Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 25/08/2020

TAYLOR WESSING

Isartorplatz 8

D-80331 München

ALEMANIA

Application No:	018227024
Your reference:	2003651/20_ADV4.D1064_adt
Trade mark:	VOGUE COLLECTION
Mark type:	Word mark
Applicant:	ADVANCE MAGAZINE PUBLISHERS INC. One World Trade Center New York, NY 10007 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 04/05/2020 pursuant to Article 7(1)(c) and (b) and Article 7(2) EUTMR because it found that the trade mark applied for is not eligible for registration, for the reasons set out in the attached letter, which forms an integral part of this decision.

The applicant submitted its observations on 03/07/2020. The applicant´s arguments in the aforementioned letter may be summarised as follows:

1. The applicant claims that the dictionary excerpts cited by the Office present the meaning of being fashionable or trendy for the expressions ‘in vogue’/’en vogue’ but not for the word “vogue” on its own. It is argued that the mark applied for does not include the article ‘In’ or ‘En’ preceding ‘vogue collection’ and for this reason the meaning given by the Office that the sign may describe the characteristics of the goods, namely being fashionable or trendy cannot be accepted;

2. The applicant points out that the word mark “VOGUE” on its own is registered as a EU word mark for the applicant for class 25 (EUTM 000183756) and that there is no reason why the combination ‘Vogue Collection’ should not be registered as well;

3. It draws the attention for the submissions presented in 9 November 1998 and 8 July 1999 regarding the above mentioned trade mark where, it was laid out that the term “VOGUE” was the name of a well-known, famous magazine which has acquired the necessary distinctiveness through decades of use all over the world and that it was registered in over 100 countries as a trademark. This situation is still accurate today and the fame of the “VOGUE” magazine and the number of trademark applications/registrations has, if anything, rather increased than decreased;

4. It is alleged that “VOGUE COLLECTION” is a grammatical incorrect expression and that the term “VOGUE” itself is sufficiently distinctive to make the term as a whole distinctive and not descriptive in relation to the goods and services claimed. The term “VOGUE COLLECTION”, is the combination of two memorable words. Therefore, the correct expression from a grammatical point of view would be “IN VOGUE COLLECTION” or “EN VOGUE COLLECTION” but not “VOGUE COLLECTION” which is not descriptive per se;

5. The applicant further argues that the sign is not descriptive and would rather be understood by the relevant consumers as an indication that the respectively covered goods are part of a collection of goods originating from the publisher of the “VOGUE” (magazine), thus a collection of “VOGUE” clothing;

6. The application for the mark “VOGUE COLLECTION” is also sufficiently distinctive in the sense of Article 7(1)(b) EUTMR as the relevant public will understand the word sign as an indication that the respectively covered goods are part of a collection originating from the publisher of the “VOGUE” (magazine), thus a collection of “VOGUE” clothing.

7. The mark “VOGUE COLLECTION” consequently fulfils the essential function of a trade mark, as the sign represents a short and memorable designation for the goods and services covered by it. The sign will be memorised by the relevant public easily and instantly as a distinctive trade mark for the goods in question. As a result, the mark is inherently distinctive within the meaning of Article 7(1)(b) CTMR.

Pursuant to Article 94 EUTMR, it is up to the Office to take a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments.

After giving due consideration to the applicant´s arguments, the Office has decided to maintain the objection with regard to all the goods and services.

Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest underlying each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 25).

By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR

pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 31).

‘The signs and indications referred to in Article 7(1)(c) [EUTMR] are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

Having the above mentioned case-law into consideration, the Office will address the observations submitted by the Applicant, as follows:

1. On the sign not being grammatically correct: “VOGUE” not equal to expression ‘IN VOGUE’/’EN VOGUE’ (arguments presented under A), D), G)

The sign applied for ‘vogue collection’ although not containing the article ‘in’ or ‘en’ as claimed by the applicant would still be perceived by its ordinary and plain meaning in relation to the goods and services designated in Classes 25 and 35. The sign applied for provides direct information about the desirable characteristics of the goods and services which, in the present case, would be that the goods and services are or relate to a fashionable/in trend line of clothing which is offered by the applicant. Therefore, a combination of words can be considered descriptive even if it does not follow the usual grammatical rules – the omission of the article ‘in’ or ‘en’ as claimed by the applicant is not sufficient to remove the direct link between the sign and the goods and services applied for. Furthermore, in the world of advertising definitive articles and pronouns (the, it), conjunctions (or, and, etc) or prepositions (of, for, etc) are frequently omitted. For this reason, the said omission will not be sufficient to make the sign applied for to be perceived by the relevant public as being distinctive or to overcome its descriptive meaning.

For a trade mark to be refused registration under Article 7(1)(c) EUTMR,

it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32, emphasis added.)

Consequently, the arguments provided by the applicant cannot be accepted.

2. On the previous registration of the word mark ‘VOGUE’ by the Office ( arguments presented under B) and C))

As regards the applicant’s argument that a similar registration has been accepted by the EUIPO, according to settled case‑law, ‘decisions concerning registration of a sign as a European Union trade mark … are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, the registrability of a sign as a European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T‑36/01, Glass Pattern, EU:T:2002:245, § 35).

‘It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another’ (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67).

Moreover, the word mark “VOGUE” registered as a EU word mark for the applicant for class 25 (EUTM 000183756) was filed in 1996 and more than 20 years have passed. As mentioned above, decisions concerning the registration of a sign as a EUTM must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice, for which the development and interpretation of the EUTMR must be taken into account.

3. On the well-known character of the sign ‘VOGUE’ as a famous magazine and its inherent distinctiveness (arguments presented under C), E) and F))

The applicant argues that goods are part of a collection of goods originating from the publisher of the “VOGUE” (magazine), thus a collection of “VOGUE” clothing. It adds that the term “VOGUE” was the name of a well-known, famous magazine which has acquired the necessary distinctiveness through decades of use all over the world and that it was registered in over 100 countries as a trademark.

It should be pointed out that the Office will only examine the acquired distinctive character following a request from the EUTM applicant. No request was filed for the present trade mark, either as a principal or subsidiary claim, nor any evidence connected to it to show that the sign ‘VOGUE COLLECTION’ would be recognised by a significant proportion of the public in the EU.

In order to have the registration of a trade mark accepted under Article 7(3) EUTMR, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that Regulation. This is not the present case, as the applicant claims the sign ‘VOGUE COLLECTION’ has inherent distinctive character for the goods and services applied for and did not submit any other claim.

Consequently, the arguments provided cannot proceed.

For the abovementioned reasons, and pursuant to Article 7(1)(c) and (b) EUTMR and Article 7(2) EUTMR, the application for EUTMA No 018 227 024 is hereby rejected for the all the goods and services.

According to Article 67 EUTMR, you have a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

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