Strict genuine use requirements applied in 15-year dispute

European Union
In Advance Magazine Publishers Inc v Office for Harmonisation in the Internal Market (OHIM) (Case T-382/08, January 18 2011), 15 years after Advance Magazine Publishers Inc, the publisher of Vogue magazine, first filed an application for the registration of the word mark VOGUE as a Community trademark, the General Court has issued a decision in its favour.

Advance's application for the registration of the mark VOGUE was rejected twice by OHIM: Advance filed an application in April 1996 and, three years later, in December 1999. The application covered goods and services in Classes 9, 14, 16, 25 and 41 of the Nice Classification. However, J Capela & Irmaos Lda, the owner of a Portuguese shoe shop called 'Sapataria Vogue', filed a notice of opposition based, among other things, on the registered Portuguese trademark VOGUE PORTUGAL.

In January 2003 the Opposition Division of OHIM upheld the opposition and rejected the application. According to OHIM, the marks were identical and the goods were similar since they were intended for wear both as protection and as articles of fashion. Therefore, there was a likelihood of confusion on the part of the relevant public in Portugal.

Advance pointed out in its notice of appeal that it was the proprietor of an international registration for the word mark VOGUE, which had effect in Portugal. This registration dated back to 1951 and covered, among other things, "ready-made clothing" in Class 25. Advance argued that this mark was thus prior to the opponent's alleged earlier mark.

However, in October 2004 the Second Board of Appeal of OHIM upheld the decision of the Opposition Division. It ruled that the argument relating to the international registration was inadmissible since it had not been raised, or even referred to, before the Opposition Division.

Advance appealed to the General Court, alleging that OHIM had failed to consider the entirety of the matter. The court agreed with Advance and the case was referred back to the Second Board of Appeal. On June 30 2008 the Second Board of Appeal issued essentially the same decision, and Advance's trademark application was again rejected.

This second decision was successfully appealed by Advance. The court found that the evidence of use provided by the shoe shop owner was insufficient. According to the court, photographs of front stores bearing the name Vogue, declarations by other manufacturers and similar evidence did not establish proof of extensive use of the trademark by the opponent.

The court stated as follows:

"It is clear from all the foregoing that the evidence the opponent adduced before OHIM, even when assessed overall, does not establish to the requisite legal standard the genuine use of the earlier trademark in Portugal during the relevant period. It follows that the Board of Appeal erred in finding that evidence of genuine use of the earlier trademark had been adduced by the opponent in the present case".

The court thus annulled the decision of the Second Board of Appeal and ordered OHIM to bear its own costs, as well as those incurred by Advance, thus ending this long-running dispute over the ownership of the trademark VOGUE in Portugal.

Maria Pereira, Allen & Overy LLP, Amsterdam 

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