litigation – Fash Tech Lawyer

VOGUE versus VOQUE, “strike a pose VOGUE, VOQUE, VOGUE…”

I know what you’re thinking…it’s only her second week and Fash Tech Lawyer has committed the blogger’s cardinal sin, a typo! Or not…

As I sit here bleary eyed after a looooooong night reviewing a laborious software agreement and sipping a double espresso, I find myself having to double take. Am I going mad? Am I seeing this right? Does that say “VOQUE“ or “VOGUE“?!

Vintage Vogue from June 1950 (left) and Christmas 1985 (right).

Condé Nast’s opposition

VoQue Limited is a wholesale fashion company with a UK registered office. The company is two years old and reported a 2014 turnover of £10,000.

In September 2013 it applied to register the logo below as a UK trade mark for leather goods; clothing, footwear and headgear. As we know from the Louis Vuitton case (posted here last week), once a trade mark is registered, it will enjoy a presumption of validity until challenged. However, sadly for VoQue it didn’t get that far…

No longer “Queen V”!

Hot on VoQue’s heels, the fashion bible VOGUE was not too happy about this and quickly opposed the VOQUE application in December 2013.

Condé Nast, which owns VOGUE, said that the VOQUE mark:

• is confusingly similar to VOGUE, and if registered or even used, would take unfair advantage of VOGUE’s success (if you’re really interested, the relevant law can be found under Section 5(2) (b) and 5(3) of the Trade Marks Act 1994); and
• would cause misrepresentation and damage to the holier than thou publication under Section 5(4)(a) of the Act!

VoQue bites back

In response to this, VoQue said:

• VOQUE and VOGUE carry out totally different activities;
• the typeface used by the VOQUE mark is completely different to the VOGUE mark; and
• VOQUE means “evoke” or “awaken” in French and is different to VOGUE’s “fashionable” or “popular” meaning.

Drum roll please….and it was decided…

No surprises, Condé Nast’s opposition was upheld. Nice try VoQue!!

In July 2015 a decision in favour of the fashionistas’ handbook said:

• the two marks are confusingly alike and have an overall degree of visual, aural and conceptual similarity; and
• VOGUE is distinctive given its reputation and the fact it is not entirely descriptive when used on the iconic publication.

Founded in 1892, Vogue has been at the forefront of fashion publications for well over 100 years! This example is from the 1920s Art Deco era.

The application for the VOQUE mark was therefore dismissed and VoQue Limited was ordered to pay the costs incurred by Condé Nast.

The decision also noted:

• the fact that VoQue’s mark has a large crown element around the letter “Q” does not matter, as the average shopper would not see it as sufficiently different;
• the word “Vogue” is a well-known English word meaning “in fashion” and when used in relation to leather goods and clothing, for which the VOQUE mark was registered, alludes to such goods being “of the moment”, which draws parallels between the two marks; and
• the typeface used by VoQue is not unusual, in fact, Condé Nast would be well within their rights to use their VOGUE mark in the same style.

Interestingly, had VoQue managed to slip this one past VOGUE (unlikely!) thereby obtaining registration status, only for VOGUE to then challenge the registered mark at a later date, VOQUE would have been revoked (ironic huh, or just a really bad joke!?)!

Final thought

After reading the case first and foremost, I’m pretty pleased I don’t need my eyes testing, but the lesson to learn from all of this is that it’s risky business basing your branding on a similar, earlier and well established registered mark. There’s only one VOGUE!

Louis Vuitton has lost its Trade Mark protection for the famous chequered pattern, the Damier.

In addition to its “LV” monogram, the French fashion giant Louis Vuitton has been using the brown and beige check – known as the Damier Ebene – since 1888. It successfully registered a European-wide Community Trade Mark (“CTM”) in 1998, and for the cream and grey Damier Azur ten years later. However, Nanu Nana, an online gift item supplier, filed a legal claim to remove protection for these patterns in 2009.

The Damier Azur and Damier Ebene, side by side

Nanu Nana argued that Louis Vuitton could not legally protect the Damier pattern because it was:

descriptive;
devoid of distinctive character;
an established practice of trade; and
consisted exclusively of a shape giving substantial value to the goods themselves.

If a Trade Mark is found to be any of the above, it will be refused protection under the Community Trade Mark Regulations (Article 7). In eight of the 27 European Union countries, Louis Vuitton could not prove it had acquired distinctive use of the Damiers. In other words, it could not prove that the Damier was distinctive enough for people to automatically associate it with its origin, being the Louis Vuitton official brand. The Courts therefore cancelled the Trade Mark protection of both the Ebene and Azur Damiers.

After a few rounds of appeal by Louis Vuitton, it all boiled down to the decision of the General Court. The decision was handed down in April 2015 and said:

The marks lack inherent distinctive character. They are too basic, too common and have a long-standing link with leather goods for which they were registered.
The evidence provided by Louis Vuitton did not prove distinctive character throughout the European Union (in all 27 countries).
Photos of celebrities holding Louis Vuitton merchandise did not prove the brand had acquired a special or well-known distinctiveness through use.

Just because celebrities – like supermodel Miranda Kerr – use a particular product, doesn’t mean that the design can be protected under law!

Without a protected Damier, Louis Vuitton will now have a harder time going after counterfeit products.

What could the brand have done differently?

Louis Vuitton’s crux has been lack evidence. Had the brand provided sufficient proof, showing acquired distinctiveness of the Damiers in every EU country, perhaps the Damiers would still be protected. Louis Vuitton now has the opportunity to appeal to the Court of Justice for the EU, which is a route the luxury designer brand will likely take to protect the patterns. Let’s watch this space!

What does this case teach us?

A mark must be distinctive throughout each and every one of the EU countries in order to be granted an EU-wide protection.
Even marks that have been used for over a century can be vulnerable to invalidity claims. The key to protection, as always, is evidence. If sales, PR and marketing data is maintained for all EU territories, distinctiveness and use are easier to prove.
Trade Mark erosion is when a trade marked name or pattern becomes generic (think “Hoover” or “Kleenex”). You can help prevent this with savvy marketing, to include identifying and adding a durable distinctive element to the core design. This will help to withstand opposition or cancellation proceedings from competitors.
Where a Trade Mark constitutes a valuable asset, businesses should always have a strategic approach to registering multiple marks in their core markets.