Legal Updates

Intellectual Property – Community Trade Mark – Injunctions – Trade mark – Virgin Enterprises

In the recent case of Virgin Enterprises Ltd v. Casey, the High Court considered the issue of conceptual similarity between the marks, “CARBON VIRGIN” and “VIRGIN”.

BACKGROUND

Mr Casey had applied to register CARBON VIRGIN for various goods and services in Class 35.

Class 35 from the UK Intellectual Property Website:-

Advertising; business management; business administration; office functions; electronic data storage; organisation, operation and supervision of loyalty and incentive schemes; advertising services provided via the Internet; production of television and radio advertisements; accountancy; auctioneering; trade fairs; opinion polling; data processing; provision of business information; retail services connected with the sale of [list specific goods].

Opposition of registration

The appellant, Virgin Enterprises Ltd (VEL), opposed registration on the grounds that the mark applied for was identical and/or confusingly similar to a number of its marks and that its use would infringe and constitute passing off.

HEARING

Decision

The hearing officer disagreed and rejected the opposition.

Appeal

VEL appealed the hearing officer's findings, claiming that he made six errors of law in relation to two of its original grounds for opposition, which were:

• In relation to art 5(2)(b) of the Trade Marks act 1994 (“TMA”), the mark is similar to its VIRGIN and VIRGIN GREEN FUND registered marks and the Virgin signature mark in respect of similar services; and
• In relation to art 5(3) TMA, the mark takes unfair advantage of the reputation enjoyed by 13 of VEL's similar or identical marks.

Mr Justice Norris pointed out that for the appeal to be successful it must show errors of law or procedural irregularity.

The alleged errors under s5(2)(b) TMA:

First claim

• That the hearing officer treated VEL’s marks as having only a dictionary definition, irrespective of context, when used alone.
• The hearing officer had concluded that, conceptually, the primary and dominant meaning of VIRGIN was in the sexual sense and CARBON VIRGIN expressed the concept of someone naive or inexperienced in a particular context, so the word VIRGIN had a subtly different meaning in each mark, leading to different concepts being created in the mind of the average consumer.
• The court saw no error of principle. The finding that different concepts were involved was open to the hearing officer on the evidence. There was ample evidence that VEL exploited the sexual innuendo in VIRGIN but none suggested that VEL was alluding to inexperience when it offered its services. The court therefore rejected this first ground of appeal.

Second claim

• That the hearing officer determined the conceptual meaning of the marks without reference to the services for which they were registered.
• The court held the contrary.

Third claim

• VEL claimed that it was an error of law for the hearing officer to have treated conceptual similarity as determinative.
• Dismissed by the court. The hearing officer had properly considered visual, aural and conceptual similarity and had made a global assessment based on them.

Fourth claim

• That, in concluding there was no likelihood of direct confusion, the hearing officer had mistakenly believed there could only be direct confusion where the marks themselves are identical.
• The hearing officer selected VIRGIN and CARBON VIRGIN as the closest match in the context of advertising services. He recalled that there is a very low level of conceptual similarity since the "VIRGIN" mark makes a risqué sexual reference whereas the "CARBON VIRGIN" mark alludes to inexperience or naivety. He concluded that this was enough to differentiate the marks in the mind of the consumer. The hearing officer certainly did not say there can only be direct confusion where the signs are identical.

The alleged errors under s5(3) TMA:

Fifth claim

This relied on the allegation that the hearing officer had been wrong to conclude that the level of conceptual similarity between VIRGIN and CARBON VIRGIN was such that the average consumer would not see a link with VEL. The point had been rejected under s5(2)(b) TMA and was also rejected here.

Sixth claim 

• VEL contended that the hearing officer misunderstood what kind of link was necessary to satisfy s5(3) TMA. VEL alleged that the hearing officer was looking for an economic link to VEL whereas the real link is to the earlier mark (not its proprietor), that link consisting of calling the earlier mark to mind.
• The court disagreed, saying that the hearing officer had clearly followed the case law. He did not think the necessary link was to the proprietor rather than the mark and he did not think it had to be economic. The court declined to re-evaluate the weight given to the various factors by the hearing officer.

SUMMARY

The court dismissed all aspects of the appeal.

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© RT COOPERS, 2011. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.