Conde Nast prevails over Trinity. VOGUE upheld

Ian Bartlett and Susan Davey | October 2016

Conde Nast’s iconic VOGUE magazine has been called variously, the world’s fashion bible and the world’s arbiter of fashion. In a case for which an important judgment has just been handed down, Beck Greener represented Conde Nast in seeing off a sustained attack against Conde Nast’s EU registration for VOGUE for beauty products, commenced by the Swiss based hair care company Trinity. The decision of the European Union General Court is: here.

Trinity claimed that Conde Nast’s registration was descriptive for beauty products (class 3).  It claimed that it was correspondingly non distinctive for such products.  It also claimed that Conde Nast had not used the mark for beauty products and that because Conde Nast owned allegedly unused registrations in various EU member states at the national level for the mark VOGUE for class 3 products, its EU registration was in bad faith and should be cancelled.

The General Court of the European Union disagreed.  It upheld the earlier decisions of the EU IPO’s Opposition Division and the EU IPO’s Board of Appeals, in their finding that Trinity’s claims had no substance.  It found that VOGUE was not descriptive or non-distinctive for the products concerned. It found that Conde Nast had in fact used the mark for the beauty products in question.  It further found that Conde Nast’s registration had been obtained in accordance with legitimate and wholly proper business practices.  Conde Nast was entitled to seek to consolidate its national EU rights with an EU registration and such a registration could not on this ground, be invalid for bad faith.   The registration was therefore found to be valid and costs have been awarded in favour of Conde Nast.

Ian Bartlett and Susan Davey of Beck Greener, and David Ivison of 11 South Square, represented Conde Nast.