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In 2012, Trinity Haircare Ag (“Trinity”) applied to invalidate an EU trade mark registration for VOGUE (the figurative mark above) owned by Advance Magazine Publishers Inc. (“Advance”).

The registration covered the following goods in class 3:

Cleaning, scouring and polishing preparations and substances; non-medicated toilet preparations and substances; beauty preparations and substances; cosmetics; make up; lip-stick and lip gloss; dentifrices; fragrances, perfumery, cologne, toilet waters and eau de colognes; essential oils; aromatherapy products; deodorants for personal use; anti-perspirants; sun-tan and sun-screening preparations and substances; depilatory preparations and substances; shaving cream and shaving soaps; massage oils; powders, creams and lotions; nail polish; nail polish remover; soaps and shampoos; shaving and after-shave preparations; preparations and substances for the conditioning, care and appearance of the skin, body, face, eyes, hair, teeth and nails; shower and bath preparations; bath oils and bath salts; talcum powder; moisturisers; pot pourri; incense; incense sticks; room fragrances and articles for perfuming rooms; non-medicated baby oils and baby creams; non-medicated baby wipes; cotton wool.

The invalidation action was based on several claims under the Council Regulation (EC) No 207/2009. Firstly, that the mark was descriptive of the goods covered by the registration (Article 7(1)(c)). Secondly, that the mark was devoid of distinctive character (Article 7(1)(b)). Lastly, that the registration was applied for in bad faith (Article 52(1)(b)), on the basis that it had been applied for with the intention of avoiding the consequences of Advance not using its earlier registrations within the non-use grace period.

The EUIPO Cancellation Division dismissed the application for invalidity. The EUIPO Board of Appeal agreed with the Cancellation Division’s decision and dismissed the subsequent appeal. Both bodies agreed that the mark was neither descriptive nor laudatory of the goods covered. The mark was held to have the requisite level of distinctive character. Trinity’s bad faith claim was also rejected.

Trinity subsequently took the case to the General Court.

The Court agreed with the Board of Appeal that the relevant public in this case was the general French and English speaking public. The Court highlighted that ‘Vogue’ means ‘popularity, use or general acceptance; popularity with the audience’ in both French and English Dictionaries. It also highlighted that the expressions ‘en vogue’ (in French) and ‘in vogue’ (in English) mean ‘fashionable, tendency’.

The Court also highlighted that the goods in question were beauty and baby products and do not come within the meaning of the word ‘fashion’. It stated that consumers buy beauty and care products “for their ‘result’, that is to say, the fact that the product moisturises well, deodorises well or produces a pleasant scent”. The Court suggested that “the notion of fashion is connected with the permanent change linked to every season and every year. That is not the case with the goods at issue, in respect of which change is rarely linked to the change of season or year but rather to innovation, that is to say, the appearance of a new product in a position to satisfy the consumers’ unmet needs”. As such, the Court considered that there was nothing to support a finding of a sufficient link between the mark and the goods in question. The Court therefore concluded that the mark was not laudatory and therefore had distinctive character in relation to the goods concerned.

The Court rejected the claim that the registration was filed in bad faith as there was insufficient evidence to prove this.

The Court dismissed the action in its entirety and ordered Trinity to pay the costs.

T-453/15