Delhi District Court
Advance Magazine Publishers.Inc vs Bombay Rayon Fashions Limited And Ors on 5 June, 2025
IN THE COURT OF DJ (COMMERCIAL COURT)-11 (CENTRAL): TIS
HAZARI COURTS, DELHI
PRESIDED BY: SH. SANJAY SHARMA-II, DHJS
TM No. 3/2020
CNR No.: DLCT01-006789-2020
Advance Magazine Publishers, Inc.
1, World Trade Centre, F-128
New York, NY 10007 (U.S.A.)
Through: Mr. Amrit Bardhan, Constituted Attorney
..... Plaintiff
VERSUS
1. Bombay Rayon Fashions Limited
DLH Mangalmurti Building, 3rd Floor
Plot No. 82/29, Linking Road
Santacruz (West), Mumbai - 400 054
Also at:
D-1st Floor, Oberoi Gardens Estate,
Chandivali Farms Road, Chandivali,
Andheri (East), Mumbai - 400 072,
Maharashtra
2. Deepak Bindal
S.C.R.K. & Co.
257, Katra Pyare Lal,
Chandni Chowk, Delhi - 110006
3. M/s. Kapoor Trading Company
314, Naya Katra, Chandni Chowk, Digitally signed
Delhi - 110006 by SANJAY
SANJAY SHARMA ..... Defendants
SHARMA Date:
2025.06.10
15:23:01 +0530
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Date of Institution : 22.03.2017
Date of Arguments : 22.11.2024
Date of Judgment : 05.06.2025
JUDGMENT
NATURE AND PURPOSE OF THE SUIT:
1. The plaintiff instituted a suit, through its constituted attorney Mr. Amrit Bardhan, for the reliefs, as under:
"(a) A decree of permanent injunction restraining the defendants from infringing or passing off its trademark 'VOGUE' as part of their trademark 'LINEN VOGUE La Classe / LINEN VOGUE' and domain name 'http://www.linenvogue.com' or using any other deceptively similar trademark in relation to their goods / services;
(b) A direction to the defendants to deliver their goods and other articles bearing the trademark 'LINEN VOGUE La Classe / LINEN VOGUE';
(c) A direction to the defendant No. 1 to cancel or transfer the domain name 'http://www.linenvogue.com' in favour of the plaintiff;
(d) A direction to the defendant No. 1 to withdraw the trademark application No. 2573597 and 3081013 in Class 24 and any other application for registration of the mark 'LINEN VOGUE La Classe / LINEN VOGUE', or any other mark deceptively similar mark to the plaintiff's mark 'VOGUE';
(e) An order regarding inspection of the accounts of the defendants to ascertain the profits made by them with the use of the impugned mark and damages to the extent of Rs.
45,00,000/-; and
(f) Costs of the suit."
Digitally signed by SANJAY SANJAY SHARMA
SHARMA Date:
2025.06.10
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THE PLAINT:
2. The plaintiff is a corporation organized and existing under the laws of the State of New York, United States of America. The plaintiff alongwith its affiliates is carrying an established international business inter alia of publication and distribution of magazines and journals, and other related internet websites.
3. The defendant No. 1 is a textile company engaged in manufacturing and retail of 'fabrics' and 'garments'. The defendant No. 2 is an authorized distributor of the defendant No. 1. The defendant No. 3 is a retailer and selling the products of the defendant No. 1 under the impugned mark.
4. The plaintiff is a proprietor of world famous / well- known trademark 'VOGUE' in respect of fashion magazine. The trademark 'VOGUE' is used in respect of fashion magazine since 1892, founded as a bi-monthly publication by 'Mr. Arthur Baldwine Turnure'.
5. The said magazine sold under the trademark 'VOGUE' is a fashion and lifestyle magazine. It is published in several countries by 'Conde Nast Publications', a wholly owned division of the plaintiff. The said magazine addresses topics of fashion, life and design, and is famous as a presenter of images of high fashion and high society. The said magazine also publishes articles on art, culture, politics and ideas. The said magazine makes fashion model as celebrity. Book critic Caroline Weber described 'VOGUE' in 'The New York Times' in December, 2006 as 'The world's most influential fashion magazine'. The customers of the said magazine include fashion conscious people, particularly, of the age group ranging from 19 years to 45 years.
Digitally signed SANJAY by SANJAY
SHARMA
SHARMA Date: 2025.06.10
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6. In 1909, after death of Mr. Turnure, ' Conde Nast' taken over the said magazine. In 1973, 'VOGUE' became a monthly publication. It underwent extensive editorial and stylistic changes to respond to changes in lifestyle of its customers and focused on new and more accessible ideas of fashion for a wider audience.
7. In 1992, the plaintiff celebrated 100 years of the magazine 'VOGUE' in New York, USA. A 100th Anniversary Special Issue of the magazine was released at 'The New York Public Library'. 'VOGUE' magazine has become a fashion icon. It is used as a medium of advertisement by big companies and manufacturers of fashion apparels and quality goods. The nature of the magazine and articles published in it relate to fashion and qualities of the people and goods in higher strata of society. The principle feature of the magazine is portrayal of the current and future fashion. The plaintiff has its photographic studio where the models are photographed under direction and supervision of magazine's fashion editors. The said models are known as 'VOGUE' models. The said magazine shapes career of fashion models because of prestige and reputation accorded to the trademark 'VOGUE'. The said magazine places special emphasis on its cover page models who are chosen for their beauty and timeliness. The colored photographs of attractive models on cover page points the general character of magazine and highlights the fashion trend for the season emphasized in each issue.
8. The plaintiff's wholly owned subsidiaries in various countries i.e. UK, Germany, Italy, India, Japan, Spain, Russia and France publish a magazine under the trademark 'VOGUE'. The plaintiff is operating 'VOGUE' websites in many countries including USA, UK, Italy, Germany, France, Spain, China, Russia, Japan, Taiwan, Mexico, Digitally signed by SANJAY Korea, Australia, India etc. SANJAY SHARMA SHARMA Date:
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9. The said magazine under the trademark 'VOGUE' is sold / circulated in around 145 countries including India. The said magazine is available / sold in India, at least, since, 1990. It has established enormous and enviable reputation and goodwill in India among other countries. The circulation figures reflect that the said magazine touched lives of people of all the continents of the world except Antarctica.
10. The presence of the plaintiff in India can be stated to be since 1930 when 'Princess Karam of Kapurthala' was photographed and featured in US Edition of 'VOGUE' magazine. Many years later, 'Maharani Gayatri Devi' was featured in 'VOGUE' magazine and was listed as one of the most beautiful women in the world. The imprint of the magazine on cultural fabric of India is in existence since 75 years. The brand 'VOGUE' enjoys a reputation in India as a global brand among fashion conscious people.
11. While Indian Edition of 'VOGUE' magazine was launched in the year 2007, the International Editions of the said magazine were known to relevant public in India and the said magazine contained pictures and photographs of locals in India, at least, since 1937. The reputation of 'VOGUE' magazine amongst relevant sections of the public including India established much prior to launch of the Indian Edition of the said magazine. The plaintiff is internationally well-known and is the registered proprietor of the trademark 'VOGUE' in around 145 countries including India.
Digitally signed by SANJAY SANJAY SHARMA
SHARMA Date:
2025.06.10
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12. The trademark 'VOGUE' is registered in India since the year 1976 in relation to publications as well as other goods / services, as under:
Trade Mark Class Registration Journal Date of Number Number Registration VOGUE 16 315672B 684 11/06/1976 VOGUE 41 1302833 1328 16/08/2004 VOGUE GIRL 9 1080289 1327 12/02/2002 VOGUE GIRL 16 1080290 Mega-6 12/02/2002 TEEN VOGUE 41 1302832 1328 16/08/2004 VOGUE 38 1580019 1425 31/03/2010 VOGUE TV 38 1580020 1425 31/03/2010 VOGUE 42 2153908 1741 25/09/2016 VOGUE INDIA 42 1601198 1441 07/02/2011 VOGUE LIVING 16 1136931 1339 30/09/2002 VOGUE INDIA 16 1601195 1449 13/09/2007 VOGUE INDIA 16 1601196 1649 13/09/2007 MISS VOGUE 16 2945286 1733 20/04/2015 VOGUE FASHION 35 2302476 1751 20/03/2012 FUND - WHO IS ON NEXT VOGUETTE 35 2787429 1783 30/06/2017 VOGUE 41 1580021 1425 31/03/2010 VOGUE 41 2025572 1508 09/04/2012 VOGUEPEDIA 41 2174324 1555 28/06/2013 VOGUE FASHION 41 2302475 1582 16/08/2016 FUND VOGUE FASHION 41 2302478 1582 20/01/2017 FUND - WHO IS ON NEXT VOGUE(DEVICE) 41 2404663 1698 14/03/2016 VOGUE CLUB & 41 2463843 1607 26/03/2014 CAFE Digitally signed by SANJAY SANJAY SHARMA SHARMA Date:
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13. The registrations of the said marks are renewed from time to time and they are valid and subsisting. In view of the aforesaid registrations, the plaintiff has the exclusive right to use the trademark 'VOGUE' in relation to goods and services for which the trademark is registered.
14. 'VOGUE' magazine is also used as a medium for advertisement of beauty and cosmetic products by eminent companies, international designers and other manufacturers of beauty products. The said magazine often publishes a 'Beauty Report' section containing beauty trends of various times and seasons and impart tips to be in line with these trends. It deals with fashion trends for the season under 'VOGUE SHOPS' qua variety of goods, namely, menswear and womenswear, dresses, gowns, watches, jewellery, perfumes, cosmetics, jackets, bags and other accessories. The very fabric of 'VOGUE' magazine and literature published therein relate to fashion, fashion related events, lifestyle of socialites and elite influential people of the society. The said magazine contains a section 'VOGUE LIVING' featuring latest trends in home decoration, design and home furnishing.
15. The plaintiff is carrying its business in India through its Indian subsidiary, 'Conde Nast Private Limited' which is publishing a magazine under the trademark 'VOGUE INDIA'. The first issue of Indian Edition of the magazine 'VOGUE INDIA' (October, 2007) was launched in India on 21.09.2007 with Bollywood actresses, Bipasha Basu and Priyanka Chopra and International supermodel Gemma Ward on cover page. The launch party was attended by celebrities Digitally of signed by fashion world at Umaid Bhawan Palace in Jodhpur. SANJAY SANJAY SHARMA SHARMA Date:
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16. Rohit Bal stated 'Its a great feeling for a designer to have VOGUE in India'. Arjun Rampal stated 'The guru of all fashion magazines is here in India and I think it is a great moment '. Kalyani Chawla, Ambassador of Dior stated 'It is for the first time they've gone into a country where they've used such a huge amount of local influence, it's like the INDIA VOGUE, because even in Russia or China where there are very strong markets and designers, but it's never had this local flavor and that makes us very proud because this is going to 60 countries across the globe '. Priety Zinta stated 'The fashion bible'. Meher Jasia, a former model stated 'When I was a model, I used to learn from VOGUE, it is a teaching platform for anyone who has anything to do with fashion '. Milind Soman stated 'VOGUE is epitome of everything fashionable and stylish in world'.
17. Prior to launch of the Indian Edition of the said magazine in 2007; 'VOGUE' magazine was imported in India. The circulation of American Edition of 'VOGUE' magazine in India is, as under:
YEAR SUBSCRIPTIONS NEWS STANDS
2000 25 262
2001 21 270
2002 5 328
2003 21 350
2004 27 287
2005 33 559
2006 43 609
2007 45 575
2008 34 204
2009 27 258
2010 22 235
2011 32 231
2012 29 293
2013 36 225
2014 29 134
2015 30 175
Digitally signed by
SANJAY SANJAY SHARMA
SHARMA Date: 2025.06.10
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18. Since its launch, Indian Edition of 'VOGUE' magazine reached to an affluent audience of over 3 million and total circulation of 1,40,000/- copies with a combined readership of 7,00,000 readers. 'VOGUE INDIA' magazine is considered as 'an opinion leader' and 'trendsetter' . It provides its readers best of global and Indian fashion, beauty, people, luxury, travel, parties and culture. It is considered as women's premium lifestyle content platform in the digital space.
19. In 2009, a record 80,000 issues of 'VOGUE INDIA' were sold in New Delhi alone. The sales figures for 'VOGUE INDIA' magazine since its launch is, as under:
YEAR SALES (Rs.)
2007 9,84,26,755
2008 30,17,25,185
2009 24,04,81,938
2010 29,97,07,187
2011 36,90,81,614
2012 40,34,17,439
2013 43,47,48,168
2014 47,72,08,620
2015 45,32,21,362
20. The plaintiff incurred considerable expenditure in promotion and advertisement of its magazine under the trademark 'VOGUE'. As a result of such extensive sales, circulation, advertisements and excellent quality of articles & advertisements published therein, the trademark 'VOGUE' has become a well-known trademark under Section 2(1)(zg) of ' The Trade Marks Act, 1999''. It has acquired a secondary meaning across globe including India and associated with the plaintiff and its affiliate / subsidiariesDigitally alone.signed by SANJAY SANJAY SHARMA TM No. 3/2020 SHARMA Advance Magazine Publishers, Inc. vs. Bombay Rayon Fashions Ltd. & Ors.
