Trade Mark in Vogue
| DOI | 10.1093/jiplp/jpr035 |
| Date | 31 March 2011 |
| Pages | 364-365 |
| Year | 2011 |
| Published By | Oxford University Press |
decisions and their detailed reasoning provide further
clarification as to when a shape trade mark will be regi-
strable for chocolate and confectionery products and are
consistent with the General Court’s own and the ECJ’s
precedents concerning animal shape marks, in particular
the sea shell shaped chocolate (Piccoli v OHIM, Case T-8/
08) and the ECJ’s famous earlier Storck decision (Storck v
OHIM, Case C-25/05 P).
Bearing in mind that it is acting as a badge of origin is
the essential function of any (shape) mark and bearing in
mind the general interest underlying Article 7(1)(b) to
prevent a risk of a monopolisation of certain shapes (for
chocolates and sweets), as pointed out by the Court in T-
337/08, paragraph 46, the General Court’s decisions
appear to be the right ones.
Birgit Clark
Berwin Leighton Paisner
Email: birgit.clark@blplaw.com
doi:10.1093/jiplp/jpr029
Advance Access Publication 31 March 2011
BTrade mark in VOGUE
Advance Magazine Publishers, Inc. v Office for Harmonisa-
tion in the Internal Market (Trade Marks and Designs)
(OHIM), Case T-382/08, 18 January 2011
The European Union’s General Court gives Vogue maga-
zine the go-ahead for its application to register the
word VOGUE as a Community trade mark. Following a
decade of opposition proceedings, Portuguese company
J Capela & Irma
˜os Lda failed to prove genuine use of its
earlier Portuguese national registration for VOGUE
PORTUGAL in respect of “footwear” in class 25.
Legal context
Community trade mark applications will be refused regis-
tration where the mark applied for conflicts with earlier
rights (Community Trade Mark Regulation 40/94, now
re-enacted by the consolidated Regulation 207/2009).
Article 8 of the Community Trade Mark Regulation sets
out relative grounds for refusal to register a trade mark.
Under Article 8(1) a mark will not be registered where it
is confusingly similar to an earlier trade mark and is
likely to cause confusion in the market place.
Article 8(4) prevents registration of a mark where laws
of a Member State give an existing sign prior rights
against the mark applied for, which would enable the sign
owner to prohibit use of the subsequent mark.
Facts
Advance, owners of Conde
´Nast Publications, owned and
published Vogue magazine. In April 1996 Advance Maga-
zine applied to register the word VOGUE as a Commu-
nity trade mark in classes 9, 14, 15, 25 and 41.
The application was subsequently opposed by Capela,
based on its earlier Portuguese national registration for
VOGUE PORTUGAL in class 25 (‘footwear’). The
grounds invoked by Capela were Article 8(1)(b) and
Article 8(4) of the Community Trade Mark Regulation
(likelihood of confusion with earlier registered and unre-
gistered rights).
In November 2000 Advance requested that Capela
provide evidence that the earlier trade mark had been put
to genuine use. In 2003 the Opposition Division upheld
the opposition, finding that the evidence of genuine use
put forward by Capela was sufficient. The word PORTU-
GAL in Capela’s mark had been included by virtue of an
old rule of Portuguese law which was no longer in force.
The marks were accordingly identical and, since the goods
were similar, there was a likelihood of confusion.
Advance appealed, raising for the first time the exist-
ence of its International Registration for VOGUE, which
had effect in Portugal, arguing that, since it had been
registered in 1951, it had prior rights over Capela’s Portu-
guese mark. The Second Board of Appeal dismissed the
appeal, finding that evidence of the International Regis-
tration was inadmissible, not having been raised before
the Opposition Division.
Advance then appealed further and, in December 2004,
the Court of First Instance (now the General Court)
found that the Board had wrongly considered itself to
have no discretion on the admissibility of facts or evi-
dence submitted late. The matter was therefore sent back
to the Board.
In June 2008 the Board applied its discretion to decide
that the late stage in proceedings at which the documents
relating to the International Registration had been sub-
mitted and the surrounding circumstances meant that
those documents should still not be taken into account. It
found that the late admission of the International Regis-
tration was unlikely to be relevant to the outcome of the
opposition. The Board also confirmed the Opposition
Division’s findings that genuine use of Capela’s earlier
mark had been proved and that there was a likelihood of
confusion between the marks.
Advance again appealed to the General Court, alleging
that Capela’s evidence of genuine use was insufficient as it
did not prove that the earlier mark had been used on the
market during the relevant period of 1994 to 1999. Both
the Opposition Division and the Board had, according to
Advance, based their findings on probabilities or supposi-
tions.
Analysis
The General Court noted that proof of genuine use must
concern the place, time, extent and nature of use of the
Journal of Intellectual Property Law & Practice, 2011, Vol. 6, No. 6364 CURRENT INTELLIGENCE
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