VOGUE in vogue in Vogue

I love Cornwall! I have been there on holiday and had a fantastic time. But I’ve never heard of a village called “Vogue”, which is near the town of Redruth. It appears that the publisher Conde Nast had never heard of it either, as they ended up sending a cease and desist letter to a local pub alleging that the pub’s activities would create confusion with their famous VOGUE magazine.

This quickly became a high profile story and thankfully was resolved amicably in the end, with the publisher being quick to admit their mistake and even sending a framed apology to the pub!  Everyone ends up with good PR, and I am sure that the Star Inn will get a lot of visitors off the back of all the fuss!

But of course I was interested to dig in to the background a little bit.

It seems that the whole saga was triggered after the pub’s owners decided to incorporate as a limited company, whcih they called “the Star Inn at Vogue”: you can see this on the UK official register, Companies House.

Now, when you have a brand it is a good idea to keep an eye out for any activities that may infringe your brand.  One of the first things you can do is monitor trade mark applications that are filed by other parties.  This is an effective way to pick up problems early and prevent similar registrations being made which can dilute your own protection.

But in addition, you should also check for other uses outside of trade mark applications – after all, people who are deliberately trying to rip off your brand will not tend to apply for a registration because they know this may be picked up!  So, it is a good idea to look at general market activity, by regular monitoring of the web, social media and online shops.

In addition, you can also get some intelligence from monitoring company registers, and this is what Conde Nast seem to have been doing in this case, presumably searching for the word VOGUE.

This all makes sense, and is something that we would certainly recommend.  Any “signal” that gives data has some value.

But here’s the thing: having a particular word in a company name is not the same thing as using that word in the course of trade, for specific goods and services which would overlap and cause confusion with a registered trade mark. It’s a big leap to assume that a word would be used in a particular way and cause a problem.

Having said that, it should be fairly uncontroversial to write to a new business and say “by the way, we own BRAND-X, so we just want to make you aware of it so that you can avoid using that word in trade”.  That can be done in a friendly informatve way, if you even want to bother.

I don’t see that a cease and desist woud have had any real grounds, and any action would have been very very unlikely to succeed (with the disclaimer that I’ve not seen the actual letter!).

People often get confused with the rights in a company name and trade mark rights.  These are different things.  Company names can be registered if they are different from other company names.  Trade marks are infringed if someone else’s brand is the same or confusingly similar.

So, in conclusion:

• If you are considering using a famous brand in your company name, it may be woth thinking twice, even if it is actually permitted.
• Also, if you are monitoring company registrations to protect your brand, it may be wise to do your research before firing off aggressive warning letters!

In the meantime, I may well check out their breakfast when I am next in the area!

At Scintilla, we help innovative companies get a grip on their intellectual property. Our unique commercial approach combines registration of patents and trade marks with strategic input so that IP can be a springboard for business growth. If you would like to discuss your IP needs, do contact us or book a free initial consultation!