Karnataka High Court permanently restrained Vogue Fashion Institute from using the mark ‘Vogue’ in its name
The Karnataka High Court permanently restrained the Vogue Fashion Institute from using the mark ‘Vogue’ in its name.
Background
The plaintiff is an American Corporation and has been publishing a fashion magazine in the name and style of ‘VOGUE’ since 1892.
It is an internationally reputed magazine having circulation in various countries including India. The plaintiff is the registered proprietor in India of Trademark ‘VOGUE’ under Number 315672B in Class-16 in respect of magazine publications and the same is valid and subsisting.
In the month of March 1998, the plaintiff came to know about the defendants running a training institute under the name and style of ‘VOGUE Institute of Fashion Technology’ and using the slogans like ‘VOGUE’ the great career option.
This act of the defendants amounts to infringing the registered trademark of the plaintiff and also amounts to passing off the services of the defendants as that of the plaintiff. Hence, the plaintiff issued a legal notice to the defendants. The defendants gave an untenable reply. Hence, the suit was filed for permanent injunction and rendering of accounts.
Arguments
The appellants/defendants that ‘VOGUE’ is a common English word and it is not a coined word and that the plaintiff cannot prevent others from using the word and cannot monopolise the same.
It was contended that the plaintiff has produced two reports which are investigation reports to demonstrate the awareness of VOGUE Magazine in India and they do not establish that many people in India are aware of the said magazine.
It was further submitted that the Trademark of the plaintiff is registered under the category – Class 16 and it does not cover the activity of the defendants i.e., a Fashion Institute and that the plaintiff has no trademark over the same. Thus, there is no infringement of trademark by the defendants and as already stated above, as many people in India are not aware of VOGUE magazine, the defendants using the name ‘VOGUE’ for its Institute does not amount to passing off and the plaintiff has miserably failed in proving the same and that the trial Court erred in holding it otherwise.
The respondent/plaintiff submitted that in a passing off action, there cannot be a defence of ‘generic word’. What matters is, in a passing off action is the reputation of the person and whether the Institution of the defendants can be passed off as the Institution of the plaintiff and that the plaintiff has been able to establish that the institution of the defendants can be passed off as the institution of the plaintiff and thus are entitled to protection.
It is further submitted that the owners of the trademarks or copyrights are not expected to run after every infringer and thereby remain involved in litigation at the cost of their business time.
Decision
The single judge bench of Justice M. I. Arun said that there is no dispute that the plaintiff and the defendants are using the word ‘VOGUE’ and the same are similar. The plaintiff in the course of arguments has given up its claim for infringement as it has registered its trademark ‘VOGUE’ Class 16 category and the business of the defendants is different.
The court noted that the plaintiff has a registered trademark in Class 16 category under Number 315672B.
It was further noted that the plaintiff publishes the magazine pertaining to fashion and is internationally reputed. The trademark registered is under Class 16. The defendants are running an institution under the name ‘Vogue Institute of Fashion Technology’ and it is an institution pertaining to Fashion Technology.
“Admittedly, the defendants/appellants are not publishing a magazine called ‘VOGUE’ but are running an institution. Thus, there is no infringement of trademark” the court observed.
The court said one needs to analyse the nature of goods/services in respect of which the word ‘VOGUE’ is used by the plaintiff and the defendants and the class of purchasers who are likely to buy goods/services offered by the plaintiff and the defendants and based on their education, intelligence and the degree of care they are likely to exercise in availing the magazine of the plaintiff or the services of the defendants and are they likely to get confused.
It was further observed that the trial court has failed to appreciate the given factor. It has applied the test i.e., applicable to a common man who would get confused by the use of the word ‘VOGUE’ itself and has come to the erroneous conclusion that the defendants’ institute can be passed off as the institute of the plaintiff.
The bench allowed the appeal.
Case title: M.M. Kariappa v/s Vogue Institute of Management
Citation: Regular first appeal no.106 of 2015
Date: 10 November, 2022
