Tuesday August 18th 2009, by Piers Strickland
As picked up by the Daily Telegraph, the UK’s Intellectual Property Office, more commonly known as the Patent Office or the Trade Mark Registry, has recently rejected a trade mark application filed by a South African company for the phrase “You can’t be a virgin all your life, it’s time“, for use in respect of telecommunications, cafes, restaurants and bars.
Richard Branson’s Virgin Group lodged an opposition against this trade mark application on several grounds:
- Section 5(2) (b) of the Trade Marks Act 1994:“(2) A trade mark shall not be registered if because –
(b) it is similar to an earlier trade mark and is to be registered for
goods or services identical with or similar to those for which the
earlier trade mark is protected,
there exists a likelihood of confusion on the part of the public, which
includes the likelihood of association with the earlier trade mark.” - Section 5(4)(a) of the Trade Marks Act 1994 states that a trade mark shall not be registered:“…if, or to the extent that, its use in the United Kingdom is liable to be prevented by
virtue of any rule of law (in particular, the law of passing off) protecting an
unregistered trade mark or other sign used in the course of trade” - Section 5(3) of the Trade Marks Act 1994 states that a trade mark application which is
(a) is identical with or similar to an earlier trade mark, shall not be
registered if, or to the extent that, the earlier trade mark has a
reputation in the United Kingdom (or, in the case of a Community
trade mark, in the European Community) and the use of the later mark
without due cause would take unfair advantage of, or be detrimental to,
the distinctive character or the repute of the earlier trade mark.”
On the s.5(2)b ground, the UK Intellectual Property Office held that the various prior trade mark registrations cited by Virgin were not similar enough to the applicant’s mark. Furthermore, the UK Intellectual Property Office did not consider the word VIRGIN to be the dominant part of the applicant’s trade mark. Therefore, Virgin’s opposition to the trade mark application was rejected on this ground.
On the s.5(4) ground, Virgin was essentially relying on the English common law of passing off. In order for a party to claim rights under the law of passing off various element must be satisfied. There are various formulations of the law of passing. The formulation used by the UK Intellectual Property Office in these trade mark opposition proceedings was broadly as follows:
- that the claimant’s goods or services have acquired a goodwill or reputation in the market in respect of some identifying get-up;
- that there has been a misrepresentation by the defendant which leads is or likely to lead the public to believe that goods or services offered by the claimant are goods or services of the defendant; and
- that the claimant has suffered or is likely to suffer damage as a result of the defendant’s misrepresentation.
The UK Intellectual Property Office held that the use by the applicant of the word VIRGIN in a ten work trade mark did not amount to a misrepresentation under the law of passing off. Accordingly, Virgin’s opposition failed under this head as well.
In respect of the final ground of trade mark opposition put forward by Virgin, s.5(3) of the Trade Marks Act 1994, the UK Intellectual Property Office held that while Virgin did have a sufficient “reputation” for the purposes of the Trade Marks Act 1994, the UK Intellectual Property Office rejected the argument that there would be any likely detriment to the Virgin brand by the use of the applicant’s trade mark, such as: (a) disturbing the “visual uniqueness” of the Virgin brand or (b) tarnishing the Virgin brand. The UK Intellectual Property Office also rejected the allegation that this trade mark registration would allow the trade mark applicant to “ride on the coat-tails of Virgin“. The UK Intellectual Property Office rejected this argument on this basis that:
“The differences between the marks and the nature and context of the use
of the word Virgin in the applicant’s mark make it difficult to see how the reputation of
the earlier mark could possibly be projected onto the applicant’s mark”
COMMENT: this case shows the limits to which even the most closely cultivated brands and registered trade mark portfolios can be protected. The fact that VIRGIN is a commonly used word in the English language means that it is harder to protect than a more unusual word / trade mark, such as perhaps KODAK. That is not to say that the Virgin Group has not had great success in developing a highly successful brand and have in most instances in the past no doubt prevented other traders from using the word VIRGIN in a wide range of goods and services.
However, when another trader wants to use the word VIRGIN in a non-dominant fashion, merely using the word in its plain English descriptive sense, in way which is unlikely to confuse, misrepresent or cause detriment to the Virgin brand, then the Virgin Group may again struggle to restrain such use. Of course, this still gives the Virgin Group plenty of potential arguments to claim that use of the VIRGIN by another trader should not be allowed. Furthermore, this case was unique to the facts and does not mean that many other traders will be free to use the word VIRGIN. Instead each situation will be judged on its own unique set of facts.