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21. The trademark 'VOGUE' has acquired a reputation of being a sophisticated guide, high fashion, travel and art in the world. The trademark 'VOGUE' has already been included in the list of well- known trademarks by the Registrar of Trade Marks.
22. The local website of 'VOGUE INDIA' magazine i.e. www.Vogue.in is visited by 1,00,000 unique visitors per month. In February, 2016, the plaintiff had above 2,75,000 monthly readership. The popularity and importance of the 'VOGUE INDIA' magazine can be ascertained from the fact that it has about 11,30,000 followers on Facebook, above 4,07,300 followers on Twitter, above 4,56,000 followers on Instagram and above 61,900 followers on Youtube. The said website displays designers, upcoming fashion trends and designer brands and thereby, providing opportunity to visitors to purchase the said products. The said magazine has a section 'IN VOGUE' featuring current trend in lifestyle, art and culture. The said magazine has a section 'VOGUE SHOPS' showcasing fashion trends for the season for a variety of goods including watches, jewellery, perfumes, cosmetics and leather bags.
23. In early 1997, the plaintiff got conducted a country-wide survey for assessment and evaluation of the awareness level of the magazine and the trademark 'VOGUE' in India. In Phase I, advertisements were given in two newspapers having high readership in North India and South India i.e. 'The Times of India' & 'The Hindu' wherein persons who read or heard the 'VOGUE' magazine were called to contact the survey agency. Digitally signed by SANJAY SHARMA SANJAY Date:
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24. The readers who responded to the said advertisements were mailed questionnaires alongwith prepaid postal envelopes. The response was received from 20 States and Union Territories constituting over 60% of the total States and Union Territories in India. As many as 83% of the respondents had heard about the magazine 'VOGUE'. In Phase II, personal interviews were conducted in 80 Boutiques, 95 Bookshops and Beauty Parlours in four Metropolitan Cities i.e. Delhi, Bombay, Calcutta and Madras, and Bangalore. 51.6% of the Bookshops revealed that they were regular buyers and sellers of the magazine 'VOGUE' and 20% of the Bookshops had awareness of the 'VOGUE' magazine prior to 1975. The said data was analyzed. In Phase III, 40 affidavits were collected from the respondents in 5 cities. The survey report was submitted on 01.02.1997. The finding of survey report is as under:
(a) The 'VOGUE' magazine is known across most of the States and Union Territories in India;
(b) The awareness of the magazine is highest in geographical areas of higher per capita income and around the major metropolitan cities and the big towns;
(c) The magazine is popular among fashion conscious people in the upper and middle strata of society;
(d) Respondents were aware of 'VOGUE' magazine being published in languages other than English; and
(e) The general popularity and awareness of the 'VOGUE' magazine, as stated by respondents, points to a very strong franchise of the 'VOGUE' magazine in India even prior to 1985.
25. The plaintiff has been protecting the trademark 'VOGUE' across the world. It succeeded in stopping its misuse by the traders intending to trade upon goodwill and reputation of the trademark Digitally signed 'VOGUE'. SANJAY by SANJAY SHARMA SHARMA Date: 2025.06.10 15:29:17 +0530 TM No. 3/2020 Advance Magazine Publishers, Inc. vs. Bombay Rayon Fashions Ltd. & Ors. Page No. 11 of 285
26. The plaintiff is granted injunctions by the Indian Courts and International Courts. The 'Marketing' magazine, a leading advertising, marketing and media publication having world-wide circulation, branded 'VOGUE' as one of the most formidable brands of the history in its cover story of May, 2008. The 'R.O.B.' magazine, a recognized Canadian business magazine in partnership with 'The London Financial Times' ranked the 'VOGUE' as 17th amongst top 50 logos of the world in its November, 2000 issue under the title ' Who has the world's best logo' as a result of international panel of Judges commissioned to decide the greatest logos of all times. The 'VOGUE' is honoured for overall excellence in magazine photography by 'The American Society of Magazine Editor's National Magazine Awards in 2012'. The Ad Age awarded the plaintiff with the coveted award of 'Magazine of the Year' in 2012. In 2015, the 'VOGUE' was named as 'Magazine of the Year' in the annual 'National Magazine Awards Ceremony' to honour its excellence in print and digital media and areas such as events and branded content.
27. The trademark 'VOGUE' is held as well-known trademark for a fashion magazine in the cases decided by US Courts, as under:
"(i) The Conde Nast Publications Inc. vs. VOGUE School of Fashion Model, 94 USPQ 101;
(ii) The Conde Nast Publications Inc. vs. American Greetings Corporation, 141 USPQ 249;
(iii) The Conde Nast Publications Inc. vs. American Greetings Corporation, 153 USPQ 83;
(iv) The Conde Nast Publications Inc. vs. VOGUE Travel Inc., 205 USPQ 579; and
(v) Advance Magazine International Inc. vs. VOGUE Digitally signed International, decided on 12.12.2000." SANJAY by SANJAY SHARMA SHARMA Date: 2025.06.10 15:29:25 +0530 TM No. 3/2020 Advance Magazine Publishers, Inc. vs. Bombay Rayon Fashions Ltd. & Ors. Page No. 12 of 285
28. The judgments passed by the High Courts and District Courts in India are, as under:
"(i) Advance Magazine Publishers Inc. & Anr. vs. Arvind Mills Pvt. Ltd., Civil Suit No. 565/2009 decided on 24.03.2009;
(ii) Advance Magazine Publishers Inc. vs. Shakeel Ahmed, Civil Suit No. 2487/2008 decided on 12.04.2012;
(iii) Advance Magazine Publishers Inc. & Anr. vs. Sabah M. Ambazhathingal & Ors., Suit (L) No. 510/2016 decided on 06.05.2016;
(iv) Advance Magazine Publishers Inc. vs. Rakhi Jain & Ors., Civil Suit No. 09/2013;
(v) Advance Magazine Publishers Inc. vs. Mr. M.M. Kariappa & Anr., Civil Suit No. 2934/1999;
(vi) Advance Magazine Publishers Inc. vs. Sunita Bhagat, Civil Suit No. 357/1998;
(vii) Advance Magazine Publishers Inc. vs. VOGUE Online Trading India Private Limited, Civil Suit No. 139/2012;
(viii) Advance Magazine Publishers Inc. vs. Vineet Chopra, Civil Suit No. 1969/1999;
(ix) Advance Magazine Publishers Inc. vs. Nature's Essence Private Limited; and
(x) Advance Magazine Publishers Inc. vs. Suraj Chokhani & Ors., TM No. 8/2017."
29. Besides the aforesaid judgments, the various District Courts of India have passed judgments / decrees in favour of the plaintiff and the trademark 'VOGUE'.
30. In February, 2016, the plaintiff came to know about two applications filed by the defendant No. 1 for registration of the trademark 'LINEN VOGUE La Classe' (In short 'the impugned mark'), vide Application No. 2573597 dated 31.07.2013 & Application No. 3081013 dated 19.10.2015 in Class 24 for goods such as ' textile piece goods including suitings, shirtings, textile materials, sarees, dress materials, dhotis, furnishing fabrics and cotton fabrics ' wherein the defendant No. 1 claimed use of the impugned mark since 01.07.2013.
SANJAY Digitally signed by SANJAY SHARMA SHARMA 15:29:40 +0530 Date: 2025.06.10 TM No. 3/2020 Advance Magazine Publishers, Inc. vs. Bombay Rayon Fashions Ltd. & Ors. Page No. 13 of 285
31. The Registrar of Trade Marks rightly objected the registration of the impugned mark. The plaintiff denied the user as claimed by the defendant No. 1 in the said applications.
32. On enquiry conducted by the plaintiff, it revealed that the defendant No. 1 is using / promoting the entire trademark 'VOGUE' as its trademark 'LINEN VOGUE' or 'LINEN VOGUE La Classe' and as a part of its domain name http://www.linenvogue.com. The said domain name was created on 20.12.2013. The said domain was not in operation when the plaintiff acquired knowledge of the use of the impugned mark by the defendant No. 1. It further revealed that the defendant No. 1 was actively using the impugned mark on third-party websites and social media websites targeting the consumers in India.
33. The plaintiff sent a 'cease and desist notice', vide letter dated 26.02.2016, whereby it requested the defendant No. 1 to stop the use of the mark 'VOGUE'. However, the defendant No. 1 did not respond despite receipt of the said notice. Thereafter, the plaintiff sent a reminder to the defendant No. 1, vide letter dated 18.03.2016. The defendant No. 1 acknowledged the receipt of the said letters, vide letter dated 23.03.2016, wherein it stated that its counsel would reply them within 15 days. The defendant No. 1, through its counsel, vide reply dated 29.03.2016, refused to honour the just demand of the plaintiff. However, the defendant No. 1 proposed that it would only use the mark 'VOGUE' under a composite style label with the word 'LINEN' being the prominent feature and prefixing it. The defendant No. 1 had assured the plaintiff that it would not use the mark 'VOGUE' in relation to any fashion magazine and wouldDigitally restrict its signed by SANJAY use and registration to Class 24. SANJAY SHARMA Date:
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34. The plaintiff, vide letter dated 23.06.2016, expressed willingness to accept proposal of the defendant No. 1 without prejudice to its rights and contentions, if an undertaking is executed by the defendant No. 1 that it shall amend the mark as 'LINENVOGUE' and use it alongwith 'flower device' and restrict its use to goods under Class 24 only. The defendant No. 1 did not respond the said letter. The plaintiff sent another letter dated 13.07.2016 reiterating its proposal. The defendant No. 1, vide letter dated 19.07.2016, declined to the terms proposed by the plaintiff. The plaintiff, vide letter dated 11.08.2016, asked the defendant No. 1 to stop use of the impugned mark. Finding no response, the plaintiff sent reminder dated 09.09.2016. The defendant No. 1, vide letter dated 13.09.2016, intimated the plaintiff that it was not willing to give up the use of the impugned mark.
35. In January, 2017, the defendant No. 1 started operating website http://www.linenvogue.com/. On perusal of the contents of the said website, the plaintiff learned that the defendant No. 1 published magazine-styled catalogues 'Lookbooks' for the year 2014 to 2016 under the category 'La Classe'. The defendant No. 1 engaged a company Co.Lab India for creating 'Lookbooks' in year 2015 itself. The defendants had always represented that they will not use the impugned mark in relation to any fashion magazine and restrict the use and registration to the goods and the class for which they filed their trademark applications. The defendants organized photo-shoots in collaboration with designers, models and fashion photographers and published them on the said website. The defendant No. 1 featured fashion designers on the said website to misguide the generalDigitally public. signed SANJAY SHARMAby SANJAY SHARMA Date: 2025.06.10 15:29:54 +0530 TM No. 3/2020 Advance Magazine Publishers, Inc. vs. Bombay Rayon Fashions Ltd. & Ors. Page No. 15 of 285
36. The lifestyle and home furnishing products sold by the defendant No. 1 are directly related to the products that regularly feature in 'VOGUE LIVING' section of the magazine. The defendant No. 1 repeatedly used the phrase 'IN VOGUE' throughout the aforementioned 'Lookbooks' and featured 'IN VOGUE' section on the said website containing latest news and photo-shoots organized by it. The magazine 'VOGUE' has always carried a section 'IN VOGUE' featuring current trends in lifestyle, art and culture. The defendants have not only adopted the impugned mark with a dishonest intention but they have also acted in a deceitful manner in its communication with the plaintiff.
37. The magazine 'VOGUE' is a catalogue of fashion trends inter alia showcasing lifestyle fashion. The defendants are actively promoting their products and services including lifestyle products under the impugned mark through 'Lookbooks' and photo-shoots. The defendants are dealing with the same customers and traders, though the medium may be different.
38. The defendant No. 1 is promoting its goods and / or services as 'High-end, niche, designer fabrics of Linen Vogue ' and 'Finest designers ensemble Linen Vogue to create the international lineage of fashion. Colour, gleam and lustre..... '. The defendant No. 1 is asserting itself to be ' one of the most sought after name in the Indian as well as international fashion markets '. The trade connections and the customer base of the parties are identical. There is similarity and / or connection between the goods and / or services of the defendants which includes designer fashion lifestyle apparels and the Digitally signed by SANJAY plaintiff's fashion magazine. SANJAY SHARMA SHARMA Date:
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39. The defendant's customers would be the persons who would look for fashion guidance in the plaintiff's magazine and may also abide by it and they may be lured into the purchasing the defendant's products under a notion that the goods sold under the impugned mark are in some manner endorsed by the plaintiff's magazine. The use of the impugned mark is not only likely to dilute the mark 'VOGUE' but it is also detrimental to the distinctive character and repute of the mark 'VOGUE'.
