In Case T-453/15, Trinity Haircare AG, filed an application for a declaration of invalidity against the EU trade mark registered for various goods in Class 3 'Cleaning, scouring and polishing preparations and substances; non-medicated toilet preparations and substances; beauty preparations and substances; cosmetics; make up; lip-stick and lip gloss; dentifrices; fragrances, perfumery, cologne, toilet waters and eau de colognes; essential oils; aromatherapy products; deodorants for personal use; anti-perspirants; sun-tan and sun-screening preparations and substances; depilatory preparations and substances; shaving cream and shaving soaps; massage oils; powders, creams and lotions; nail polish; nail polish remover; soaps and shampoos; shaving and after-shave preparations; preparations and substances for the conditioning, care and appearance of the skin, body, face, eyes, hair, teeth and nails; shower and bath preparations; bath oils and bath salts; talcum powder; moisturisers; non-medicated baby oils and baby creams; non-medicated baby wipes; cotton wool.’
The Cancellation Division and Board of Appeal considered that the sign at issue was neither descriptive nor laudatory and that it was sufficiently distinctive. It also found that no act of bad faith within the meaning of Article 52(1)(b) of Regulation No 207/2009 had been proved.
The Invalidity applicant appealed reinterating his arguments that the term ‘vogue’ was used as a synonym for ‘fashion’ or as a shortened form of the expression ‘en vogue’ and thus was descriptive of the goods.
The Board of Appeal confirmed that, as in French, ‘vogue’ in English had the meaning ‘popularity, use or general acceptance; popularity with the audience’ according to well-known dictionaries. It also asserted that there were expressions such as ‘en vogue’ (in French) or ‘in vogue’ (in English), which mean ‘fashionable, tendency’. However, the Board of Appeal stated that the applicant had not demonstrated that the word ‘vogue’ was used as a synonym for those expressions (contested decision, paragraph 16). Likewise, it held that nothing indicated that the word ‘vogue’ was descriptive of the goods at issue.
Those conclusions were upheld by the General Court. There is nothing in the definition of the word ‘vogue’ which indicates that that word has a sufficiently direct concrete link to the goods in question to enable the public concerned immediately, and without further thought, to perceive a description of an essential characteristic of the goods in question or of one of their characteristics. In respect of 'beauty products and baby care' products, it is hard to see how the word ‘vogue’ is descriptive of those products whose characteristic function is care or beauty care, which does not fall within the area of fashion. In that regard, the EUIPO, supported by Vogue's owner, is entitled to state that beauty and care products are not fashion products, given that consumers buy them for their ‘result’, that is to say, the fact that the product moisturises well, deodorises well or produces a pleasant scent. In that connection, EUIPO rightly notes that the notion of fashion is connected with the permanent change linked to every season and every year. That is not the case with the goods at issue, in respect of which change is rarely linked to the change of season or year but rather to innovation, that is to say, the appearance of a new product in a position to satisfy the consumers’ unmet needs. Therefore, fashion is not concerned with care and beauty products.
Regarding the list of the results of internet searches submitted as proof by the applicant during the administrative procedure, that list does not prove that the word ‘vogue’ is descriptive of the goods at issue. The results of the searches submitted demonstrate, rather, that there is a reference to the commercial origin of certain services, such as those provided in a beauty salon, or to the intervener’s magazine. The fact that the invalidity applicant’s search displays around 850 million results does not prove by itself that ‘vogue’ is descriptive of the goods at issue. Besides, the applicant does not propose any analysis in support of this.
Likewise, as regards the decisions by which the competent German and Swiss authorities refused to register trade marks similar to the contested mark on the grounds that those marks were descriptive, that argument should be dismissed as ineffective, inasmuch as the EU trade mark system is an independent syste.
Regarding the bad faith arguments, the contested mark was alledgly submitted in bad faith, given that the intervener had repeatedly submitted, between 1962 and 2003, that is to say, before the contested mark was filed, the mark VOGUE in numerous Member States for goods included in Class 3, without having the intention of using them but with the sole aim of avoiding consequences of non-use. The Court rejected the evidence submitted, namely that , the withdrawal of the opposition before the Spanish Patent and Trademark Office does not constitute evidence of non-use of the contested mark, which would at all events be insufficient in itself to adduce evidence of the intervener’s bad faith.