The main legal point established in the judgment is the stringent requirements for proving infringement under Section 29(4) of the Trade Marks Act, 1999, including the need for a distinctive character and extensive reputation of the registered trade mark in India, and the requirement to prove deceptive similarity between the competing trade marks.

1. This Notice of Motion is taken out by the Plaintiffs in a trademark infringement and passing off suit, seeking a temporary injunction restraining the Defendant from using the word 'VOGUE' as part of their impugned trade mark “JUST IN VOGUE” or any other deceptively similar mark or trade name in relation to its goods and services.

2. The Plaintiffs are registered proprietors and users of the trademark “VOGUE” in respect of magazines, which are said to be published and sold in several countries around the world including India. Plaintiff No. 1 is a corporation organized under the laws of the State of New York, U.S.A. and is the proprietor of the trade mark “VOGUE” and claims to be using the same in relation to its fashion and lifestyle magazine of the same name since the year 1892. Plaintiff No. 2 is a wholly owned subsidiary of Plaintiff No. 1 and claims to be a licensed/permitted user of the trademark in India. Though the Plaintiffs claim to be using the trademark in India through their magazines imported in India since long, the Indian edition of the magazine “VOGUE” was launched only in 2007. The trademark has, however, been registered in India by Plaintiff No. 1 in the year 1976 in class 16 in relation to magazines (publications) and in the year 2004 in class 41 in respect of online and electronic publications. Besides, Plaintiff No. 1 also holds registrations of marks “VOGUE GIRL” in classes 9 and 16 for electronic publications and magazines etc. and “TEEN VOGUE” in class 41 for online and electronic publications. The Plaintiffs have furnished the details of circulation of the Plaintiffs' magazine under the trademark “VOGUE” in India before its launch in India in 2007 in terms of subscriptions and news stands details between the years 2000 and 2007 and sales of their issues of “VOGUE INDIA” since the launch in 2007 and till 2011. The Plaintiffs refer to the reputation of the magazine “VOGUE” in India since 1930, a survey conducted in early 1997 in India about its readership in India, the grand launch of “VOGUE INDIA” in 2007, the quotes of Indian celebrities, publications in reputed international journals as also decided cases of various courts of the United States of America as well as India, in support of their case that trademark “VOGUE” is a well-known mark entitled not only to protection in the classes in which it is registered but also other classes generally. The Plaintiffs' case is that “VOGUE” magazine contains a section called “IN VOGUE” pertaining to new trends in fashion goods, and that the word “IN VOGUE” has also accordingly acquired the characteristics of a trademark by extensive user of the word by the Plaintiffs and forms part of the goodwill of the Plaintiffs.

3. It is the Plaintiffs' grievance that in or around January 2009, the Plaintiffs came to know of the Defendant's application for registration of the trade mark “JUST IN VOGUE” in class 35 in respect of retail stores and sales services, etc. The Plaintiffs thereupon caused a notice of opposition to be filed through their attorneys. Upon making further inquiries, the Plaintiffs claim have learnt of the Defendant's use of the trade mark “JUST IN VOGUE” in relation to retail stores and sales services. Considering particularly the range of merchandise dealt in by the Defendant, which includes various fashion goods and high end products, it is the Plaintiffs' grievance, the Defendant's use of the trademark “JUST IN VOGUE” featuring prominently the word “VOGUE” amounts to an infringement of the Plaintiffs' well-known trademark “VOGUE”. The Plaintiffs claim that the adoption by the Defendant of the impugned mark is ex facie deliberate, willful and mala-fide with intent to capitalize on the goodwill and reputation of the Plaintiffs and give an impression to the public that the services of the Defendant are associated with or connected to the Plaintiffs. The Plaintiffs claim that the Defendant is thereby not only infringing the Plaintiffs' registe