40. The defendants are using the impugned mark and domain name to trade upon enormous reputation attached to trademark and trade name 'VOGUE'. The use of the mark / word 'VOGUE' as a prominent part of the impugned mark is visually, phonetically and deceptively similar and / or identical to the trademark 'VOGUE'. The defendants have adopted the impugned mark to deceive and confuse the public to give an impression that goods and / or services of the defendants are associated with or is that of the plaintiff. The plaintiff has not permitted the defendants to use the mark 'VOGUE' in any manner in relation to their goods and / or services. Such use of the mark 'VOGUE' is violation of the plaintiff's right in respect of the said mark and is infringement of the said mark under Section 29(1) of ' The Trade Marks Act, 1999'. The plaintiff has not permitted the defendants to use the said mark and domain name in relation to similar and / or identical goods and / or services and as such, the defendants have infringed the said mark in view of Section 29(2) of ' The Trade Marks Act, 1999'. The said mark has a reputation in India and the defendants are taking unfair advantage or acting detrimental to distinctive character or repute of the said mark with unauthorized use which is an infringement under Section 29(4) of 'The Trade Marks Act, Digitally 1999'.signed by SANJAY SANJAY SHARMA SHARMA Date: 2025.06.10 15:30:09 +0530 TM No. 3/2020 Advance Magazine Publishers, Inc. vs. Bombay Rayon Fashions Ltd. & Ors. Page No. 17 of 285
41. The defendants are passing off their goods and / or services as that of the plaintiff by making use of an identical and / or deceptively similar trademark in respect of its goods and / or services. Hence, the plaintiff filed the suit.
THE WRITTEN STATEMENT:
42. The defendants contended that the plaintiff has no cause of action against them. There is no similarity in the trademark of the plaintiff and the impugned mark. The impugned mark is a combination of four words i.e. 'LINEN, VOGUE, La and Classe'. In addition, the impugned mark contains a flower device. The word 'VOGUE' is a dictionary world meaning 'the prevailing fashion or style at a particular time'. The said word refers to something which is ' popular' and / or 'fashionable'. 'VOGUE' is an ordinary English word. It is a descriptive word and therefore, it has lowest potential for protection. A descriptive word, by reason of its exclusive and extensive use by a trader, may acquire a secondary meaning and capable of distinguishing the goods of that trader. However, that is not the case here. If a trader dealing with 'fashion' ware or publications adopts the word 'fashion' or its synonym 'VOGUE' to describe his product, he must be taken to adopt such word with knowledge that other traders dealing in fashion ware or products are also likely to make legitimate use of the word. The defendant No. 1 is a retailer of 'linen fabrics' and it is entitled to describe its stores and goods as 'fashionable' or 'trendy fabrics', which is 'in vogue'. The defendant No. 1 is using 'VOGUE' with word 'LINEN' and 'La Classe'. 'La Classe' is a French term used to express 'Class'. The use of the word 'VOGUE' in the impugned trademark classysigned alongwith 'LINEN' and 'La Classe' is a description of 'Digitally ' and by SANJAY 'fashionable' linen fabric. SANJAY SHARMA SHARMA Date: 2025.06.10 15:30:16 +0530 TM No. 3/2020 Advance Magazine Publishers, Inc. vs. Bombay Rayon Fashions Ltd. & Ors. Page No. 18 of 285
43. The defendants contended that a trader adopting a descriptive / generic word as a trademark runs a risk of being used by other traders who are equally entitled to use descriptive / generic words. Any trader who claims such monopoly or exclusivity is under obligation to establish its use as exclusive to itself.
44. There are several third parties using the mark 'VOGUE' stand-alone or in conjunction with other words in relation to ' fashion garments' and 'accessories' extensively in India are, as under:
MARK TRADERS / USERS 18's VOGUE Men's clothing store situated in Sirsa, Haryana HAVOGUE Clothing brand RJ VOGUE Engaged in sale of Indo-western Dresses,
western dresses, designer suits, designer kurties, wedding dresses etc. BAREVOGUE In relation to garments COWBOY MEN'S VOGUE In relation to garments, Ernakulam DARZI VOGUE STUDIO In relation to designer garments and tailoring services, Panchkula EAGLE VOGUE In relation to garments GZALVOGUE In relation to garments, Mumbai IN VOGUE Nails Lajpat Nagar INVOGUE CASUALS In relation to fabrics, Bandra, Mumbai JAZZY VOGUE In relation to garments PK VOGUE In relation to designer garments POSHAK VOGUE In relation to garments PROVOGUE In relation to garments THE VOGUE NATION In relation to garments and accessories, New Delhi VOGUE INN In relation to garments Digitally signed by SANJAY SANJAY SHARMA SHARMA Date:
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45. The third parties using the mark 'VOGUE' stand-alone or in conjunction with other words in relation to 'garments' and 'accessories' extensively outside India are, as under:
MARK TRADERS / USERS
URBAN VOGUE In relation to Women's clothing store in
Tauranga, New Zealand
VOGUE LINE In relation to fashion and accessories, Korea
AE VOGUE In relation to sunglasses
BABY VOGUE BOUTIQUE In relation to children's clothing, Kingston, Pennsylvania B-VOGUE In relation to salon services, Independence, MO LADY VOGUE In relation to accessories: Bixby, OK VOGUE BOULEVARD The Online Fashion Store
46. The mark 'VVOWE WOMEN IN VOGUE' was registered in Class 16 on 07.05.2009 in respect of fountain pens and stationery articles. There are several applications pending for registration of marks including the word 'VOGUE', as under:
S. No. Mark Appl. No. Date of Goods
Application /
User Claim
1. EN-VOGUE 1256293 17/12/2003 Fountain pens and
stationery articles
2. VOGUE SCARVES & 1444170 26/03/2006 Books, newspapers,
STOLES magazines and stationery
3. MOHVOGUE 2129705 29/11/2010 Catalogue of the garments
4. APSARA VOGUE 2970498 Proposed to Pencils of all kinds
be used
5. ZINGLETTE VOGUE 2973229 Proposed to Paper, cardboard and
be used stationery
6. VOGUE 3145377 01/01/2014 Pen and stationery
7. APSARA VOGUE 3208064 Proposed to Pencils
EXTRA DARK be used
PENCILS
8. APSARA VOGUE 3208065 Proposed to Pencils
EXTRA DARK be used
PENCILS
SANJAY Digitally signed by
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47. There are several third parties claiming to be proprietors of 'VOGUE' formative marks in relation to fabrics and textiles in Class 24, as under:
S. No. Mark Appl. No. User Claim Goods
1. ENVOGUE (LABEL) 1319795 10/01/2004 Textiles piece goods
including suitings &
shirtings
2. PROVOGUE 1357599 17/05/2005 Textiles & textile piece
(LABEL) goods, bed and table
covers
3. VVOWE WOMEN IN 1815856 26/03/2003 Designer wear, dress
VOGUE materials, bed and table
covers
4. YOVOGUE 3285059 02/06/2013 Textile, fabrics,
shirting, suiting and
dress material
5. MOHVOGUE 2129706 29/11/2010 Sarees
48. The applications filed by the third parties for registration of mark including 'VOGUE' in Class 24 is, as under:
S. No. Mark Appl. No. User Claim Goods
1. VOGUE 458825 20/08/1986 Blankets and shawls
2. VOGUE IMPEX 872123 01/01/1989 Textile piece goods,
fabrics and sarees
3. RK GREEN VOGUE 2105448 17/01/2011 Sarees, dress materials
and textile piece goods
4. VOGUE 2109311 03/03/2011 Textiles & textile goods
BOULEVARD
5. MOHVOGUE 2129705 29/11/2010 Sarees
6. VOGUE 2343991 06/06/2011 Bedsheet and bed cover
7. RACHANA FABRICS 2406883 10/08/1989 Textile goods and
IN VOGUE fabrics
8. VOGUE 2409009 03/05/2011 Fabrics, fabrics in
Merino Wool &
Polyster, suiting and
shirting
9. VOGUERAW 2555342 27/06/2013 Textiles
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10. RENDEZ VOGUE 2633568 01/04/2013 Textile and textile piece goods, suiting & shirting, cloth for dress material, handkerchief, tissues and cut piece printed clothes
11. LA VOGUETTE 2639542 09/12/2013 Textiles and textile goods, bed and table covers
12. VOGUE 2936539 22/03/2015 Sofa cover, curtains, FURNISHING bedsheets, mattress and towels
13. EN VOGUE 2995238 26/06/2015 Dress materials & sarees
14. VOGUE REPUBLIC 3155238 01/04/1997 Beding, bed-sheet, curtains, suiting, shirting, textile and textile goods
15. PK VOGUE 3182081 01/07/2015 Mink blankets, woolen blankets and bed cover
16. OCCULT VOGUE 3231978 01/04/2016 Fabrics, textile piece goods, sarees, dress material, blankets, shawls, linen, furnishing fabrics
17. WOMEN VOGUE 3362652 14/09/2016 Dress materials, grey cloth, suiting, shirting
49. There are several third parties claiming to be proprietors of 'VOGUE' in relation to garments and apparels in Class 25, as under:
S. No. Mark Appl. No. User Claim / Goods
Date of
Application
1. VOGUE 290449 28/08/1973 Ties for wear
2. VOGUE 692300 01/08/1973 Ties for wear
3. LEVOGUE 1045961 01/08/2000 Readymade garments
and hosiery goods
4. VOGUE ZONE 1134963 12/04/2000 All kinds of garments
and footwear
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5. VOGUE PEEK & 1280700 01/01/2000 Clothing, footwear and CLOPPENBURG headgear
6. VVOWE WOMEN IN 1815857 07/05/2009 Readymade men, VOGUE women and children wear, headgear for men, women and children and shoes,
7. PANNA VOGUE 1916190 01/01/1959 Ethnic wear, sarees, readymade garments & fashion accessories
8. MOHVOGUE 2129706 29/11/2010 Fabric as component of finished clothing
9. WV&U WOMEN 2245459 23/06/2008 Readymade garments & VOGUE & U footwear
10. VOGUELINE 3004420 20/05/2013 Readymade garments & hosiery times for men's, women's and children's
11. STARVOGUE 3151571 01/01/2015 Clothing, footwear, readymade garments, bathrobes & knitwear
12. TROPIC VOGUE 3250980 14/09/2013 Readymade suits, APPAREL footwear, sarees & other readymade garments
50. The defendants filed a search report stating that the number of the applications filed by the third parties including 'VOGUE' as a part of their mark in Class 25 is exceeding 100.
51. The details of the registration in the name of the third parties containing 'VOGUE' as a part of the trademark in Class 35 is, as under:
S. No. Mark Appl. No. User Claim / Goods
Date of
Application
1. VVOWE WOMEN IN 1815858 07/05/2009 Advertising, marketing,
VOGUE stores and readymade
garments
2. FITZ STUDIO LIVE 2321897 01/06/2011 Shop name, retailing
IN VOGUE and wholesaling of
shirt, trousers etc.
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3. BABY VOGUE 2467191 06/05/2009 Selling baby and kids
garments and
accessories
4. VOGUE CRAFTS 2560314 26/10/2010 Manufacturer, trader
and exporter of
gemstone, designer
jewellery, handicraft
items via online
5. AUTOVOGUE 3112036 27/07/2015 Advertising, business
management, sale,
marketing of vehicles,
business administration
6. BAREVOGUE 3127530 15/12/2015 Advertising, business
management and office
function
52. The defendants have filed a search report containing more than 60 pending applications filed by the third parties for including 'VOGUE' as a part of the trademark in Class 35. The plaintiff has either not conducted a search on Internet or on the register of trademarks and not filed the search report.
53. The plaintiff cannot claim to be the exclusive owner of the mark 'VOGUE'. The goods of the plaintiff and the defendants are completely distinct. The plaintiff's magazine is read by its consumers whereas the defendant's fabrics are purchased by their consumers for stitching of garments. The plaintiff's consumers are educated people belonging to 'high strata' of the society whereas the defendant's goods are purchased by 'middle' as well as 'rich strata' of the society. There are no common distributors or dealers dealing in the goods of the plaintiff and the defendants. The plaintiff's consumers subscribe to its magazine directly and it is also sold at news-stands whereas the defendants retail their fabrics through their exclusive outlets or distributors and retailers dealing in garments. There is no commonality in the trade channels of the plaintiff and the defendants.
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54. The goods of the plaintiff and the defendants are hardly likely to be available on the same shelf or in same stores or outlets. The defendants sell their linen fabric in its stores under the mark 'LINEN VOGUE La Classe'. Any discerning customer is not likely to be confused or deceived that goods of the defendants have some trade connection or association with the plaintiff or its magazine. The goods of the plaintiff and the defendants are not in any manner competitive. It cannot be possibly suggested that magazine 'VOGUE' competes with the linen fabric sold by the defendants. There is no trade connection between the goods of the plaintiff and the defendants.
