In case T-37/12, Advance Magazine Publishers Inc.
applied for the word sign TEEN VOGUE for Class 18 ‘Goods of leather and/or
imitation leather; clothing, belts, collars and leads for animals; whips;
harness and saddlery; umbrellas; parasols; walking sticks; animal skins, hides;
luggage; bags; shopping bags; trunks; travelling bags; hand bags, shoulder
bags, backpacks and rucksacks; bicycle bags; purses; wallets; key fobs and key
cases; parts and fittings for all the aforesaid goods’.
Mr. Eduardo López Cabré opposed it on the grounds of art. 8(1) b) CTMR on the basis of
earlier Spanish and Community word marks VOGUE and Spanish figurative mark all registered for the following goods in Class 18 ‘All kinds
of umbrellas, sunshades, handles, ribs and canes for these.’
Both the Opposition Division and Board of Appeal upheld
the opposition as regards ‘umbrellas; parasols; parts and fittings for all the
aforesaid goods’, since a likelihood of confusion could not be excluded due to
the identical nature of those goods and of those protected by the earlier
Spanish word mark VOGUE – the use of which it considered had been sufficiently
proved – and the similarity of the signs at issue. The General Court
confirmed the findings and dismissed the appeal.
In Case T-509/12, the applicant’s TEEN VOGUE mark
registered for Class 25 goods (class headings) was opposed successfully on the
basis of earlier Swedish word mark VOGUE registered for ‘clothing, including
boots, shoes and slippers’. OHIM and the General Court upheld the opposition
since a likelihood of confusion could not be excluded due to the identity or
similarity of the goods covered by the mark applied for, namely, clothing,
footwear and headgear, and of those protected by the earlier Swedish word mark
VOGUE - the use of which it considered had been sufficiently proved but only
for hosiery - and the average similarity of the signs at issue.
Regarding the conceptual comparison, neither of
the two elements at issue (‘teen’ and ‘vogue’) has a meaning in Swedish, which
is not disputed. None the less, it was for the Board of Appeal to ascertain
whether the general public in Sweden, many of whom speak English, was able to
discern the meaning of those two elements, which it did not do. The GC reviewed
whether this error by the BoA on the partially erroneous assessment of the relevant
public’s abilities, affected the legality of the contested decision.
However, it found it did not: for the part
of that general public which has a command of the English language, the word
‘vogue’ would be understood as a word relating to fashion, the word ‘teen’
clearly indicating adolescents. Furthermore, the word ‘teenager’ translated
into Swedish is a word constructed in a similar manner, namely, ‘tonåring’. It
must be inferred from this that the expression ‘teen vogue’ would be perceived
as a mere variation of ‘vogue’, since the concept of ‘what is fashionable for
adolescents’ naturally comes from ‘what is fashionable’. Therefore, for the non English-speaking part of
the public, the BoA’s conclusion regarding the lack of influence of the
conceptual comparison on the assessment of the similarity of the signs remains
true. The GC confirmed the BoA's decision and dismissed the appeal.