Vogue vs Vogue

31st January, 2023 - 6:06 am Categories: Legal Issues Trademark 0 Comments

Introduction

The Karnataka High Court awarded Vogue Fashion Institute relief from the claim of trademark infringement initiated by the well-known American fashion magazine, Vogue, in the matter of Vogue Institute of Management & Ors. Vs. Advance Magazine Publishers Inc.

The trademark “Vogue,” used by the magazine Vogue since 1892, was registered in India under Class 16. It filed a lawsuit for infringement and passing off against a fashion training facility called “Vogue Institute of Fashion Technology” that was functioning in India in 1998. As a result, the District Court imposed a permanent injunction prohibiting the Institute from using the trademark “VOGUE” as a part of their name and trading style. The order was overturned on appeal after the Karnataka High Court expressed an opinion that was different from the trial court’s. The High Court looked at whether the mark had a chance of tricking or confusing consumers into purchasing the defendant’s products or services under the impression that they were associated with the plaintiff’s goods and services. The Court noted that as the defendants’ business of operating a fashion institute was not covered by the plaintiff’s trademark, passing off was not taking place.

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Since 1892, the plaintiff, an American corporation, has published a fashion magazine under the name and branding of “VOGUE.” It is a well-known magazine that is distributed throughout the world, including India. The complainant is the registered owner of the trademark “VOGUE” in Class-16 for magazine publishing in India under Registration Number 315672B, and the mark is still in use today. The plaintiff learned that the defendants were operating a training facility under the name and branding of “VOGUE Institute of Fashion Technology” in the month of March 1998 and using slogans like “VOGUE” the wonderful career alternative. By doing this, the defendants are misrepresenting their services as those of the plaintiff and violating the plaintiff’s registered trademark.

The defendants opposed the lawsuit and submitted a written response. They argued that because the name “VOGUE” is not a part of the plaintiff’s name or trading style, the plaintiff is not entitled to the relief that is being sought. Therefore, it cannot be said that it is a trademark for the plaintiff’s company. Additionally, Class-16 does not apply to periodicals, therefore the plaintiff cannot assert an absolute right to everything. It was claimed that the plaintiff registered the trademark through fraud and deceit.

There is no similarity between the defendants’ and plaintiff’s businesses, the defendants said; they are not selling the goods like a magazine. The defendants additionally argued that there was no relationship between their educational institute, which they administer, and the plaintiff’s business because it is completely unrelated.

The question presented before the hon’ble court is whether the use of the word ‘VOGUE’ by defendants/appellants amounts to passing off their business as that of the plaintiff. The gist of a passing off action is that a person has no right to pass off his goods or services as goods or services of someone else. It is an action for violation of common law rights and is enforceable in respect of all trademarks registered or unregistered. False and misleading representation resulting into deception or confusion is the key to the answer. The only aspect to be considered is whether the mark is likely to deceive or confuse the public who may buy defendants’ goods as if they were the plaintiff’s goods.

It was stated that one needs to analyse the nature of goods/services in respect of which the word ‘VOGUE’ is used by the plaintiff and the defendants and the class of purchasers who are likely to buy goods/services offered by the plaintiff and the defendants and based on their education, intelligence and the degree of care they are likely to exercise in availing the magazine of the plaintiff or the services of the defendants and are they likely to get confused.

The hon’ble court stated that the magazine which is published by the plaintiff is a fashion magazine which is not subscribed or read by large section of the general public. Further, it is used by that limited section of the Society who are generally aware about fashion. The kind of purchasers who subscribe to the magazine of the plaintiff are likely to know that the plaintiff’s magazine is involved only in the business of publishing magazines and not running any institute. Similarly, the persons who join the defendants’ institute are those who have knowledge about the fashion world and taking into consideration the degree of care that an average student is likely to exercise, it is highly unlikely that they would confuse the institute of the defendants as one belonging to the plaintiff. Further, no evidence is let in by the plaintiff to show otherwise.

Conclusion

The court said one needs to analyse the nature of goods/services in respect of which the word ‘VOGUE’ is used by the plaintiff and the defendants and the class of purchasers who are likely to buy goods/services offered by the plaintiff and the defendants and based on their education, intelligence and the degree of care they are likely to exercise in availing the magazine of the plaintiff or the services of the defendants and are they likely to get confused. The hon’ble bench of the court allowed the appeal in this case.

Author: Tanya Saraswat, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

References

• LI Network, Karnataka HC on Vogue Institute dismiss injunction, state no infringement of trademark ‘vogue’ Law Insider India (2022), https://www.lawinsider.in/news/karnataka-hc-on-vogue-institute-dismiss-injunction-state-no-infringement-of-trademark (last visited Jan 22, 2023).
• NewIndianXpress, No infringement of trademark, Karnataka HC on Vogue Institute The New Indian Express (2022), https://www.newindianexpress.com/cities/bengaluru/2022/nov/23/no-infringement-of-trademark-karnataka-hc-on-vogue-institute-2521106.html (last visited Jan 22, 2023).