The Bombay High Court recently dismissed trademark infringement claim based on well-known mark claim argument advanced by publisher of fashion magazine Vogue. Advance Magazine Publishers, Inc (AMP) brought the case against, Just Lifestyle Pvt. Ltd (JLP) before the Bombay High Court alleging trademark infringement and passing off and seeking temporary injunction to restrain JLP from using the word 'VOGUE' as part of their trade mark "JUST IN VOGUE" or any other deceptively similar mark or trade name in relation to retail stores and sales services.

AMP in the suit states:

1. They are the registered proprietor and user of the trademark "VOGUE" in respect of magazines published and sold in several countries around the world including India. They are using the mark in relation to its fashion and lifestyle magazine of the same name since the year 1892. The Indian edition of the magazine "VOGUE" was launched in 2007.


2. The trademark "VOGUE" is registered in India since the year 1976 in class 16 in relation to magazines and class 41 in respect of on-line and electronic publications in the year 2004. They also hold registration for the marks "VOGUE GIRL" in classes 9 and 16 and "TEEN VOGUE" in class 41.


3. Quotes of Indian celebrities, publications in reputed international journals, decided cases of various courts of the United States of America as well as India have been filed to support the contention that the mark "VOGUE" is a well-known mark entitled not only to protection in the classes in which it is registered but also other classes.


4. In January 2009, AMP noticed JLP's application for registration of the trade mark "JUST IN VOGUE" in class 35 in respect of retail stores and sales services, etc, and opposed the same.


5. Further inquiries revealed JLP's use of the trade mark "JUST IN VOGUE" in relation to retail stores and sales services which amounts to infringement of AMP's well-known trademark "VOGUE".


6. Adoption of the impugned mark is deliberate, willful and mala fide with intent to capitalize on the goodwill and reputation and give an impression that JLP's services are associated to AMP. JLP is not only infringing AMP's trademark but also passing off its goods and services as those of AMP.

JLP contends:

1. Their stores which are run under the name 'JUST IN VOGUE' are known largely for the collection and range of watches and writing instruments belonging to reputed brands.


2. The goods of AMP covered by the registered trade mark "VOGUE" are dissimilar to the goods sold or services offered by JLP.

Besides these safeguards, the patent rights by their nature are monopolistic rights. They do offer commercial advantage to companies and opportunity to exploit the innovation at the price they deem appropriate and as a result an enterprise would like to extend the life of Patent or what is termed as ever-greening of a patent. In that sense there is a tension between access of Patented product at a reasonable price and protection of IP. However, mere existence of market power is not prohibited under Section 4 of the Competition Act, only if it amounts to an abuse of dominant position. Further Section 3 (5) of the Competition Act, dealing with anti-competitive agreements, has made an exception for IPRs. It preserves the rights of the IPR holder to prevent infringement and protect these rights, as long as the restrictions imposed by the agreement are reasonable, ensuring that competition policy does not interfere with the reasonable use of IPRs.

Some of these issues have come up in recent Patent litigations concerning abuse of dominant position

Decision

The court after considering the pleadings, documents, arguments and case laws relied on by the parties made the following observations:

1. The goods/services of the rival parties are distinct and separate and their respective uses are also different. There are no common distributors or dealers dealing in the goods/services. AMP's magazines are distributed by Living Media Ltd, on the other hand JLP retails third party goods from its own stores located at various malls and other commercial establishments and thus, there is no commonality in the trade channels of the two. The goods or services are not in any way competitive and cannot possibly be suggested that the magazine "VOGUE" competes with either the branded goods retailed by JLP or their retail services.


2. The contention that public will assume AMP's endorsement of the products sold by JLP is far-fetched considering that magazine publishers are not ordinarily known to be retailing fashion goods and hardly is anyone likely to be misled into believing that the magazine and the fashion goods come from the same source.


3. The court has noted that circulation of the magazine "VOGUE" in India between the year 2000 and 2007 and the advertisements are hardly significant. The laudatory articles relied on by AMP to claim that the mark "VOGUE" is well-known is mostly contained in magazines/periodicals published in countries other than India or for that matter the said magazines have any circulation in India.


4. The cut-off date for determining whether by reason of reputation of AMP's mark JLP ought to be injuncted is the date on which the latter started using its mark. JLP started using the mark "JUST IN VOUGE" during the year 2004 and there is hardly any material adduced by AMP to show that as of the year 2004 they enjoyed such reputation in India with regard to the "VOGUE" mark. Moreover, there is no pleading or proof in relation to cross-border reputation by AMP other than the oral arguments.


5. With regard to adoption, the word 'Vogue' is an ordinary English word and is descriptive which means fashion or prevalent way or popular usage and is often preceded by "in". JLP is a retailer of fashion goods and is entitled to describe their stores as an outlet which deals in fashionable or trendy goods which are "in vogue". Thus, their adoption cannot be said to be dishonest.


6. With regard to deceptive similarities the court has held that AMP's registered trade mark is the word "VOGUE" but JLP is not using the word simplicitor but in conjunction with two other words, namely, "JUST" and "IN VOGUE". Moreover, JLP's mark is a device mark rendered in a distinctive style with the word "JUST" which is part of their corporate name. All this indicates that there is no per se visual, phonetic and structural similarity between the rival marks, when they are compared as a whole.

In view of the above the court dismissed the injunction application filed by AMP.

Our comment

It does appear that the result, in this case, may have been different if AMP had documented its use and reputation of the mark VOGUE globally prior to 2004 (the year when JLP started using the mark) to support its claim for well-known mark and passing off.