General Court issues decisions in VOGUE v VOGUE cases

On February 27 2014 the General Court issued decisions in Cases T-37/12, T-229/12 and T-509/12 between Advance Magazine Publishers Inc and the Office for Harmonisation in the Internal Market (OHIM), the other parties to the proceedings before the Board of Appeal of OHIM being Mr Eduardo Lopez Cabré in Cases T-37/12 and T-229/12, and Nanso Group Oy in Case T-509/12.

The cases show that in the global assessment of the likelihood of confusion, account must be taken of the average consumer of the category of products concerned, who is reasonably well informed and reasonably observant and circumspect. The average consumer’s level of attention is likely to vary according to the category of goods or services in question.

The disputes in Cases T-37/12 and T-509/12 arose from the applications, filed on October 31 2003 by Advance Magazine Publishers, for registration of the word mark TEEN VOGUE. In Case T-229/12, the dispute arose from the application, filed on September 2 2004 by Advance Magazine Publishers, for registration of the figurative mark VOGUE. The word mark TEEN VOGUE covered goods in Classes 18 ("goods of leather and/or imitation leather; clothing, belts, collar, luggage, bags, umbrellas, parasol etc") and 25 ("footwear (except orthopaedic)") of the Nice Classification, while the figurative mark VOGUE covered goods in Class 18.

On May 14 2007 Eduardo Lopez Cabré filed a notice of opposition against the figurative mark VOGUE pursuant to Article 41 of the Community Trademark Regulation (207/2009), based on the following prior signs:

• the Community word mark VOGUE, registered for “umbrellas” in Class 18;
• the Spanish word mark VOGUE, registered for “all kinds of umbrellas, sunshades, handles, ribs and canes for these” in Class 18; and
• the Spanish figurative mark VOGUE, registered for “all kinds of umbrellas, sunshades, handles, ribs and canes for these” in Class 18.

In addition, on March 23 2007 and May 19 2008, respectively, Nanso Group Oy and Eduardo Lopez Cabré filed two notices of opposition against the word mark TEEN VOGUE under Article 41 of the regulation. Nanso based its opposition on:

• the Swedish word mark VOGUE, registered for “clothing, including boots, shoes and slippers” in Class 25;
• the Swedish figurative mark VOGUE, registered for goods in Class 25;
• the application for the Finnish word mark VOGUE, designating goods in Class 25; and
• the registered auxiliary trade name VO Gue.

Eduardo Lopez Cabré based his opposition on the VOGUE marks referred to above.

In the opposition filed against the figurative mark VOGUE, after having assessed the documents provided by Eduardo Lopez Cabré in order to prove that his marks had been put to genuine use, on March 18 2011 the Opposition Division refused registration of the mark applied for in relation to “umbrellas, parasols, accessories” in Class 18, holding that there was, in relation to those goods, a likelihood of confusion with the earlier Community word mark VOGUE. It rejected the opposition for the remaining goods.

On appeal, the Fourth Board of Appeal of OHIM observed that the Community word mark VOGUE belonging to Eduardo Lopez Cabré had been registered for less than five years at the date of publication of the mark applied for, and so it was not subject to proof of genuine use. Moreover, since a likelihood of confusion could not be excluded due to the identity or similarity of the goods at issue, the Opposition Division had been correct to uphold the opposition as regards umbrellas, parasols and accessories.

With respect to the oppositions against the word mark TEEN VOGUE, the Opposition Division, on July 15 2010 and November 16 2010, ruled that there was a likelihood of confusion with the earlier Spanish word mark VOGUE with regard to “umbrellas, parasols, parts and fittings for all the aforesaid goods” in Class 18, but rejected the opposition for the remaining goods. As regards the goods in Class 25, a likelihood of confusion could not be excluded due to the identity or similarity of the goods covered by the marks applied for.

The applicant appealed, but the Fourth Board of Appeal of OHIM confirmed the decisions of the Opposition Division.

The applicant appealed before the General Court against all three decisions, alleging:

1. infringement of Article 8(1)(b) of Regulation 207/2009 (the applicant argued that there was no likelihood confusion between the marks and, in any case, no likelihood confusion with regard to accessories other than those relating to umbrellas and parasols) (Cases T-509/12 and T-229/12);
2. infringement of Article 42(2) and (3) of Regulation 207/2009 and Rule 22(3) of the Community Trademark Implementation Regulation (2868/95) (the applicant disputed the merits of the assessment made by the Board of Appeal regarding the proof adduced by Eduardo Lopez Cabré to show the genuine use of the Spanish word mark VOGUE) (Case T-37/12).

The court dismissed the first plea, reasoning that, according to case law, the risk that the public might believe that the goods or services in question come from the same enterprise or from economically linked enterprises constituted a likelihood of confusion. Moreover, the likelihood of confusion must be evaluated globally, according to the relevant public’s perception of the trademarks and the goods or services at issue, and taking into account all factors relevant to the circumstance of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered. In the present cases, the relevant public was the average consumer of the goods at issue in the European Union.

The General Court agreed with OHIM's reasoning with regard to the likelihood of confusion between umbrellas and parasols, since they function with the same type of mechanism and both aim to protect human beings from weather conditions.

With regard to the comparison between accessories and umbrellas, according to Rule 2(2) of Regulation 2868/95, the list of goods and services must be worded in such a way as to indicate clearly the nature of the goods and services. Thanks to this precise wording, OHIM and other economic operators can grant the necessary extent of protection to the trademarks. In this case, since the term 'accessories' had a very vague meaning and was not sufficiently limited, the Board of Appeal had erred in law and reasoned in the abstract when considering that umbrellas and accessories were similar.

The court then turned to the second plea. When assessing the genuine use made of a trademark, account must be taken of all the facts and circumstances relevant to establish whether the commercial exploitation of the mark is real, and particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the products or services protected by the mark.

The applicant argued that the Board of Appeal had failed to consider the fact that the label produced by Eduardo López Cabré as proof of genuine use did not indicate the place, the time, the nature or the extent of use of the word mark VOGUE, as required by Rule 22 of Regulation 2868/95. However, the court noted that this rule does not state that every single piece of evidence must inevitably indicate all four elements to which proof of genuine use must relate. The evidence can, and should, be assessed in an overall basis.

Margherita Barié and Pietro Pouché, Carnelutti Studio Legale Associato, Milan