Magazine publisher Conde Nast has lost a trademark battle to expand its famous Vogue brand to perfumes and cosmetics.
A patent office adjudicator has ruled in favour of United Toiletries & Cosmetics, which has been selling perfume called Vogue since the 1980s.
Geoffrey Hobbs QC rejected the publisher’s bid to secure exclusive rights to use the Vogue name on a range of goods including ‘soaps, perfumery and cosmetics”.
He backed opposition moves by United Toiletries, which claimed to have launched its Vogue perfume in 1982 and used the Vogue name as a trade mark for fragrances sold and supplied in the United Kingdom over a period of approximately 12 years commencing in 1984.
He said that, while the first version did not prove popular, the perfume was re-launched in 1984 ‘with a different design, get-up and logo”, with figures indicating that it went on to sell 2,000 units per year in the UK, and 100,000 per year internationally.
Conde Nast had denied that United Toiletries had acquired any protectable rights through use of the name, claiming it had failed to use it in the UK to the necessary extent, and arguing that in any event it was trading in a ‘misleading and deceptive manner’by using the name, which the public would associate with the magazine.
He said that in an earlier decision in October 2006, a patent office hearing officer had backed United Toiletries and held that the evidence on file was sufficient to entitle it to succeed in its opposition to Conde Nast’s application.
The hearing officer said: ‘In my opinion the opponent has shown that at the relevant date it enjoyed goodwill and reputation in its mark ‘VOGUE’ in relation to perfumes. In my opinion, the similarities between the marks and the goods are such that members of the relevant public would believe that the goods offered by the applicant are goods of the opponent or that the businesses are connected.”
Rejecting Conde Nast’s appeal, Mr Hobbs said: ‘I remain unpersuaded that the Hearing Officer reached a conclusion which was not open to him.
‘The evidence that was before him was in all material respects uncontradicted. In the circumstances the Hearing Officer had no alternative but to accept the evidence and assess it for what it was worth, bearing in mind the criticisms which the Applicant had made of it. That is what he did.
“I cannot say that the Hearing Officer was not entitled to find that the evidence was sufficient to support an objection.”
He ordered the publishers to pay United Toiletries a total of £2,600 towards its costs of opposing the application