VOGUE mark recognised as famous

The Serbian IP Office has recognised that the trademark VOGUE, which belongs to Les Publications Condé Nast SA (Paris, France), is famous in Serbia, and thus refused to register the trademark VOGUE for watches in the name of Cyprus company Pentaflon Ltd (Decision Z-2008-753/10, February 22 2011).
On March 31 2008 Pentaflon applied for the registration of VOGUE in Serbia for watches in Class 14 of the Nice Classification (Application No Z-753/08). In Serbia, trademarks are examined ex officio on relative grounds. On February 4 2009 the IP Office issued an official action, citing the trademarks VOGUE HOMMES (International Registration 597222), VOGUE (International Registration 158005), VOGUE (and design) (International Registration 321685) and VOGUE EUROPE (International Registration 227443), which belong to Condé Nast, as potential obstacles. These trademarks covered, among others, goods in Class 14:
Precious metals and their alloys, goods made thereof or coated therewith (except cutlery, forks and spoons), jewellery, gemstones, watches and other timepieces, gold and silver ware, other than cutlery, forks and spoons, fashion jewellery, art objects and carved ornaments.”
As a defence, Pentaflon challenged the validity of Condé Nast’s trademarks in Class 14 on the grounds of non-use. Condé Nast then filed a notice of observation against Pentaflon’s trademark application for VOGUE, suggesting that the IP Office refuse to register it. Condé Nast argued that the mark applied for was identical to its VOGUE mark, which has a reputation in Serbia and enjoys extended protection, even for goods that are not covered by the registration. Condé Nast submitted various pieces of evidence to demonstrate the reputation of the VOGUE mark, including:
  • its worldwide trademark portfolio for VOGUE;
  • information regarding the value of the VOGUE mark and its date of origin;
  • advertising and marketing campaigns for the VOGUE mark; and
  • copies of decisions of the relevant authorities in the United States, France and Costa Rica recognising VOGUE as a famous trademark.
As a result, the IP Office issued another official action, this time citing the famous trademark VOGUE as an obstacle. Pentaflon failed to respond.
The IP Office decided to refuse Pentaflon’s trademark application because:
  • Pentaflon’s mark imitated Condé Nast’s VOGUE mark; and
  • If Pentaflon were allowed to register VOGUE for watches, it would take unfair advantage of, and would dilute, the reputation of the famous VOGUE mark.
The IP Office pointed out that the goods covered by Pentaflon’s mark are related to those covered by Condé Nast’s trademarks (ie, fashion magazines), because:
  • fashion magazines advertise luxury goods, such as jewellery and watches; and
  • the relevant public often associates these goods with the world of fashion and glamour, for which the famous trademark VOGUE stands.  
Pentaflon has not appealed the decision and it has become final.
Gordana Pavlovic, Cabinet Pavlovic, Brussels and Belgrade

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