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CLASS 46


Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

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MONDAY, 8 OCTOBER 2012
Swiss Supreme Court: VOGUE is a famous mark, enjoys protection for all products

 

Wasfi Taher and Riba Watch Suisse Ltd thought it was a clever idea to register VOGUE MY STYLE and the above depicted figurative mark for cosmetics and watches in Switzerland and use the marks for watches. Advance Mgazine Publishers Inc, proprietor of the mark VOGUE for magazines, both opposed the registrations and sued Taher and Riba Watch before the Cantonal Court in Neuchatel. The first instance held that the mark VOGUE was famous, but dismissed the claim based on trade mark law for lack of similarity between the goods. It enjoined Taher and Riba Watch from using VOGUE MY STYLE based on unfair competition law, however. The Federal Supreme Court corrects.

VOGUE is a famous mark in the sense of art. 15 Trade Mark Act (roughly equivalent to the concept of the well-known mark under EU trade mark law). A consumer survey among 1,110 members of the general public from all three language regions of Switzerland had shown that 25% of the questioned knew VOGUE and associated it with a high quality fashion magazine, this was sufficient to establish the famousness of the mark.

Famous marks enjoy protection for all products, even for those for which they are not used, such as in this case cosmetics and watches (that is really one of the main points of the concept of famous marks - the first instance having gotten this wrong is a bit embarrassing). The claim could therefore be granted under trade mark law (in an obiter dictum, the Federal Supreme Court adds that it also could be granted under unfair competition law).

German summary of decision of 7 August 2012 here, with link to full text in French. 

Posted by: Mark Schweizer @ 10.43
Tags: Switzerland, famous mark, well known mark,
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