• Dr. Mohan Dewan

 Can the name of a magazine be used by an institute teaching Fashion Technology? This question was answered in affirmative by the Karnataka High Court.

Recently, the Karnataka High Court set aside an Order of a Trial Court with the observation that, the nature of goods/services of the contested parties using the word “Vogue” were different. The class of purchasers of the magazine and the students who were enrolled at the Fashion Technology institute would be persons who because of their education and intelligence were likely to exercise a greater degree of care.

The issue arose in a suit for infringement and passing off filed by Advance Magazine Publishers, Inc. (hereinafter referred to as “Vogue Magazine”) against the Vogue Institute of Fashion Technology (hereinafter referred to as “Vogue Institute”) for using their registered trademark (Number 315672B in Class 16) “Vogue” unauthorisedly. The Trial Court had passed an order of permanent injunction restraining the Vogue Institute from using the trademark ‘Vogue’ as a part of their name and directed them to render accounts of profits to the Vogue Magazine for having used the trademark ‘Vogue’ as part of their name.

If this Order had remained, it would have been a death knell for the Institute.

Vogue Institute was aggrieved by the Order of the Trial Court and filed an appeal before the Karnataka High Court submitting that they were in the service of providing training in Fashion Technology and running the Institution under the name 'Vogue Institute of Fashion Technology'. On the other hand, the Vogue Magazine was a publication and the areas of service on one hand and products on the other were distinctly different and thus, no infringement or passing off could be made out.

The High Court observed that, “The plaintiff publishes the magazine pertaining to fashion and is internationally reputed. The trademark registered is under Class 16 as mentioned above. The defendants are running an institution under the name 'Vogue Institute of Fashion Technology' and it is an institution pertaining to Fashion Technology. Admittedly, the defendants/appellants are not publishing a magazine called 'VOGUE' but are running an institution. Thus, there is no infringement of trademark.”

The Karnataka High Court allowed the appeal and held that the Trial Court’s conclusion was flawed. The Court, observed while passing the order that, the test of ‘average intelligence’ was erroneously applied by the Trial Court while deciding the issue of deception/confusion. The Court further observed that, although the Vogue Magazine was globally famous as a fashion magazine it was not subscribed or read by large sections of the general public and was thus known by a limited section of society. The only aspect to be taken into consideration was whether the mark in question was likely to deceive or cause confusion in the minds of the general public who may avail of the defendants' services as if they were the plaintiff's or in some way, they would assume that the, defendants were associated with the plaintiffs.

The specific observations of the Court have been reproduced here to highlight the thinking which led to the distinction between, an Institute teaching Fashion Technology on one hand and a Fashion Magazine on the other. “The magazine which is published by the plaintiff is a fashion magazine which is not subscribed or read by large section of the general public. It is used by that limited section of the Society who are generally aware about fashion. The kind of purchasers who subscribe to the magazine of the plaintiff are likely to know that the plaintiff's magazine is involved only in the business of publishing magazines and not running any institute. Similarly, the persons who join the defendants' institute are those who have knowledge about the fashion world and taking into consideration the degree of care that an average student is likely to exercise, it is highly unlikely that they would confuse the institute of the defendants as one belonging to the plaintiff.”


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