55. The trade connection, relevant for similarity of the goods, must imply that the goods ordinarily come from the same merchant and not that the goods of the one merchant have endorsement of another. Magazine publishers are not ordinarily known to be retailing fashion goods and hardly anyone is likely to be misled to believe that the magazine and the fashion goods come from the same source. The case that the goods of the retailer may appear to have backing of fashion magazine because of similarity in names cannot be said to have any realistic bearing on the subject of similarity of the goods.
56. The defendant No. 1 is a well-known textile company engaged in manufacturing of a wide range of fabrics and garments. The defendant No. 1 is also producing fabric such as Cotton, Polyester, Tencel, Lycra, Wool and various blends. Their yarn dyed fabric, printing techniques, finishing, processing, weaving and stitching are unparalleled. The defendant No. 1 is also engaged in making and retailing of Fabric, Apparel, Trims and Yarn. The Digitally signed by defendant No. 1 has an annual turnover of 4000 crores.SANJAY SANJAY SHARMA SHARMA Date:
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57. The defendant No. 1 is a leading Indian fabric manufacturer and supplier in the domestic markets and in international fashion export industry. 'Guru', a renowned apparel brand in Italy, is a subsidiary of the defendant No. 1 since 2008. 'Guru' has 18 stores around the world, including, Italy, Spain, France, Germany, Holland, Belgium, Luxemburg, Greece, England, Portugal, the Middle East, Russia and India.
58. The 'Trims Division' of the defendant No. 1 is the most sophisticated button manufacturing unit in India. In 2010, the defendant No. 1 became one of the industries having the capability of producing everything from yarn to garments with the acquisition of a yarn manufacturing company STI India Ltd. The Yarn Division of the defendant No. 1 is known for production of world class cotton yarn, knitted grey fabric in ultra-modern plant equipped with sophisticated hi-tech machinery.
59. The defendant No. 1 adopted the mark 'LINEN VOGUE' in January, 2014. The defendant No. 1 is using the said mark in relation to linen fabrics only sold in India and selling it through distributors, Multi Brand Outlets and Exclusive Brand Outlets. The defendant No. 1 gained tremendous goodwill and reputation in its mark 'LINEN VOGUE La Classe'. The sales figure of the products of the impugned mark for the year 2014 to 2017 are, as under:
Year Sales (In INR in Crores)
2014-2015 32
2015-2016 43
2016-2017 60
Digitally signed
by SANJAY
SANJAY SHARMA
SHARMA Date:
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60. The defendant No. 1 spent huge amount in advertisement and promotion of its goods under the impugned mark, as under:
Year Sales (In INR in Crores) 2014-2015 1 2015-2016 1.30 2016-2017 3
61. The defendant No. 1 adopted the mark 'LINEN VOGUE La Classe' with flower device honestly and using it continuously and extensively since its adoption in the year 2014.
62. Merely because the plaintiff publishes a magazine featuring apparels, it cannot acquire any exclusive right to use the mark 'VOGUE', which is a generic word, for fabrics and apparels. The defendant No. 1 is using the impugned mark to fabrics, dress materials and accessories like stoles, handkerchiefs and fabric spray. The defendant No. 1 is not engaged in manufacturing and sale of apparels, ready-made garments and designer wear clothing for men and women under the said mark. There is no question of any designer designing any apparel or high end clothing range after looking at the magazine. The defendant No. 1 is operating a website www.bombayrayon.com for displaying its business. The defendant No. 1 is operating a website www.linenvogue.com for advertising and promoting its products under the impugned mark. The said domain was registered on 20.12.2013 and it became operational in August, 2016.
63. The plaintiff is claiming itself proprietor of the mark 'VOGUE' in relation to fashion magazine. The defendant No. 1 is not engaged in the business of publishing fashion magazine. The goods as well as the marks of the plaintiff and the defendant No. 1 are different and there is no likelihood of confusion amongst traders or consumers.
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64. According to the defendants, the plaintiff claimed that its magazine is recognized and known amongst ' higher strata' of society comprising educated people and therefore, the plaintiff's consumers can easily differentiate between the mark of the plaintiff and the impugned mark. 'VOGUE' is a descriptive mark and the plaintiff obtained its registration in contravention to the provisions of 'The Trade Marks Act, 1999' and it is liable to be canceled.
65. The defendants contended that the plaintiff's registrations are in respect of magazines, books, printed materials, online and electronic publications in the form of books, journals, magazines, publication of electronic books, magazines and journals. The areas of business of the plaintiff and the defendants are completely different. Therefore, there is no likelihood of confusion amongst consumers regarding the origin of the publications of the plaintiff and the fabrics sold by the defendant. The plaintiff is not entitled to registration or monopolize a common English dictionary word and therefore, the plaintiff's registrations are liable to be canceled. The plaintiff has never used or has the intention to use the registrations obtained in Class 38, 41 and 42 in relation to the said goods, and therefore, they are liable to be canceled.
66. The defendant No. 1 denied that the trademark 'VOGUE' has become a well-known trademark under Section 2(1)(zg) of ' The Trade Marks Act, 1999' or it has acquired a secondary meaning across the globe including the India or it is associated with the plaintiff and its affiliates / subsidiaries alone. The plaintiff's mark 'VOGUE' is wrongly included in the list of well-known trademarks by the Digitally signed by SANJAY trademarks registry. SANJAY SHARMA SHARMA Date:
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67. The defendants have denied that the plaintiff conducted any country-wide survey in 1997 to assess and evaluate the awareness level of the plaintiff's magazine and its mark 'VOGUE' in India. It is stated that participation of very few people out of 990.5 million people cannot be an accurate or even close to accurate figure of the percentage of Indian population aware of the mark 'VOGUE'.
68. Hon'ble Bombay High Court in case titled as ' Advance Magazine Publishers Inc. & Anr. vs. M/s. Just Lifestyle Pvt. Ltd. ' in Suit No. 32/2016 dismissed application for interim injunction, vide order dated 19.09.2016, holding that there was no similarity in the mark 'VOGUE' and the mark 'JUST IN VOGUE'. In the said case, the defendant was using the mark 'JUST IN VOGUE' for sale of merchandise including fashion goods and high end products.
69. The defendant No. 1 filed an application No. 2573597 on 31.07.2013 with user claim since 01.07.2013 and second application No. 3081013 was filed on 19.10.2015 with user claim since 01.07.2013. The defendant No. 1 is using the mark 'LINEN VOGUE La Classe' with flower device openly and continuously since 2013. The examination reports in respect of the applications filed by the defendant No. 1 on 01.07.2013 and 19.10.2015 do not mention the mark of the plaintiff. The 'Lookbooks' of the defendant No. 1 is not a fashion magazine. It only features various designs in which the fabrics / dress materials of the defendant No. 1 can be utilized to make garments. 'IN VOGUE' section of the website of the defendant No. 1 is not used as a trademark but it is a generic expression of 'WHAT IS IN STYLE' to showcase the trends in style. The defendant No. 1 is only promoting its fabric in Class 24, vide websites and catalogues.
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70. The defendants contended that it is completely hypothetical to suggest that the defendants' customers would purchase their products bearing the impugned mark under a notion that the said goods are in some manner endorsed by the plaintiff's magazine. The plaintiff is quite hyper sensitive. The promotion of the goods of the defendant No. 1 via 'Lookbooks' and website is not a publication of a magazine. The plaintiff's mark and the impugned mark are different. The manner of the use of the impugned mark and the plaintiff's mark are different. There is no trade connection or similarity between the goods of the plaintiff and the defendant No. 1. There is no similarity or connection between the customer base of the plaintiff and the defendant No. 1. The defendants denied infringement of any intellectual property rights of the plaintiff. THE REPLICATION:
71. In the replication, the plaintiff denied each and every averment made by the defendants, in the written statement. The plaintiff reiterated averments made in the plaint.
72. The case of the plaintiff is that the defendant No. 1 is using a prior registered and well-known trademark of the plaintiff as a prominent feature in an identical / similar font style in the impugned mark. The mark 'LINEN VOGUE' was adopted to show an association with the plaintiff and / or its magazine when there is no such association. The plaintiff stated that a bare view of the marks would show that the defendant No. 1 has not only copied the word 'VOGUE' but also its 'font' and 'typeset'. The defendant No. 1 is using the mark 'LINEN VOGUE' per se, as depicted in a photograph of fabric, placed at page Digitally signed by SANJAY No. 3 of the replication. SANJAY SHARMA SHARMA Date:
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73. The defendant No. 1 is also using the mark 'LINEN VOGUE' per se on the website and the documents. If the word 'VOGUE' is not an essential feature of the impugned mark, the defendants shall not suffer any prejudice if the word 'VOGUE' is removed from the impugned mark. The defendant No. 1 can continue to use LINEN "La Classe" alongwith the flower device.
74. The plaintiff stated that 'VOGUE' is a dictionary word. However, it is exclusively identified with the plaintiff and its magazine on account of 100 years of use. The mark 'VOGUE' is registered in as many as 145 jurisdictions in the world giving rise to a strong presumption of distinctiveness and reputation. 145 countries considered the mark 'VOGUE' to be worthy of capable of registration. The mark 'VOGUE' was registered in Australia in 1914 and in China, in the year 1929. 'VOGUE' was registered in India on 11.06.1976. U.S. Edition of the plaintiff's 'VOGUE' magazine has circulation in as many as 157 countries of the world including India since at least 1990 reflecting its vast geographical expanse. The circulation figures reflect that magazine touched lives of people covering all continents except Antarctica. The figures may be small in some countries but there is circulation reflecting reputation of the magazine in a particular country. The plaintiff's mark acquired a secondary meaning on account of its registration in 145 jurisdictions, 100 years of use, circulation in 157 jurisdictions and protection as a well-known trademark in U.S., Germany and India, reputation amongst Bollywood celebrities and the designers like Mr. Rajesh Pratap Singh are proud to show their association with the plaintiff's magazine. He was the first designer invited by VOGUE Italy to do a show at Milan in 2011.
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75. The plaintiff denied that the word 'VOGUE' is a synonym for fashion. The word 'VOGUE' and fashion cannot be used interchangeably. The plaintiff's magazine 'VOGUE' has become exclusively associated with high class fashion over the years. The mark 'VOGUE' was adopted as a trademark for a fashion magazine in the year 1896. However, 'VOGUE' magazine is regarded as 'a bible of fashion' in the field of fashion on account of extensive use of the mark over more than a century. The plaintiff has no objection to the description of stores and goods by the defendants as ' fashionable' or 'trendy' fabrics. The plaintiff is objecting to use of the mark 'VOGUE' as a part of trademark of the defendants. The manner of use of the mark 'VOGUE' and filing of the applications for registration of the said mark by the defendant No. 1 make it clear that the defendants are using the mark 'VOGUE' as part of their trademark for offering their goods and services. The use of the mark 'VOGUE' by the defendants is to create and show an association with the plaintiff and to dilute the plaintiff's registered and well-known trademark.
76. 'M/s. Aditya Birla Nuvo Limited' claiming to be proprietor of the trademark 'LINEN CLUB' with device of a flower has claimed that manner of representation of 'LINEN VOGUE' with flower device by the defendants is a copy of their trademark 'LINEN CLUB'. The adoption of the mark 'VOGUE' by the defendants is dishonest and to trade upon immense goodwill and reputation of the said mark. The defendants are claiming adoption of the mark 'VOGUE' in the year 2014 immediately after the plaintiff extended Digitally signed scope of its activities under the said mark. by SANJAY SHARMA SANJAY Date:
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77. The unauthorized 'third party uses' will not in any manner further the case of the defendants. The plaintiff has already taken action against 15 parties regarding infringement of its trademark and stopped use of the said marks by 4 parties qua ready-made garments and / or retail services of garments. The plaintiff has successfully stopped registration of 10 trademarks with 'VOGUE' formative marks in Class 25 and around 20 oppositions are pending. The said parties do not have any significant presence. The defendant No. 1 has not mentioned the date of the presence of the said parties in the market and the extent of their use. The plea of the 'common to the trade' is not available to the defendants as the defendant No. 1 itself applied for registration of 'VOGUE' formative mark.
78. With the launch of 'VOGUE' India magazine in the year 2007, number of third parties adopting the mark 'VOGUE' increased and since 2013, the number increased further pointing to the growing reputation and goodwill of an already famous mark. A trademark owner need not to sue each and every violator until it affects it.
