Infringement of a trademark also depends upon the similarity between the target customers
The criteria for determining trademark infringement primarily depends on two major factors; ie- identity or similarity between the registered trade mark and the infringing mark and the identity or similarity between the goods or services respectively covered by the two marks.
In a recent judgement of Advance Magazine Publishers & Anr. Vs. M/S.Just Lifstyle Pvt Ltd the Bombay High Court reiterated the same and also emphasized on the test of similarity of goods and services as well as the similarity between the trade channels and class of customers.
The Plaintiffs in this case are registered proprietors and the licensed users of the trademark “VOGUE” in respect of fashion and lifestyle magazines. They have registered the trademark in 1976 in Class 16 for magazines (publications) and in the year 2004 in Class 41 for on-line and electronic publications. They also hold registrations for the marks VOGUE GIRL, TEEN VOGUE, etc. in classes 16 and 41. Further, they claim that their magazine contains a section called “IN VOGUE” which pertains to new trends in fashion goods and hence the word “IN VOGUE” has also acquired goodwill.
In 2009 the Plaintiffs came across the Defendant’s trademark application for the mark “JUST IN VOGUE” in Class 35 with respect to retail stores and sales services, etc. Also since the Defendant merchandises in various fashion goods and high end products, the Applicants filed the present case seeking interim injunction.
In their petition the Plaintiffs claim that the Defendant’s mark “JUST IN VOGUE” prominently features the word “VOGUE” which amounts to an infringement of their well-known trademark “VOGUE”. They further claim that the adoption of the impugned mark is ex facie deliberate, will full and mala fide with an intention to capitalize on the goodwill and reputation of the Plaintiffs and give an impression to the public that the services of the Defendant are associated with or connected to the Plaintiffs.
And therefore in addition to infringing the Plaintiffs’ registered trademark, the Defendants are also passing off its goods and services as those of the Plaintiffs.
Arguments by the Plaintiff:
The Plaintiffs primarily based their arguments on the following:
- Similarity between the two marks, namely, “VOGUE” (a registered trademark and a well-knonw mark) and “JUST IN VOGUE” (an unregistered mark);
- The reputation of the Plaintiffs’ registered trade mark “VOGUE” in India, as well as abroad and hence as a well-known mark it is entitled to be protected not only in the classes it is registered in but also in other classes;
- The adoption and use of the impugned mark by the Defendants without due cause, which ultimately resulted into unfair advantage of, and detriment to, the distinctive character and reputation of the Plaintiffs’ registered trade mark.
Arguments by the Defendant:
The Defendant focused their arguments on the fact that the test of similarity as per Section 29 of the Trademarks Act can only be with respect to the similarity between goods and goods; or similarity between services and services; and not the similarity between goods covered under one mark and services covered by the other.
And therefore since the Plaintiffs sell goods, namely magazines; whilst the Defendants who offer services namely, retail sales, there is no scope of confusion because the goods and services are clearly distinct and separate. Furthermore, the Defendants claimed that the target customers and users of the two rival marks are distinct and do not coincide with each other.
Court’s Observation and Judgment:
The Court was of the opinion that the claim of similarity of goods and services is far-fetched and just because they both belong to the Fashion Industry does not imply that there would be deceptive trade connection between the two. They also held that just because the name of the Defendant’s stores bears a certain resemblance with a fashion magazine of the Plaintiffs, which writes about fashion trends and recommends best buys amongst branded goods, a reasonable customer will not be misled to believe a connection or association between them.
The court also held that, “It is important to note that the trade connection relevant for similarity of goods must imply that the goods/services ordinarily come from the same merchant and not that the goods of one merchant have the endorsement or backing of another. Magazine publishers are not ordinarily known to be retailing fashion goods and hardly is anyone likely to be misled into believing that the magazine and the fashion goods come from the same source. Even otherwise, the suggestion that the goods of the retailer may appear to have the backing of the fashion magazine because of the similarity in names cannot be said to have any realistic bearing on the subject of similarity of goods.”
Furthermore, the word VOGUE is an ordinary English word which means fashion or prevalent way or popular usage and therefore the Court held that, “being an ordinary descriptive word, insofar as the band of protection afforded to trade marks is concerned, it has per se the lowest potential for protection.”
Also the only similarity between the two rival words is VOGUE; however, while applying the principle of comparing marks in its totality, the dissimilarities between the two sufficiently outweighs the claim of deceptive similarity.
Finally, laying emphasize on the dissimilarities between the goods and the services provided by the two rival marks and the difference between the target customers of the marks, the Court held that, “While the plaintiff’s magazines are read by their consumers, the defendant’s services are used for buying goods of reputable third parties. The target users of the plaintiff goods are intelligent, affluent, well-travelled women in the age group of 26 to 45. On the other hand, customers of the defendant are said to be primarily men from the middle strata of the society. There is no commonality in the trade channels of the two. Thus, it is absurd to suggest that discerning customers, who are expected to buy these goods are likely to somehow imagine that these goods or the retail services offered by the defendant in connection with them have some trade connection or association with the plaintiff.”
The Bombay High Court has given a well-balanced judgment and also vividly explained the importance of comparing the similarities between the goods and services of rival marks. The judgment also emphasizes on the fact that even though the trade channels may coincide but the similarities in the class of customers/target customers plays a vital role in determining infringement.