dismissed the appeal from Prada bydecision of 11.07.2022 – 25 W (pat) 5/20.

According to the principles applicable to the assessment, there was no likelihood of confusion between the marks compared.

The distinctive character of the marks MIU MIU was to be assessed as average. There were no indications of enhanced distinctive character, which would require increased public recognition through intensive use. The elevated level of renown could not be established with the requisite certainty.

The expenditure for advertisements in leading fashion magazines such as ELLE, Vogue and Glamour, with an advertising price of EUR 35,000.00 per page, was not particularly high. They are targeted at women aged between 20 and 49 with a net monthly income of EUR 2,500.00 and above, and thus at a restricted, fashion-interested and financially well-positioned public. On this basis, widespread distribution and associated renown could not be assumed either with regard to the relevant trade as a whole or with regard to any relevant part of it.

The court, however, proceeded on the basis of a high degree of mark similarity. The addition "CHINA & THAI FOOD" was a purely descriptive reference to the services, so that the distinctly characteristic element "MIU MIU" was identical.

The court nevertheless ultimately denied the likelihood of confusion because leather goods and clothing items of the luxury label are not similar to the services of a fast-food restaurant.

The court also denied thereputation protection of the markMIU MIU. Even if renown were assumed, the court stated that there was a lack of the requisite mental association between the opposing marks and the contested mark.

Conclusion

Despite the identity of the marks, the Federal Patent Court (BPatG) found no likelihood of confusion between the two marks. Although the court's assessment of the distinctive character and renown of the luxury label MIU MIU can certainly be viewed critically, the court's conclusion is nevertheless comprehensible: when seeing an Asian snack bar, one does not necessarily think of Italian luxury leather goods. After all, fast food cannot be confused with a luxury handbag.