79. According to the plaintiff, the defendant No. 1 has not disputed that the plaintiff is a prior user at least since a century. It is not the case of the defendant No. 1 that the defendant No. 1, at the time of launching its business, was not aware of the plaintiff. The defendant No. 1 inspite thereof chose to dishonestly adopt and use the mark 'VOGUE' as part of its trademark 'LINEN VOGUE' with a view to trade upon and benefit from the reputation of the plaintiff's mark Digitally 'VOGUE'. signed by SANJAY SANJAY SHARMA SHARMA Date:
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80. Besides one party, no other party could obtain registration of the mark 'VOGUE'. Moreover, in the said case, the essential feature is 'VVOWE' and the mark 'VOGUE' is hardly visible. Moreover, the said mark was registered on 07.05.2009 with ' proposed to be used' and the defendant No. 1 has not shown that the said applicant is using the said mark. In the year 1994, the Registrar refused registration of the mark 'VOGUE' in respect of home furnishing items on the ground of reputation of the plaintiff's trademark. In respect of 12 registrations in Class 25 mentioned by the defendant No. 1, two registrations have been removed, vide Registration No. 692300 at Sl. No. 2 and 1045961 at Sl. No. 3, on account of their non-renewal by their proprietors. In respect of 139 marks mentioned by the defendants, 40 marks are either withdrawn / abandoned or refused, 26 marks are under opposition and 58 marks are yet to be advertised in the trademark journal. The plaintiff is taking appropriate action against the violators. The plaintiff has already initiated action against 'VOGUE CRAFTS'. In respect of 63 marks mentioned by the defendant No. 1, 11 marks are already abandoned / removed / refused and 15 marks are opposed. 28 marks are either objected or pending examination. The plaintiff has already initiated action against proprietors of 9 marks.
81. The goods of the plaintiff as well as of the defendants are purchased by the 'middle' as well as 'rich strata' of society and both target the rich and the influential. The consumers who get their clothes stitched look at the plaintiff's magazine to find out latest trends in garments. The plaintiff's magazine is found in boutiques as well as tailoring workshops. The use of the word 'VOGUE' by the defendants would show association with the plaintiff or dilute its mark.
Digitally signedSANJAY by SANJAY SHARMA SHARMA Date: 2025.06.10 15:32:24 +0530 TM No. 3/2020 Advance Magazine Publishers, Inc. vs. Bombay Rayon Fashions Ltd. & Ors. Page No. 34 of 285
82. The customers of the defendant No. 1 would look the magazine for fashion guidance and they may be lured into purchasing the defendant No. 1's products under the notion that the goods sold under the mark 'VOGUE' are endorsed by the plaintiff. The goods manufactured and sold by the defendant No. 1 are directly related to the goods that feature in the magazines of the plaintiff. The designers of the defendant No. 1 will be looking at the plaintiff's magazine for any fashion related information or inspiration.
83. The plaintiff opened 'VOGUE' branded restaurant 'VOGUE Cafe' in Moscow in the year 2003. The plaintiff opened a 'VOGUE Cafe' in Dubai Mall in 2013. The plaintiff opened a 'Fashion School and Institute' in London in 2013. The plaintiff is imparting VOGUE Master's Course in Communication, Fashion and Beauty in conjunction with University of Carlos III in Spain. The plaintiff launched 'VOGUE INDIA FASHION FUND', a global initiative, in 2012 to support emerging fashion designers. In 2010, the plaintiff started 'VOGUE INDIA BEAUTY AWARDS' to honour the best beauty products, services and experts. In August, 2015, the plaintiff organized a three days wedding exhibition 'VOGUE WEDDING SHOW' which was attended by 6,500 consumers and 43 most exclusive brands including designers, jewellers and destinations were featured. In September, 2015, the plaintiff hosted 'FASHION'S NIGHT OUT', a one night shopping extravaganza with more than 70 brands and exclusive deals and discounts. 50,000 shoppers had attended the said event at Palladium Mall, Mumbai. The plaintiff is planning to introduce an event 'FASHION'S NIGHT IN', an online Digitally signed by SANJAY shopping festival on e-commerce platform. SANJAY SHARMA SHARMA Date:
2025.06.10 15:32:32 +0530 TM No. 3/2020 Advance Magazine Publishers, Inc. vs. Bombay Rayon Fashions Ltd. & Ors. Page No. 35 of 285
84. Apart from likelihood of confusion, the Court can look at the association of the mark with the plaintiff's goods. The plaintiff enjoys an undeniable reputation in the fashion industry and the market. The defendant No. 1 has claimed use of the mark 'LINEN VOGUE' since 01.07.2013 whereas it claimed adoption in January, 2014. The defendant No. 1, in the guise of promotional activity, is using the impugned mark in respect of publication called 'Lookbooks' containing photo-shoots in collaboration with designers, models and fashion photographers, designer ready-made garments, retail services and merchandising such as plaques for retailers, awards, calendars, diaries, mugs, carry bags, travel bag, starch cans, mouse pads, posters etc. The defendant No. 1 has neither verified sale figures nor filed any certificate in that regard. In any case, the defendant No. 1 made the said sales on account of use of well-known mark of the plaintiff as essential part of the impugned mark.
85. The defendant No. 1 has copied 'LINEN with flower device' from 'LINEN CLUB with flower device' from 'M/s. Aditya Birla Nuvo Limited'. The defendant No. 1 has not furnished any plausible explanation for adoption and use of the mark 'VOGUE' in identical / similar font and style in the impugned mark. The defendant No. 1 has applied for registration of the impugned mark containing the word 'VOGUE' as a prominent feature and therefore, the defendant No. 1 cannot contend that the word 'VOGUE' is generic / common to trade. The product list provided by the defendant No. 1, in its 'Lookbooks', demonstrates that the defendant No. 1 is selling designer wear and ready-made garments under the mark 'LINEN VOGUE / Digitally signed by SANJAY 'LINEN VOGUE La Classe'. SANJAY SHARMA SHARMA Date:
2025.06.10 15:32:46 +0530 TM No. 3/2020 Advance Magazine Publishers, Inc. vs. Bombay Rayon Fashions Ltd. & Ors. Page No. 36 of 285
86. The defendant No. 1 is publishing a magazine like 'Lookbooks' under the impugned mark which is available in print and electronic form. The plaintiff's registration is not limited to ' fashion magazine' but to magazine (publication) and electronic publications. Thus, 'Lookbooks' would squarely fall under the definition of publication as well as electronic publication and as such, it is a direct infringement under Section 29(1) of 'The Trade Marks Act, 1999'.
87. 'VOGUE' magazine targets the fashion conscious consumers in all strata. However, it is regarded by the elite as reliable guide to fashion trends. It is available in stalls, high class boutiques, beauty parlours / salons, airlines and tailoring establishments which are target customers of the defendants. The consumers who would get clothes stitched would look to the said magazine to find out the latest trends in garments. The trademark 'VOGUE' is not only distinctive but it has also acquired a secondary meaning in relation to the plaintiff's goods and / or services through extensive use since over a century.
88. The plaintiff has furnished list of 9 successful enforcement cases and 31 applications which were successfully opposed. In Advance Magazine Publishers Inc. vs. Shakeel Ahmed , the Court restrained the use of 'B' VOGUE' as a name of a beauty parlour. In Advance Magazine Publishers Inc. vs. Sabah M. Ambazhathingal & Ors., the Court granted an ex-parte stay against use of 'VOGUE LONDON' in respect of apparel. The case of Just Lifestyle Pvt. Ltd. is distinguishable on facts, as enumerated. In Advance Magazine Publishers Inc. vs. Arvind Mills Pvt. Ltd. , Hon'ble High Court of Delhi granted an ex-parte injunction restraining the use of the mark 'EXCALIBUR VOGUE' in respect of similar goods.
Digitally signed SANJAY by SANJAY
SHARMA
SHARMA Date: 2025.06.10
15:32:53 +0530
TM No. 3/2020 Advance Magazine Publishers, Inc. vs. Bombay Rayon Fashions Ltd. & Ors. Page No. 37 of 285 ADMISSION AND DENIAL:
89. In admission and denial, conducted on 08.09.2017, Mr. Amrit Bardhan, Authorized Representative of the plaintiff denied all the documents filed by the defendants except the documents mentioned at Sl. No. 1, 2 and 3 of the affidavit, as under:
Sl. No. Documents Remarks
1. Copies of various advertisements of the Document is a copy and defendant No. 1 therefore cannot be admitted or denied
2. Copy of Board Resolution in favour of Document is a copy and Mr. Prashant Aggarwal on behalf of the therefore cannot be defendant No. 1 admitted or denied
3. Copy of Authority Letter in favour of Document is a copy and Rabindra Mohan on behalf of the therefore cannot be defendant No. 1 admitted or denied
90. Mr. Rabindra Mohan, Attorney of the defendant No. 1 admitted documents alongwith the plaint in Vol. 4, as under:
Sl. No. Documents Remarks
9. Internet printouts from website of the Existence of website defendant No. 1 admitted and contents www.bombayrayon.com denied as not verified
10. Website printout of WHOIS STATUS Admitted subject to of the defendant No. 1's domain name proof in accordance www.bombayrayon.com with law
11. Internet printouts from website of the Existence of website defendant No. 1 www.linenvogue.com admitted and contents denied as not verified
12. Website printout of WHOIS STATUS Admitted subject to of the defendant No. 1's domain name proof in accordance www.linenvogue.com with law Digitally signed by SANJAY SANJAY SHARMA SHARMA Date: 2025.06.10 15:33:01 +0530 TM No. 3/2020 Advance Magazine Publishers, Inc. vs. Bombay Rayon Fashions Ltd. & Ors. Page No. 38 of 285
14. Office copy of the cease and desist Receipt admitted and letter dated 26.02.2016 issued on behalf contents denied of the plaintiff to the defendant No. 1 alongwith proof of delivery
15. Office copy of the reminder letter dated Receipt admitted and 18.03.2016 issued on behalf of the contents denied plaintiff to the defendant No. 1 alongwith proof of dispatch
16. Letter dated 23.03.2016 sent by the Admitted defendant No. 1 to the plaintiff acknowledging the receipt of letters dated 26.02.2016 and 18.03.2016
17. Reply dated 29.03.2016 sent by the Admitted defendant No. 1
18. Office copy of the letter dated Receipt admitted and 23.06.2016 sent on behalf of the contents denied plaintiff to the defendant No. 1 alongwith proof of delivery
19. Office copy of the letter dated Receipt admitted and 13.07.2016 on behalf of the plaintiff to contents denied the defendant No. 1 alongwith proof of delivery
20. Letter dated 19.07.2016 sent by the Admitted defendant No. 1 to the plaintiff
21. Office copy of the letter dated Receipt admitted and 11.08.2016 on behalf of the plaintiff to contents denied the defendant No. 1 alongwith proof of delivery
22. Office copy of the reminder letter dated Receipt admitted and 09.09.2016 issued on behalf of the contents denied plaintiff to the defendant No. 1 alongwith proof of delivery
23. Letter dated 13.09.2016 sent by the Admitted defendant No. 1 to the plaintiff Digitally signed by SANJAY SANJAY SHARMA SHARMA Date:
2025.06.10 15:33:07 +0530 TM No. 3/2020 Advance Magazine Publishers, Inc. vs. Bombay Rayon Fashions Ltd. & Ors. Page No. 39 of 285 THE ISSUES:
91. On the pleadings, following issues were framed:
(1) Whether the use of the mark 'LINEN VOGUE' / 'LINEN VOGUE La Classe' by the defendants constitutes infringement of the plaintiff's registered trade marks, as detailed in para 15 of amended plaint, in terms of the prayer Clause '(a)' of the plaint?
(OPP) (2) Whether the use of mark 'LINEN VOGUE' / 'LINEN VOGUE La Classe' by the defendants amounts to passing off its goods and / or services as that of plaintiff's goods and / or services, as detailed in para 15 of amended plaint?
(OPP) (3) If the answer to Issue No. 1 and 2 is in affirmative, whether the plaintiff is entitled for permanent injunction restraining the defendants in terms of prayer Clause (i) and (ii) of the suit?
(OPP) (4) Whether the plaintiff is entitled to damages to the tune of at least Rs. 45 lacs and / or any other amount, on account of violations committed by the defendants?
(OPP) (5) Whether the mark VOGUE is a generic word, having direct reference to the character and quality of goods in issue and thereby, it is devoid of any distinctive character?
(OPD) (6) Whether the adoption and use of the marks in question by the defendant is honest and bonafide?
(OPD) (7) Whether the mark VOGUE is a common dictionary word, common to the trade and has become public juris?
(OPD) (8) Whether the Court has territorial jurisdiction to try and adjudicate the present suit?
(OPD) (9) Relief.
