GENERAL COURT, JUDGMENT OF 18 JANUARY 2011, T-382/08, ADVANCE MAGAZINE PUBLISHERS, INC. V. OFFICE OF HARMONIZATION FOR THE INTERNAL MARKET (OHIM) ON BEHALF OF J. CAPELA & IRMÃOS, LDA, VOGUE

The General Court annulled the decision of OHIM's Second Board of Appeal and dismissed the opposition. The court, in particular, considered the type of evidence which will prove genuine use of an earlier mark.

Advance Magazine Publishers, Inc. (AMP) applied for the registration of the Community trademark "VOGUE" for classes 9, 14, 16, 25 and 41. J. Capela & Irmãos, Lda (Capela & Irmãos) opposed the registration for "clothing" in class 25, based on the earlier Portuguese mark for "VOGUE Portugal," registered for footwear in class 25, and the business name "VOGUE — SAPATARIA."

OHIM's Opposition Division found that the marks were effectively identical, as "Portugal" featured in the Portuguese mark only due to redundant legislative requirements. The opposition was duly upheld on the ground of likelihood of confusion, stemming from identical marks and similar goods.

AMP brought several appeals against this decision, broadly centered on the fact that OHIM considered itself to have no discretion when considering whether new facts or evidence should be taken into account. The new evidence in question was an international registration for "VOGUE," valid in Portugal, and owned by AMP since 1951.

At an earlier hearing, the General Court had determined that OHIM should have taken this evidence into account at appeal, and particularly as part of AMP's claim that Capela & Irmãos had not showed adequate proof of genuine use, which was reconsidered in these proceedings.3

Adequacy of Evidence the General Court's Sole Consideration

At the most recent hearing, the General Court ruled that the evidence submitted by Capela & Irmãos did not meet the minimum standards required by case law and regulation. It was not sufficient for genuine use of the mark to appear "probable or credible"; actual proof of that use must be given.

Evidence submitted had included, inter alia, declarations from footwear manufacturers and Capela & Irmãos' managing partner, photographs of VOGUE footwear models, VOGUE insoles, photographs of stores with the business name VOGUE; copies of invoices issued to Capela & Irmãos by footwear manufacturers, and copies of telephone directories featuring 'sapataria vogue.'

The court said that this evidence was inadequate as it did not prove the nature, place, time, or extent of the trademark use.

For example, the declaration of the managing partner had less evidential value than those of the manufacturers. In turn, all of the declarations were discounted, as they gave no evidence as to the extent of use. Other items were discounted because the use of "Sapataria Vogue" as a company name did not constitute use of "VOGUE" as a word mark for the purpose of identifying the goods covered by the Portuguese registration. This was particularly relevant in relation to the invoices, which showed only that the footwear was being manufactured for Capela & Irmãos, not that the footwear bore the trademark "VOGUE." Further, the invoices were evidence only of a relation between the manufacturers and Capela & Irmãos; they showed no evidence of the sale of goods bearing the trademark "VOGUE" to end customers.

Evidentiary Documents Should be Part of a Wider Collection

The court observed that additional evidence to support the proof of extent of use of the national mark would not have been difficult for Capela & Irmãos to obtain: till receipts, brochures, catalogues, or advertisements could all have been used. Moreover, Capela & Irmãos had not claimed that there would be any problem in locating such evidence.

Trademark owners wishing to bring a successful opposition should therefore take note, that the evidence they provide must fulfill the requirements of scope as set out by the court in this case.

Where a business operates under the same name as the registered mark, particular attention must be paid to differentiate evidence of the mark from evidence of the business name, as showing use of the one will not necessarily substantiate the other