Indian courts rule against Vogue in trademark dispute
In a recent ruling, the Bombay High Court dismissed a trademark infringement case filed by the publisher of fashion magazine Vogue against a retailer using the phrase "JUST IN VOGUE."
At the heart of the dispute was the retail store chain's use of the phrase, which Vogue claimed was confusingly similar and misled consumers into thinking the store had a connection to the magazine. However, the Court decided that consumers are unlikely to be misled into thinking the defendant's goods have anything to do with Vogue.
Trademark law states that you cannot copy someone else's trademark if your goods or services are similar to those offered by the trademark owner. Trademarks, which can include words, names, symbols, and logos, are used to distinguish goods or services from others in commerce. If you do not actively use your trademark for the goods or services you registered it for, you may lose your rights to it.
The Court's decision does not prevent businesses from piggybacking on Vogue's goodwill, as Vogue claimed. The Court based this decision on the fact that Vogue's readers are primarily affluent, well-traveled women, while the defendant's customers are primarily men from the middle strata of society.
This case illustrates the "use it or lose it" principle of trademark law. Magazine publishers are not typically known to retail fashion goods, further supporting the Court's decision.
The Court's decision may not accurately reflect potential consumer confusion. While the Court considered the likelihood of consumer confusion, it's possible that some consumers might still confuse the retail store with Vogue Magazine.
The case also highlights the complexities of trademark law, particularly when it comes to different classes of goods or services. Courts commonly consider factors such as the similarity of the marks, the relatedness of the goods or services, the channels of trade and target consumers, evidence of actual confusion or intent to deceive, and any agreements or prior licenses regarding the trademark use.
For example, in Christian Louboutin's trademark litigations, courts examined whether the trademark, like Louboutin’s red sole, was valid and infringed upon within the same class (footwear) and different product categories like fragrance. In other trademark disputes such as Columbia Sportswear vs. Columbia University, breach of agreements related to trademark usage shows that courts also consider prior agreements and contracts restricting the use of a mark across different product or service lines.
In sum, trademark infringement decisions involving different classes of goods or services hinge on whether the trademark’s use in one class is likely to cause consumer confusion with the trademark’s use in another class. This case, like many others, underscores the importance of understanding trademark law and the potential implications for businesses operating across various product classes.
[1] European Court of Justice ruling on Christian Louboutin's red sole trademark (Case C-163/16) [2] Columbia Sportswear vs. Columbia University trademark dispute (Case No. 1:11-cv-00102)
- In light of this case and others like it, businesses operating across various product classes should carefully consider the implications of trademark law when choosing names or phrases that might be confusingly similar to existing trademarks, especially in different classes.
- Despite the Bombay High Court's decision, there could potentially be confusion among consumers regarding the connection between the retail store and Vogue Magazine, as the case highlights the complexities of trademark law involving different classes of goods or services.
