Karnataka High Court: While deciding the instant appeal filed by ‘Vogue Institute of Management’ challenging the Trial Court’s permanent injunction restraining the appellants to use the trademark ‘VOGUE’ as a part of their name and trading style, the Bench of M.I Arun J., held that the respondent publishes an internationally acclaimed fashion magazine, whereas the appellant runs an institution pertaining to fashion technology ; since the appellant is not publishing any magazine by the name of ‘Vogue’, hence, there is no infringement of trademark.
Furthermore, while considering that whether the use of the word ‘Vogue’ by the appellants amounted to passing-off, the Court held that while Vogue magazine is generally read by a limited section of society who are aware about fashion, its purchasers are likely to know that the magazine is only involved in the business of publishing and not running an institute. The Court stated that it is highly unlikely that the students joining the appellants’ institute will get confused between Vogue- the fashion magazine and Vogue- the fashion technology institute.
Facts and Legal Trajectory of the Case: Advanced Magazine Publisher’s Inc. had been publishing the internationally popular fashion magazine VOGUE since 1892 and is the registered proprietor in India of the trademark VOGUE under Class-16 of Trademarks Classification of Goods and Services, in respect of magazine publications.
In 1998, the respondent (then plaintiff) came to know about the appellant (then defendant) running a training institute named- VOGUE Institute of Fashion Technology using slogans like – “VOGUE, the great career option”. Consequently, the respondent-plaintiff took the legal route.
The Trial Court framed and answered the following questions-
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Whether the plaintiff proved that it is the proprietor of the trademark VOGUE in respect of fashion magazine and is using the trademark for over a century and is the registered proprietor in India as well? – Affirmative
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Whether the plaintiff proved that using the trademark for over 100 years, the mark VOGUE is now been exclusively identified with the plaintiff?– Affirmative
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Whether the plaintiff proved the defendant’s use of the world-famous trademark to trade upon and benefit from the reputation attached to the said mark? Affirmative
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Whether the defendant was able to prove the dissimilarity between the names and that their name is sufficiently distinct? Negative
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Whether the plaintiff is entitled to seek relief of permanent injunction; direction to render an account of profits and decree for the amount due after rendering of account, against the defendant? Affirmative for all three
As a result of the afore-stated verdict rendered by the Trial Court, the instant appeal was preferred.
Contentions by the appellants/defendants:
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The appellants/defendants argued that VOGUE is a generic word- a common English word which has not been coined, therefore, the respondent cannot monopolise the same.
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The appellants/defendants further argued that the respondent has failed to demonstrate the awareness regarding Vogue magazine in India.
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It was contended that Class 16 of registered trademark, does not cover the activity of the appellants i.e., running a fashion institute. Thus, no trademark infringement has been committed. Furthermore, it was argued that since the people of India are not that aware of the existence of VOGUE magazine, therefore, the appellants/defendants using the name for their institute does not amount to passing-off.
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It was also argued that mere assertion of transborder reputation of a trademark is not sufficient for the Court to give conclusions regarding infringement of the trademark.
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The appellants/defendants further submitted that they are honest and concurrent user of the word VOGUE and have spent their effort time and money to build a goodwill.
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The Trial Court was confused as to whether the dispute is of trademark infringement or passing-off.
Contentions by the respondent/plaintiff:
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The respondent/plaintiff argued that in a passing-off action, there cannot be a defence of generic word and what matters in a passing-off action is the reputation of the person.
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It was submitted that the reputation of the magazine had already reached India prior to the adoption of the mark by the appellant/defendant. It was further contended that the respondent/plaintiff has been able to show a connection in the course of trade between goods of the two parties.
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It was further submitted that the respondent/plaintiff has also sufficiently proved that the appellant/defendant’s use of identical or deceptively similar mark is for deceiving and causing confusion withing the customers.
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Vis-à-vis transborder reputation, it was contended that it is not necessary to ascertain existence of real market and that the presence of the respondent/plaintiff, through its mark, in a subtle form, is sufficient.
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It was contended that even though the businesses are different, both the parties cater to the same pool. Whosoever is interested in latest fashion trends, will also be interested in a fashion magazine; and it is a fashion technology institute that produces professionals like fashion designers, fashion journalists etc. Anyone who aspires to be fashion professional, is aware of VOGUE magazine.
High Court’s Observations and Decision:
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Perusing the facts and contentions, the Court observed that there is no dispute that both the parties are using the word VOGUE. The Court also observed that the respondent/plaintiff in course of their argument, have given up their claim for infringement.
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The Court further observed that the gist of a passing-off action is that it is an action for violation of common law rights and is enforceable in respect of registered and unregistered trademark. “False and misleading representation resulting into deception, is the key to the answer”
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Perusing the contents of Class 16 Trademarks Classification of Goods and Services, the Court held that no trademark infringement has been committed by the appellant/defendant.
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The Court considered that whether the appellants/defendant’s mark is likely to deceive the public, who may buy their goods as if they were the respondent/plaintiff’s goods. The Court referred to several case laws on point and noted that in such cases, there is a need to analyse the nature of goods/services in respect of which the word ‘VOGUE’ was being used by both the parties. The need to analyse the class of purchasers who are likely to good/services offered by the parties, was pointed out as well.
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The High Court held that the Trial Court failed to appreciate the afore stated factor. The Court held that the Trial Court came to an erroneous conclusion by applying a test that is applicable to a common man who would get confused by use of the word VOGUE. The verdict of the Trial Court was thus set aside.
[M.M. Kariappa v. Advance Magazine Publisher’s Inc., 2022 SCC OnLine Kar 1593, decided on 10-11-2022]
Advocates who appeared in this case :
SS Naganand and Summa Naganand and Vikram U.R. for Just Law, for the Appellant;
Veena P., Constituted Attorney, for the Respondent.
*Sucheta Sarkar, Editorial Assistant has prepared this brief.