In Vogue: The art of spotting a commercial opportunity

Written by Margaret Briffa | October 2, 2018

IP Contracts

Vogue Magazine is taking Black Vogue, a business set up by 26 year old Nareasha Willis to sell fashion items and accessories to court. At first blush the claim seems to be clear cut. Vogue is well known in fashion publishing, with established trade mark rights in a number of fashion related areas. It follows that there is a high risk that Black Vogue will be confused as associated with Vogue.

But delve a bit further and the background of this dispute is interesting. Earlier this year Teen Vogue, a magazine in common ownership with Vogue, ran a glowing story about Willis’ fashion brand Black Vogue. It declared that Black Vogue would present an “alternative, more inclusive, fashion image.” It would also address the imbalance on mainstream platforms which according to Willis were not doing enough to properly highlight the positive contributions of black people in fashion.” At least one part of the Conde Naste owned Vogue Empire therefore was aware of Ms Willis’ brand and business and did not immediately flag it as an issue.

Fast forward a few months and the matter then came to Vogue’s attention, again as a result of Willis filing for a trademark to protect the brand Black Vogue in various fashion related categories. A cease and desist letter from Vogue to Willis asking that she withdraw the mark was refused and subsequent attempts to contact Willis had drawn a blank. Vogue say in this scenario they are left with no option than to issue a claim and challenge the filing. It is true that issue of proceedings forces the other side to engage with you or suffer the consequences of loss of right and payment of compensation to your opponent. But, did things have to get to this in this case?

Willis is an activist and designers with talent. She has captured the public mood and clearly spotted an opportunity, not just for herself and her brand but potentially for Vogue. Leaving the issue of the name aside, does Willis have the skills to run a business and make a success of it? If so is there potentially room here for the parties to work together on this in some way. Rather than a court case can the parties consider a joint venture of some sort where Willis benefits from the goodwill and reputation attaching to the Vogue name and Vogue benefit from adding a whole new arm to its business? Once lawyers get involved the commercial opportunity presented by a problem can get lost. It’s important however not to lose sight of the bigger picture as we go about protecting rights and drafting commercial contracts for businesses and individuals.

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