Trade mark law, case Sp. 332/07

November 8th, 2008, Tomasz Rychlicki

The Polish Patent Office in its recent decision 18 September 2008 case no Sp. 332/07 of has partially invalidated VOGUE trade mark registered for Advance Magazine Publishers Inc. from USA. The invalidation proceedings were started by Polish entrepreneur Mariusz Lipski from Szczecin, performing his business under the firm “Vogue”. Mr Lipski applied for invalidation of VOGUE trade mark R-68616 in class 18 (leather and imitations of leather, and goods made of these materials) and in class 25 (clothing including footwear, elastic-sides and slippers). Mr Lipski based his legitimate interest on the fact that he was charged in criminal proceedings for the use of VOGUE trade mark. Mr. Lipski has also based his request on constitutional provsion of freedom of economic activity. On 16 June 2008 after filing a request for invalidation of the right of protection Mr. Lipski has also applied for trade mark protection for VOGUE sign Z-342213 in class 25 for goods such as clothing for gymnastics, waterproof clothing, clothing made of leather imitation, garments, household slippers, football boots, beach shoes, jackets, coats, etc.

Advance Magazine Publishers’ representative claimed that VOGUE trademark is used in class 18 and 25 by publishing a magazine with fashion regarding those products. However he also acknowledged the fact that VOGUE magazine is not published in Polish language.

The PPO took into account the request for invalidation and ruled that VOUGE trademark should be partially invalidated. The PPO held that publishing of a fashion magazine can not be an evidence of the use of the mark for such goods as clothing, shoes, or products made of leather. It has to be demonstrated and proved that a mark was placed on the goods and introduced on the Polish market.