The New York and Paris publishing houses of the celebrated magazine VOGUE obtained a decisive victory before the Swiss Federal Tribunal (Supreme Court). The two publishing companies, Advance Magazine Publishers Inc. New York and Les Publications Condé Nast SA Paris, filed a civil suit with the Swiss courts because of the activities of a company based in Neuchâtel that manufactured and sold watches bearing the logo with the words "VOGUE My Style", with the words "My Style" being printed in very small letters. In its judgment, the Federal Tribunal confirmed both that "VOGUE" is a well-known trademark and that the Court of the Canton of Neuchâtel had correctly decided that the watchmaker is prohibited to use the term VOGUE for any kind of product likely to create a risk of confusion with the distinctive sign VOGUE. Importantly, the reasoning of the Federal Tribunal expounded beyond the previous court decision by holding that said prohibition may not only be based on unfair competition but also on trademark law, i.e. on the well-known character of the sign.
Well-known character
The dispute goes back to 2009. At that time, VOGUE had succeeded in withdrawing the opposing party's watches and their publicity from the Basel World fair. This year, the publishers of the magazine were successful before the Court of the Canton of Neuchâtel. The Court held on January 31, 2012 that the watchmaker had committed an act of unfair competition and ordered it to abstain from using any sign in a form that may create a risk of confusion with the publishers' well-known name. The watchmaker then appealed against the decision before the Swiss Federal Tribunal which confirmed on 7 August 2012 (notified on 25 September 2012) the decision of the Neuchâtel Court.
Dr. Thomas Legler and Michèle Burnier, VOGUE's lawyers from the Geneva law firm PYTHON & PETER, are satisfied by the Federal Tribunal's decision as "it definitively recognizes that VOGUE is a well-known trademark". In addition, they estimate that the decision will resonate worldwide and put on notice all sort of "chancers" who try to base their commercial success on the fame of the VOGUE trademark.
It is interesting to note that already the judges in Neuchâtel held that VOGUE is a well-known trademark. They added that the reputation of the magazine is not linked to the number of subscribers (as sustained by the opposing party) but to the penetration of said magazine in the collective consciousness. That conclusion was mainly based on a poll organised and produced in the proceedings by the publishers: when asked, one out of four Swiss residents knew the trademark VOGUE and associated it with a magazine of high quality.
Some criticism regarding the Neuchâtel Court's decision
In its decision, the Federal Tribunal criticized, however the Neuchâtel Court's decision. Indeed, the Neuchâtel judges held that a well-known trademark could only have a specific protection in the fields where the products at stake are similar to those where the famous mark has imposed itself on the market. The Federal Tribunal fully rejected that view recalling that on the basis of the Swiss trademark law a well-known trademark triggers a "blocking effect" on signs linked to any products or services. Thus, the Federal Tribunal recalled that it had previously decided that a company could not use the well-known sports trademark NIKE for perfumes (ATF 124 III 277). The Federal Tribunal concluded that the publishers of VOGUE were therefore entitled to request the prohibition of the commercialization of watches not only on the basis of the unfair competition statute (a fact which was not contested before that tribunal) but also trademark law.
Unfair competition
Regarding the unfair competition aspect, the Federal Tribunal furthermore accepted the Neuchâtel Court's statement that it appears to be likely that the watchmaker deliberately took advantage of VOGUE's fame and good reputation by inducing potential consumers into believing that there is a relation between the two entities. That kind of behaviour represents an act contrary to Article 2 of the Swiss Unfair Competition Act.
No cancellation of VOGUE trademarks
The watchmaker also complained before the Federal Tribunal that the Neuchâtel Court should have cancelled the VOGUE trademarks since they would not have been used in Switzerland for the period of five years as prescribed by Article 12 of the Swiss Trademark Protection Act.
The Federal Tribunal held, however that the watchmaker had not even submitted an indicia of proof in this respect during the proceedings. The adverse party only sustained the non-use of the VOGUE trademarks without filing any evidence, which is insufficient according to Swiss trademark law, and indeed to all norms of procedural law. The watchmaker's appeal was therefore also rejected on that point. In addition, the Federal Tribunal ordered that the appellant has to pay CHF 5'000 of court costs and CHF 6'000 as an indemnity to the publishers of VOGUE.