Digitally signedSANJAY by SANJAY SHARMA SHARMA Date: 2025.06.10 15:33:14 +0530 TM No. 3/2020 Advance Magazine Publishers, Inc. vs. Bombay Rayon Fashions Ltd. & Ors. Page No. 40 of 285 THE PLAINTIFF'S EVIDENCE:
92. PW-1 Ms. Amrita Singh, Associate Publisher, Vogue India, Conde Nast India Pvt. Ltd. filed examination-in-chief by way of affidavit Ex.PW1/A. She relied on documents, as under:
Sl No. Description Exhibit
1. Power of Attorney dated 03.03.2017 Ex.PW1/1
th
2. '100 Anniversary Special' of Vogue Magazine published Ex.PW1/2
in April, 1992
3. Photocopy of e-book 'On the Edge' Ex.PW1/3
4. Vogue India Magazine - October, 2007 Edition Ex.PW1/4
5. Article 'Anna's World' in NY Times dated 17.11.1997 Ex.PW1/5
6. Certificate under Section 65B Indian Evidence Act Ex.PW1/5A
7. Article of Caroline Weber in NY Times dated 03.12.2006 Ex.PW1/6
8. Screen-shots of celebrities alongwith their comments on Ex.PW1/7
launch of VOGUE Magazine and media coverage in a compact disc (CD)
9. Vogue India Media Kits for the year 2011 Ex.PW1/8
10. Vogue India Media Kits for the year 2012 Ex.PW1/9
11. Vogue India Media Kits for the year 2013 Ex.PW1/10
12. Vogue India Media Kits for the year 2014 Ex.PW1/11
13. Vogue India Media Kits for the year 2015 Ex.PW1/12
14. Vogue India Media Kits for the year 2016 Ex.PW1/13
15. Certificate under Section 65B Indian Evidence Act Mark X1
16. Internet printout of WHOis Record showing details of Ex.PW1/14 domain name www.vogue.in
17. Printouts from website www.vogue.in Ex.PW1/15
18. Printouts from websites in USA www.vogue.co.us, UK Ex.PW1/16 www.vogue.co.uk, Germany www.vogue.de, Japan www.vogue.co.jp, Spain www.vogue.es, Russia www.vogue.ru, France www.vogue.fr., China www.vogue.com.nc, Korea www.vogue.co.kr, Taiwan www.vogue.com.tw, Mexico www.vogue.mx, Australia www.vogue.com.au
19. Article titled 'Check out! Indians and India are in Vogue' Ex.PW1/17 dated 10.03.2008 Digitally signed by SANJAY SANJAY SHARMA SHARMA Date: 2025.06.10 15:33:25 +0530 TM No. 3/2020 Advance Magazine Publishers, Inc. vs. Bombay Rayon Fashions Ltd. & Ors. Page No. 41 of 285
20. Certified copy of registration certificate for the trademark Ex.PW1/18 VOGUE in Class 16, vide Registration No. 315672B
21. Certified copy of registration certificate for the trademark Ex.PW1/19 VOGUE in Class 41, vide Registration No. 1302833
22. Certified copy of registration certificate for the trademark Ex.PW1/20 VOGUE GIRL in Class 9, vide Registration No. 1080289
23. Certified copy of registration certificate for the trademark Ex.PW1/21 VOGUE GIRL in Class 16, vide Registration No. 1080290
24. Copy of registration certificate for the trademark TEEN Ex.PW1/22 VOGUE in Class 41, vide Registration No. 1302832
25. Certified copy of registration certificate for the trademark Ex.PW1/23 VOGUE in Class 38, vide Registration No. 1580019
26. Certified copy of registration certificate for the trademark Ex.PW1/24 VOGUE TV in Class 38, vide Registration No. 1580020
27. Certified copy of registration certificate for the trademark Ex.PW1/25 VOGUE in Class 42, vide Registration No. 2153908
28. Certified copy of registration certificate for the trademark Ex.PW1/26 VOGUE INDIA in Class 42, vide Registration No. 1601198
29. Certified copy of registration certificate for the trademark Ex.PW1/27 VOGUE LIVING in Class 16, vide Registration No. 1136931
30. Certified copy of registration certificate for the trademark Ex.PW1/28 VOGUE INDIA in Class 16, vide Registration No. 1601195
31. Certified copy of registration certificate for the trademark Ex.PW1/29 VOGUE INDIA in Class 16, vide Registration No. 1601196
32. Certified copy of registration certificate for the trademark Ex.PW1/30 MISS VOGUE in Class 16, vide Registration No. 2945286
33. Certified copy of registration certificate for the trademark Ex.PW1/31 VOGUE FASHION FUND - WHO IS NEXT in Class 35, vide Registration No. 2302476
34. Certified copy of registration certificate for the trademark Ex.PW1/32 VOGUETTE in Class 35, vide Registration No. 2787429
35. Certified copy of registration certificate for the trademark Ex.PW1/33 VOGUE in Class 41, vide Registration No. 1580021 Digitally signed SANJAY by SANJAY SHARMA SHARMA Date: 2025.06.10 15:33:34 +0530 TM No. 3/2020 Advance Magazine Publishers, Inc. vs. Bombay Rayon Fashions Ltd. & Ors. Page No. 42 of 285
36. Certified copy of registration certificate for the trademark Ex.PW1/34 VOGUE in Class 41, vide Registration No. 2025572
37. Certified copy of registration certificate for the trademark Ex.PW1/35 VOGUEPEDIA in Class 41, vide Registration No. 2174324
38. Certified copy of registration certificate for the trademark Ex.PW1/36 VOGUE FASHION FUND in Class 41, vide Registration No. 2302475
39. Certified copy of registration certificate for the trademark Ex.PW1/37 VOGUE FASHION FUND - WHO IS ON NEXT in Class 41, vide Registration No. 2302478
40. Certified copy of registration certificate for the trademark Ex.PW1/38 VOGUE (DEVICE) in Class 41, vide Registration No. 2404663
41. Certified copy of registration certificate for the trademark Ex.PW1/39 VOGUE CLUB & CAFE in Class 41, vide Registration No. 2463843
42. Copy of well-known trademarks published by Registrar Ex.PW1/40 of Trade Marks on its website www.ipindia.gov.in
43. Copy of Vogue Awareness Report in India Ex.PW1/41
44. Agreement dt. 04.08.2016 between the plaintiff and Ex.PW1/42 Forever Mark Diamond Pvt. Ltd.
45. Printouts of articles taken from the link http://www. Ex.PW1/43 vogue.in/content/why-anyone-who-loves-shopping-cant- miss-the-dlf-emporio-shopping-fiesta/
46. Certificate under Section 65B Indian Evidence Act Ex.PW1/43A
47. Printouts of article All the Fun at Fashion's Night Out Ex.PW1/44 taken from the link http://www.vogue.in/content/all-fun- fashio/
48. Printout of screen-shots of celebrities taken from Ex.PW1/45 https://www.com/fashion's-night-out-2012-at-dlf- emporio
49. Printouts relating to VOGUE FASHION'S NIGHT IN Ex.PW1/46 taken from http://www.vogue.in/content/vogue-curates- stylish-steals-from-myntra-for-fashions-night-in/#s-cust0
50. Washington post article titled 'Magazines Use Online Ex.PW1/47 Ads As Selling Point' by Leslie Walker from website de-exhibited http://www.washingtonpost.com/wp-yn/articles/A31123- Mark X2 2004Aug25.html dt. 26.08.2004
51. Printouts of Vogue Beauty Award Winners from the Ex.PW1/48 years 2011 to 2016 Digitally signed by SANJAY SANJAY SHARMA TM No. 3/2020 SHARMAPageDate:
Advance Magazine Publishers, Inc. vs. Bombay Rayon Fashions Ltd. & Ors.
2025.06.10 15:33:57 +0530 No. 43 of 285
52. Photographs of a Forrest Essential Showroom at Select Ex.PW1/49 City Walk Mall, Saket de-exhibited Mark X3
53. Printouts relating to VOGUE INDIA FASHION FUND Ex.PW1/50 from website http://www.vogue.in/content/how-vogue-
india-fashion-fund-works/#deadline-for-vogue-india- fashion-fund-2014
54. Printouts relating to VOGUE EMPOWER campaign Ex.PW1/51 launched in the year 2014 as a social awareness initiative from website www.vogue.co.uk and http://www.vogue.in/empower/
55. Printouts relating to VOGUE EMPOWER Merchandise Ex.PW1/52 of VOGUE EMPOWER campaign is being sold on e-
commerce website www.amazon.in
56. VOGUE INDIA October, 2014 Issue Ex.PW1/53
57. Printouts of articles showing launch of VOGUE CAFE Ex.PW1/54 MOSCOW on 15.07.2003 taken from the link http://www.trendymoscow.com/vogue-cafe/
58. Printouts relating to VOGUE CAFES and LOUNGES Ex.PW1/55 around the world taken out from www.fipp.com, https://www.visitdubai.com/en/pois/vogue-cafe, http://www.thenational.ae/lifestyle/fashion/vogue-caf-
opens-in-dubai-mall and http://www.thenational.ae/lifestyle/food/in-pictures- vogue-caf-opens-in-dubai-mall#5
59. Printouts taken from website Ex.PW1/56 http://www.condenastinternational.com/initiatives/ cond%C3%A9-nast-college-of-fashion-design/
60. Printouts taken from website Ex.PW1/57 http://www.condenastinternational.com/initiatives/ vogue-masters-university-carlos-iii,-spain/
61. Printouts of coverage of VOGUE Wedding Show, 2015 Ex.PW1/58 organized by the plaintiff in partnership with Taj Group taken from the link http://rougepouts.com/ vogue- wedding-show-2015-in-partnership-with-the-taj-group/
62. Printouts relating to VOGUE 'SAREE 27/7' Ex.PW1/59 SHOWCASE at Amazon India Fashion Week, 2017 taken from https://www.sujatra.com/blogs/sujatra-saree/amazon- india-fashion-week-2017-featuring-sarees
63. Printouts giving details of the show from the link Ex.PW1/60 http://www.vogue.in/content/meet-the-host-who-will- take-you-into-the-lives-of-your-favourite-celeb-bffs/ SANJAY Digitally signed by SANJAY SHARMA TM No. 3/2020 SHARMA Advance Magazine Publishers, Inc. vs. Bombay Rayon Fashions Ltd. & Ors.
