Condé Nast’s CTM argument not in vogue with EU General Court

The publisher of the Vogue fashion magazine has seen its lengthy quest to obtain a Community trademark (CTM) for the term ‘Vogue Cafe’ suffer a setback after the EU General Court upheld an opposition filed by a Spanish company.

Yesterday, March 1, the court ruled that Spanish fashion company Selecciones Americanas had sufficiently demonstrated evidence of a likelihood of confusion between the applied-for mark and three of its own trademarks.

Selecciones owns two Spanish trademarks for the terms ‘Vogue’ and ‘Vogue Studio’ covering underwear products. It also owns a CTM for the term ‘Vogue’, which covers advertising services and underwear products.

Advance Publications, which owns Condé Nast, the publisher of Vogue, The New Yorker, Wired and Vanity Fair, applied for the CTM in connection with clothing in 2003.

However, the Office for Harmonization in the Internal Market (OHIM) upheld the Spanish company’s opposition, citing a likelihood of confusion between the marks.

But the publisher appealed against OHIM’s decision, stating that the evidence submitted by Selecciones failed to demonstrate the use of the marks in commerce.

Advance Publications argued that invoices supplied by Selecciones failed to reference the marks and that samples of underwear products bearing the ‘Vogue’ mark did not show that the products were sold in the five-year period before the CTM application was filed.

Furthermore, Advanced Publications complained that OHIM should have suspended opposition proceedings and awaited the outcome of a separate challenge to the ‘Vogue’ CTM.

The court, however, was not persuaded by the publisher’s arguments.

“When the invoices are read, first, in the light of the catalogue for the mark ‘Vogue’ and, secondly, of the sample of women’s underwear, it may be concluded that the goods referred to on the invoices are clearly identifiable along with their connection with the earlier ‘Vogue’ mark, even though that mark does not appear on the invoices.”

The court also rejected the publisher’s request to postpone the opposition because of the pending challenge to the ‘Vogue’ CTM. It said that OHIM had found sufficient evidence of a likelihood of confusion with the two Spanish marks.