Date: 2025.06.10 Page 15:34:08 No. 44 +0530 of 285
64. Printouts giving details of the show taken from the link Ex.PW1/61 http://www.vogue.in/content/catch-ranveer-singh/being- his-usual-self-on-the-season-finale-of-vogue-bffs/
65. Printouts giving details of the show taken from the link Ex.PW1/62 http://www.vogue.in/content/ready-to-meet-bffs-aditi- rao-hydari-and-elton-fernandez-this-saturday/
66. Printouts giving details of the show taken from the link Ex.PW1/63 http://www.vogue.in/content/are-you-ready-to-meet-farhan- akhtar-and-ritesh-sidhwani-this-saturday/
67. Printouts of show from link http://www.vogue.in/ Ex.PW1/64 content/shahid-kapoor-and-kunal-rawal-take-over-in-the- next-episode-of-vogue-bffs/
68. Printouts giving details of the show taken from the link Ex.PW1/65 http://www.vogue.in/content/alia-and-mahesh-bhatt-are- unstoppable-on-the-next-episode-of-vogue-bffs/
69. Printouts giving details of the show from the link Ex.PW1/66 http://www.vogue.in/content/what-are-sonam-kapoor- and-atul-kasbekar-up-to-at-the-vogue-loft-this-week/
70. Printouts giving details of the show taken from the link Ex.PW1/67 http://www.vogue.in/content/arjun-and-anil-kapoor-will- leave-you-in-splits-on-the-next-episode-of-vogue-bffs/
71. Printouts giving details of the show taken from the link Ex.PW1/68 http://www.vogue.in/content/you-cant-miss-kajol-and- mickey-contractor-on-the-next-vogue-bffs-episode/
72. Printouts giving details of the show taken from the link Ex.PW1/69 http://www.vogue.in/content/what-have-kareena-kapoor- khan-deepika-padukone-and-kajol-been-up-to-lately/
73. Printouts taken from the link https://www.voot.com/ Ex.PW1/71 shows/vogue-bffs/1/447546 alongwith a compact disc containing all episodes of VOGUE BFFS show
74. Photocopy of an article showing that VOGUE received Ex.PW1/72 the American Society of Magazine Editor's National de-exhibited Magazine Award in 2012 Mark X4
75. Photocopy of 'R.O.B' magazine, 'Who has the world's Ex.PW1/73 best logo' November, 2000 Issue de-exhibited Mark X5
76. Printout of an article showing that VOGUE received Ex.PW1/74 'National Magazine Award for Photography' from American Society of Magazine Editors in 2012
77. Printout of an article showing that VOGUE received the Ex.PW1/75 'Magazine of the Year' award by Ad Age in 2012 Digitally signed by SANJAY SANJAY SHARMA SHARMA Date: 2025.06.10 15:34:20 +0530 TM No. 3/2020 Advance Magazine Publishers, Inc. vs. Bombay Rayon Fashions Ltd. & Ors. Page No. 45 of 285
78. Printout of an article from website Ex.PW1/76 www.magazine.org/print/industry-news showing that VOGUE received 'Magazine of the Year' award in 2015
79. Vogue India Magazine March, 2017 Edition Ex.PW1/77
80. Photocopy of judgment dated 16.04.2014 by Supreme Ex.PW1/78 Court, Santiago de-exhibited Mark X6
81. Copy of the judgment dt. 18.12.2012 by District Court of Ex.PW1/79 Frankfurt in Case No. 3-08 O 238/12 titled as Advance de-exhibited Magazine Publishers Inc. vs. S.A. G Group GmbH Mark X7
82. Copy of the judgment dated 01.10.2015 by Braunschweig Ex.PW1/80 District Court in Case No. 9 O 2045/15 (263) in Advance de-exhibited Magazine Publishers Inc. vs. Deja Bu Jeans Mark X8
83. Copy of the judgment dated 02.10.2015 by Hamburg Ex.PW1/81 District Court in Case No. 315 O 398/15 in Conde Nast de-exhibited Verlag GmbH vs. Fatih Sezer Mark X9
84. Copy of the judgment dated 24.02.2016 by Dusseldorf Ex.PW1/82 District Court in Case No. 2a O 30/16 in Advance de-exhibited Magazine Publishers Inc. vs. Mirch UG, Sellhorststrasse Mark X10
85. Copy of the judgment dated 14.09.2015 by Munich Ex.PW1/83 District Court in Case No. 33 O 15808/15 in Advance de-exhibited Magazine Publishers Inc. vs. PAK Mode Mark X11
86. Photocopy of judgment titled as Conde Nast vs. Vogue Ex.PW1/84 School, 94 US PQ 101 by US Courts
87. Photocopy of judgment titled as Conde Nast vs. Vogue Ex.PW1/85 Travel Inc, 205 US PQ 579 by US Courts
88. Photocopy of judgment titled as Conde Nast vs. Ex.PW1/86 American Greetings Corp., 141 US PQ 249 by US Courts
89. Photocopy of judgment titled as Conde Nast vs. Ex.PW1/87 American Greetings Corp., 153 US PQ 83 by US Courts
90. Internet printout of judgment titled as Advance Magazine Ex.PW1/88 Pub vs. Vogue International, US District Court 123 F.SUPP.2d790 (DNJ. 2000)
91. Photocopy of judgment titled as Advance Magazine Ex.PW1/89 Publishers Inc. vs. Miss. Sunita Bhagat & Anr., Suit No. 361/2003
92. Photocopy of judgment titled as Advance Magazine Ex.PW1/90 Publishers Inc. vs. Vineet Chopra & Anr. , Suit No. 130/2004 Digitally signed SANJAY by SANJAY SHARMA SHARMA Date: 2025.06.10 15:34:29 +0530 TM No. 3/2020 Advance Magazine Publishers, Inc. vs. Bombay Rayon Fashions Ltd. & Ors. Page No. 46 of 285
93. Photocopy of judgment titled as Advance Magazine Ex.PW1/91 Publishers Inc. vs. Nature's Essence Pvt. Ltd., Suit No. de-exhibited 05/2014 Mark X12
94. Photocopy of judgment titled as Advance Magazine Ex.PW1/92 Publishers Inc. & Anr. vs. Sabah M. Ambazhathimngal & Ors., Suit (L) No. 510/2016
95. Copy of judgment dt. 25.09.2014 in Advance Magazine Ex.PW1/93 Publishers Inc. vs. M.M. Kariappa, OS No. 2934/1999
96. Photocopy of judgment titled as Advance Magazine Ex.PW1/94 Publishers Inc. vs. Suraj Cholhani & Ors., TM No. 08/2017
97. Copy of judgment dt. 24.03.2009 of Advance Magazine Ex.PW1/95 Publishers vs. Arvind Mills Ltd., CS No. 565/2009
98. Copy of judgment dt. 21.12.2012 titled as Advance Ex.PW1/96 Magazine Publishers Inc. vs. VOGUE Online Trade de-exhibited India Pvt. Ltd., CS No. 139/2012 Mark X13
99. Internet printout of judgment titled as Advance Magazine Ex.PW1/97 Publishers Inc. vs. Shakeel Ahmed, Suit No. 2487/2008
100. Copy of judgment dt. 10.11.2014 titled as Advance Mark X14 Magazine Publishers Inc. & Anr. vs. Ms. Rakhi Jain & Ors., TM No. 09/2013
101. Photocopy of judgment titled as Rakhi Jain & Ors. vs. Ex.PW1/98 M/s. Advance Magazine Publishers Inc. & Anr., FAO 203/2015 decided on 29.04.2016
102. Copy of judgment dt. 17.09.2014 titled as Advance Ex.PW1/99 Magazine Publishers Inc. vs. Udit Agarwal & Ors., CS de-exhibited (OS) No. 2738/2014 Mark X15
103. Photocopy of the orders passed by Trade Mark Registry Ex.PW1/100 in favour of the plaintiff
104. Copy of the undertakings received from Vaishali Gandhi Ex.PW1/101 dated 15.06.2016, Intex Technologies (India) Limited dated 04.02.2015, Geeta Rathod dated 05.06.2015 and dated 02.03.2016
105. Copy of the undertaking given by M/s. Bhatia Photo Mark X16 Studio dated 03.09.2013
106. Copy of the letters addressed by Ms. Anuja Rajeev Ex.PW1/102 Tipnis, e-mail dated 20.10.2016 sent by Ms. Suman Chauhan, letter sent by Kristal Spirits dated 30.11.2016, Advocate Pankaj S. Gidiyal on behalf of Vichi Gupta, Siddarth Gupta dated 22.03.2017, Nausheen Osmani dated 14.04.2017, etc. Digitally signed by SANJAY SANJAY SHARMA TM No. 3/2020 SHARMA Page Advance Magazine Publishers, Inc. vs. Bombay Rayon Fashions Ltd. & Ors.
Date: 2025.06.10 15:34:37 +0530 No. 47 of 285
107. Copy of Page No. 29 to 31, 33 to 37, 40, 42 to 48 of the Mark X17 documents filed on 02.05.2017
108. Printout of online status of the defendant No. 1's TM Ex.PW1/103 Application No. 2573597 dated 31.07.2013 for registration of Mark 'LINEN VOGUE la classe' in Class 24
109. Printout of online status of the defendant No. 1's TM Ex.PW1/104 Application No. 3081013 dated 19.10.2015 for registration of Mark 'LINEN VOGUE la classe' in Class 24
110. Printouts of the defendant's Lookbooks from the website Ex.PW1/105 of the defendant No. 1 for the year 2014 and 2016, photo-
shoots http://linenvogue.com/, http://linenvogue.com/bombay-rayon.html, http://linenvogue.com/technology.html, http://linenvogue.com/quality-policy.html, http://linenvogue.com/collection.html, http://linenvogue.com/design.html, http://linenvogue.com/amazing-linen.htmll, http://linenvogue.com/lookbook.html
111. WHOIS record of the defendants' website Ex.PW1/106 www.linenvogue.com de-exhibited Mark X18
112. Printout from website www.colabindia.com/ linenvogue Ex.PW1/107
113. Photograph of the defendant No. 1's product i.e. carry Ex.PW1/108 bag sold by the defendant No. 3 and invoices
114. Copy of objection dated 05.12.2013 sent by M/s. Aditya Ex.PW1/109 Birla Nuvo Ltd. to Trade Mark Office, Mumbai
115. Certified copy of judgment titled as Advance Magazine Ex.PW1/110 Publishers Inc. vs. Nature's Essence Pvt. Ltd., Vacation Suit No. 05/2014
116. Certified copy of judgment titled as Advance Magazine Ex.PW1/111 Publishers Inc. vs. VOGUE Online Trade India Pvt. Ltd., CS No. 139/2012
117. Certified copy of judgment titled as Advance Magazine Ex.PW1/112 Publishers Inc. & Anr. vs. Ms. Rakhi Jain & Ors. , TM No. 09/2013
118. Certified copy of judgment titled as Advance Magazine Ex.PW1/113 Publishers Inc. vs. Udit Agarwal & Ors., CS (OS) No. 2738/2014 Digitally signed SANJAY by SANJAY SHARMA SHARMA Date: 2025.06.10 15:34:45 +0530 TM No. 3/2020 Advance Magazine Publishers, Inc. vs. Bombay Rayon Fashions Ltd. & Ors. Page No. 48 of 285
119. Certified copy of judgment titled as Advance Magazine Ex.PW1/114 Publishers Inc. vs. Shakeel Ahmed, Suit No. 2487/2008
120. A copy of License Agreement dated 01.02.2007 executed Ex.PW1/AX1 with Advance Magazine Publishers Inc. and Conde Nast (India) Pvt. Ltd.
93. During the cross-examination, the defendants confronted PW-1 Ms. Amrita Singh with the document, as under:
Sl. No. Description Exhibit
1. An internet printout downloaded from Ex.PW1/D1
www.voguefashioninstitute.com
94. PW-2 Mr. Jeeson Kollannur, Assistant Manager,
Circulation (Operation), Conde Nast India Pvt. Ltd. filed examination- in-chief by way of affidavit Ex.PW2/A and supplementary affidavit Ex.PW2/B. He relied on the documents, as under:
Sl. No. Description Exhibit
1. Foreign Circulation Reports of sales / circulation of US Ex.PW2/1 Edition of the VOGUE magazine de-exhibited Mark X1
2. Printouts of media kit of the plaintiff for the year 2016 Ex.PW2/2 showing details of VOGUE's advertising (Already Ex.PW1/13)
3. Certificate issued by Mr. V. Krishnaswami, CA Ex.PW2/3 regarding annual sales figures of VOGUE INDIA magazine from 2007 to 2011
4. Details of the plaintiff's media kit for the year 2011 Ex.PW2/4 (Already Ex.PW1/8)
5. Certificate issued by Mr. V. Krishnaswami, CA Ex.PW2/5 regarding annual sales figures of VOGUE INDIA magazine from the year 2012 to 2015
6. Subscription data of VOGUE INDIA magazine sold Ex.PW2/6 during the period from 2008 to 2017
7. Subscription / sales data of the magazine VOGUE Ex.PW2/7 INDIA sold to airlines, hotels, resorts, travel agency etc. for the period from 2008 to 2017 Digitally signed SANJAY by SANJAY SHARMA SHARMA Date: 2025.06.10 15:34:51 +0530 TM No. 3/2020 Advance Magazine Publishers, Inc. vs. Bombay Rayon Fashions Ltd. & Ors. Page No. 49 of 285
95. PW-3 Mr. Manoj Kumar, Secretary, Trade Mark Oppositions Department at Lall, Lahiri and Salhotra filed examination-in-chief by way of affidavit Ex.PW3/A and supplementary affidavit Ex.PW3/B. He relied on List of Oppositions filed by the plaintiff against third parties using VOGUE mark Ex.PW3/1. In cross-examination, the defendants confronted him with the documents, as under:
Sl. No. Description Exhibit
1. Order dated 22.11.2010 whereby Dy. Registrar of Trade Ex.PW3/D1 Marks ordered that Opposition No. BOM-60955 is dismissed for non-prosecution and Application No. 807099 for registration of the trademark 'PROVOGUE' in Class 25 shall proceed to registration as per law
2. Internet printout of record maintained by Trade Marks Ex.PW3/D2 Registry regarding abandonment of opposition by the plaintiff against registration of the trademark 'EN VOGUE' in Class 16
96. PW-4 Ms. Poulami Laskar, an Associate in the International Trade Marks Department of Rahul Chaudhry & Partners (Earlier Lall, Lahiri and Salhotra) filed examination-in-chief by way of affidavit Ex.PW4/A. She relied on a list regarding registration of the trademark VOGUE in several countries Ex.PW4/1. In cross- examination, the defendants confronted her with the document, as under:
Sl. No. Description Exhibit
1. Portion encircled X1 in the certificate of registration of Ex.PW4/D1 trademark VOGUE in Indonesia
97. PW-5 Ms. Harmeet Bajaj, a Fashion Expert filed examination-in-chief by way of affidavit Ex.PW5/A.
98. During the cross-examination, the defendants confronted PW-5 Ms. Harmeet Bajaj with the following documents, as under:
Digitally signed bySANJAY SANJAY SHARMA TM No. 3/2020 SHARMAPageDate:
Advance Magazine Publishers, Inc. vs. Bombay Rayon Fashions Ltd. & Ors.
2025.06.10
15:34:59 +0530
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Sl. No. Description Exhibit
1. The word VOGUE at point X in Webster's Ex.PW5/D1 Encyclopedic Unabridged Dictionary of the English language
2. Internet printout of an article published in 'THE HINDU Ex.PW5/D2 BUSINESS LINE' dated 15.07.2000
3. Magazine published by the Ministry of Textile 'SILK Ex.D1 MARK Vogue' Volume 10 Issue 37 July - 2017
4. Printouts downloaded from website of NIFT i.e. Ex.D2 http://eg4.nic.in/nift/opac/default.aspx
5. Internet printout of India Today's and Outlook survey of Ex.D3 top 10 fashion designing colleges in India
6. Catalogue of VOGUE INSTITUTE OF FASHION Ex.D4 TECHNOLOGY
99. PW-6 Ms. Aditi, Authorized Representative of NDTV appeared alongwith Authority Letter Mark PW6/A and copy of Board Resolution Mark PW6/B. She did not produce the summoned record as NDTV did not maintain backup of old footage. She was discharged unexamined.
100. PW-7 Deepak Kumar, Online Editor, India News appeared alongwith Authority Letter Mark PW7/A. He stated that the news channel can't produce summoned record as it did not maintain backup of old footage and it was erased after 90 days as per MIB guidelines. He was discharged unexamined.
101. PW-8 Ms. Jyoti Lata, Authorized Representative of BAG Films and Media Ltd. appeared alongwith Authority Letter Mark PW8/A. Similarly, she was also discharged unexamined.
102. PW-9 Narendra Kumar Goyal, Attorney of ZEE Entertainment Enterprises Ltd. appeared alongwith Power of Attorney Mark PW9/A. He stated that a News Broadcaster is required to preserve record of programmes downlinked for a period of 90 days.
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103. PW-10 Jessu George, Channel Producer, Colours Infinity, Viacom 18 Media Pvt. Ltd. produced 20 CDs pertaining to copies recorded from the original record which are Mark PW10/A (colly.).
104. PW-11 Satyam Chaturvedi, India TV News who stated that summoned record is not available as a broadcaster is bound to maintain record of each telecast for 90 days. He produced Board Resolution Ex.PW11/1 in favour of Mr. Rahul Khanna, Authorized Representative of India TV News. He was discharged unexamined.
105. PW-12 Mrinal Bharti, Advocate appeared for CNBC TV 18 and CNN IBN. He submitted affidavits of Mr. Apurv Narula, Manager (Legal), TV 18 Broadcast Limited Ex.PW12/A and Ex.PW12/B, that the original records relating to coverage of launch of VOGUE INDIA in September, 2007 is not available.
106. PW-13 Jitender Grover, Branch Head Delhi - CATI, representative of Vathsala Ravindran and Ashok Das, Directors - M/s. Hansa Research Group Pvt. Ltd. appeared alongwith Authority Letters Ex.PW13/A and Ex.PW13/B. He stated that the summoned record for the year 2007-08 is not available.
107. PW-14 Akshay Chandna, Advocate appeared for ABP News. He filed memo of appearance Ex.PW14/A. He stated that summoned record is not available as it was destroyed after 90 days as per Uplinking Guidelines of the Government of India.
108. PW-15 Sanjeev Srivastava, DGM, TV9, Media Maharashtra Pvt. Ltd. stated that summoned record is not available as the company is expected to keep record of the uplinking for a period of 90 days. He filed Authority Letter alongwith reply and policy guidelines for uplinking of television channels from India Ex.PW15/1.
Digitally signed SANJAY by SANJAY
SHARMA
SHARMA Date: 2025.06.10
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109. PW-16 Sandeep Kumar, Assistant Manager (HR), News World India appeared alongwith Authority Letter Ex.PW16/1. He stated that the summoned record is not available with the company.
110. PW-17 Yatin Dev, Advocate appeared for Mr. Alok Joshi, Managing Editor, CNBC Awaaz. He submitted affidavit of Mr. Apurv Narula, Manager (Legal), TV 18 Broadcast Limited, Ex.PW17/A, that the original record relating to broadcast of launch of VOGUE INDIA on 22.09.2009 is not available.
111. PW-18 Mr. Adil Hasan, a Professional Photographer filed examination-in-chief by way of affidavit Ex.PW18/A.
112. PW-19 Mr. Yogesh Gawde, Accountant in the Finance Department, Conde Nast India Pvt. Ltd. filed examination-in-chief by way of affidavit Ex.PW19/A. He relied on the documents already Ex.PW2/3 and Ex.PW2/5. He relied on the documents, as under:
Sl. No. Description Exhibit
1. Representative invoices and purchase orders qua Ex.PW19/1
advertisement / promotions of VOGUE INDIA and its events through Broadview Mediacom Pvt. Ltd.
2. Photographs of hoardings advertising VOGUE INDIA Ex.PW19/2 magazine and events organized under the VOGUE INDIA brand between 2012 to 2014
3. Certificate under Section 65B Indian Evidence Act Ex.PW19/3
113. PW-20 Ms. Shahnaz Siganporia, Associate Editor, Vogue India, Conde Nast India Pvt. Ltd. filed examination-in-chief by way of affidavit Ex.PW20/A. She relied on the documents, as under:
Sl. No. Description Exhibit
th
1. 10 Anniversary Special Edition of VOGUE INDIA Ex.PW20/1
(October, 2017 Edition)
2. VOGUE WELLNESS GUIDE 2014 Ex.PW20/2
3. VOGUE WEDDING BOOK 2015 Ex.PW20/3
Digitally signed by
SANJAY SANJAY SHARMA
SHARMA Date: 2025.06.10
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4. VOGUE WEDDING BOOK 2016 Ex.PW20/4
5. CASA VOGUE 2017 Ex.PW20/5
6. Media kits of VOGUE WELLNESS GUIDE 2015 Ex.PW20/6
7. Media kits of CASA VOGUE 2015 Ex.PW20/7
8. VOGUE INDIA 'The Influence Report 2008 / 2009' Ex.PW20/8
9. CD containing comments made by the celebrities on Ex.PW20/9
10th Anniversary of VOGUE INDIA
10. VOGUE INDIA magazine edition of March, 2017 Ex.PW1/77
THE DEFENDANT'S EVIDENCE:
114. DW-1 Mr. Deepak Bindal filed evidence by affidavit Ex.DW1/A. He relied on a list of consumers, retailers or wholesalers of the defendant No. 1 Ex.DW1/1 and Order Forms from April, 2017 to March, 2019 Ex.DW1/2. In his cross-examination, the plaintiff confronted him with a fabric sold by the defendant No. 1 Ex.DW1/P1.
115. DW-2 Mr. Prakash Babu Mali, Vice President Commercial, Bombay Rayon Fashions Ltd. filed examination-in-chief by way of affidavit Ex.DW2/A. He relied on the documents, as under:
Sl. No. Description Exhibit
1. Sales invoices of the defendant No. 1 for year 2014 - 17 Ex.DW2/1
2. Certificate under Section 65B Indian Evidence Act Ex.DW2/2
116. DW-3 Chinmay Padhi, Manager - EBO Sales, Bombay Rayon Fashion Limited filed examination-in-chief by way of affidavit Ex.DW3/A. He relied on the documents, as under:
Sl. No. Description Exhibit
1. Internet printout of definition of the world 'VOGUE' Ex.DW3/1
2. Certificate under Section 65B Indian Evidence Act Ex.DW3/2
3. Internet printouts of 3rd party websites using trademark Ex.DW3/3
VOGUE standalone or in conjunction with other words
4. Photos of 3rd parties using VOGUE as trademark / trade names Ex.DW3/4
5. Certificate under Section 65B Indian Evidence Act Ex.DW3/5 Digitally signed by SANJAY SANJAY SHARMA SHARMA Date: 2025.06.10 15:35:29 +0530 TM No. 3/2020 Advance Magazine Publishers, Inc. vs. Bombay Rayon Fashions Ltd. & Ors. Page No. 54 of 285
6. Copy of magazine SILK MARK published by the Ex.D1 Ministry of Textile, Government of India
7. Copy of catalogue of VOGUE INSTITUTE OF Ex.D4 FASHION TECHNOLOGY
8. Search report of mark VOGUE in Class 16 from the Ex.DW3/6 official website of Trade Mark Registry
9. Search report of mark VOGUE in Class 24 from the Ex.DW3/7 official website of Trade Mark Registry
10. Search report of mark VOGUE in Class 25 from the Ex.DW3/8 official website of Trade Mark Registry
11. Search report of mark VOGUE in Class 35 from the Ex.DW3/9 official website of Trade Mark Registry
12. Copy of List of Stores of the defendant No. 1 Ex.DW3/10
13. Copy of Major Brand / Customers of the deft. No. 1 Ex.DW3/11
14. Advertisements of the defendant's product under the Ex.DW3/12 defendant's trademark
15. Illustrative promotional material and advertisement of Ex.DW3/13 the defendant in newspapers and magazines
16. Documents certifying installation of signage including Ex.DW3/14 retailer boards / digital print board of the deft. No. 1
17. Awards and certificates awarded to the defendant No. 1 Ex.DW3/15
18. Facebook Analytic Report of the defendant's trademark Ex.DW3/16
19. News article 'Retail Icons' dated 03.03.2017 Mark DW3/X
20. News article dated 09.03.2017 in Pune Times Mark DW3/X1
117. During the cross-examination, the plaintiff confronted DW-3 Chinmay Padhi with the following documents, as under:
Sl. No. Description Exhibit
1. Silk Mark Magazine July-September, 2019 Issue Ex.DW3/P1
2. A cloth piece / product of the defendant No. 1 Ex.DW3/P2
3. Tax Invoice No. 308 dated 21.02.2018 Ex.DW3/P3
4. A cloth piece / product of the defendant No. 1 Ex.DW3/P4
5. Tax Invoice No. 2017-18/1261 dated 21.02.2018 Ex.DW3/P5
6. Visiting card of Mr. B.M. Arora of Saraswati Fab Ex.DW3/P6
118. DW-4 Shammi Kapoor, Partner of the defendant No. 3 Digitally
signed by
filed examination-in-chief by way of affidavit Ex.DW4/A. SANJAY SHARMA SANJAY SHARMA Date:
2025.06.10 15:35:40 +0530 TM No. 3/2020 Advance Magazine Publishers, Inc. vs. Bombay Rayon Fashions Ltd. & Ors. Page No. 55 of 285 APPEARANCE:
119. I have heard arguments of Ms. Anuradha Salhotra, Advocate for the plaintiff and Mr. Hemant Singh, Advocate for the defendants and examined the pleadings and documents and written arguments filed by the parties.
120. I have also heard arguments of Ld. Counsel for the parties recorded, through 'CISCO Webex'.
THE CONTENTIONS OF THE PLAINTIFF:
121. Ld. Counsel for the plaintiff contended that the dispute is relating to use of the trademark 'VOGUE' by the defendant No. 1 as part of trademark 'LINEN VOGUE La Classe'. She contended that the defendant No. 1 often use the trademark 'LINEN VOGUE' per se in relation to its products / advertisements. In that regard, she referred printout of the website of the defendant No. 1 Ex.DW3/10, printouts of the advertisement of the defendant No. 1 Ex.DW3/12, copies of advertisements of the defendant No. 1 Ex.DW3/13, printouts of 'Lookbooks' from the website of the defendant No. 1 Ex.PW1/105, printout from the website co-lab India Ex.PW1/107, carry bag of the defendant No. 1 Ex.PW1/108 and the fabric of the defendant No. 1 Ex.DW1/P1. She contended that the plaintiff has more than 1,100/-
international registrations Ex.PW4/1 including 22 registrations in India Ex.PW1/18 to Ex.PW1/39. She contended that the plaintiff is using the trademark 'VOGUE' since 100 years. In that regard, she referred 100th Anniversary Special Edition of 'VOGUE' USA Magazine Ex.PW1/2, article 'On the Edge' Ex.PW1/3, article 'Anna's World' Ex.PW1/5, article by Caroline Weber Ex.PW1/6 and article 'Magazines Use Online Ads As Selling Points' Ex.PW1/47.Digitally signed SANJAY by SANJAY SHARMA SHARMA Date: 2025.06.10 15:35:48 +0530 TM No. 3/2020 Advance Magazine Publishers, Inc. vs. Bombay Rayon Fashions Ltd. & Ors. Page No. 56 of 285
122. Ld. Counsel for the plaintiff contended that the plaintiff adopted the trademark 'VOGUE' in 1892 in relation to fashion magazine and the said mark has become a formidable mark in the field of fashion and also features in the list of ' well-known trademarks' of the Registrar of Trademark Ex.PW1/40. She contended that the plaintiff has extended use of the trademark 'VOGUE' in relation to variety of goods and services. She contended that the plaintiff is using the trademark 'VOGUE' as a prominent feature of various composite marks, which are registered in India. She contended that the trademark 'VOGUE' is also an essential part of various unregistered composite trademarks for example (a) Vogue India Fashion Fund (b) Vogue India Beauty Awards (c) Vogue Wedding Show (d) Vogue Empower (e) Vogue's Fashion Night Out
(f) Vogue Diaries (g) Vogue Eyeview (h) Vogue Loves (i) Vogue Merchandise (j) Vogue Picks (k) In Vogue (l) Vogue Promotions (m) Vogue Shops (n) Vogue Fashion Fiesta (o) Casa Vogue (p) Vogue Wellness (q) Vogue BFF's and (r) Vogue Fashion Night In. She contended that the plaintiff is publishing more than 20 foreign editions of 'VOGUE' magazine using the name of the country as a ' suffix' to the mark 'VOGUE' e.g. (a) Vogue Australia (b) Vogue Brazil (c) Vogue China (d) Vogue Germany (e) Vogue India (f) Vogue Italy (g) Vogue Korea (h) Vogue Mexico (i) Vogue Japan (j) Vogue Netherlands (k) Vogue Paris (l) Vogue Portugal (m) Vogue Russia (n) Vogue Spain (o) Vogue Taiwan (p) Vogue Thailand (q) Vogue Turkey (r) Vogue Ukraine (s) Vogue USA and (t) Vogue UK. She contended that the word 'VOGUE' is part of 13 domain names registered for various countries, vide Ex.PW1/15 and Ex.PW1/16.
Digitally signed SANJAY by SANJAY
SHARMA
SHARMA Date: 2025.06.10
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