Use of VIRGIN mark held to be contrary to law

Australia

In Virgin Enterprises Limited v Virgin International Pty Ltd ([2010] ATMO 38, May 27 2010), the delegate of the registrar of trademarks has upheld an opposition filed by Virgin Enterprises Limited against the registration of the stylised trademark VIRGIN.

Virgin International Pty Ltd applied for the registration of the trademark for condoms. The opponent pursued an opposition on two grounds - namely:

  • the applicant had no intention to use the mark (Section 59 of the Trademarks Act 1995); and
  • use of the mark was contrary to law (Section 42(b)).

In its evidence in answer, the applicant declared that it had arranged for the manufacture and importation of 20,000 condoms from China for intended sale in Australia under the mark.

For the purposes of its Section 59 ground of opposition, the opponent submitted that the applicant's evidence was unreliable. This submission was based on a number of factors, including the following:

  • The applicant had failed to provide any substantiating documentation to corroborate the alleged shipment of condoms to Australia;
  • The opponent's inquiries had not revealed any active business conducted by the applicant or its related company, Virgin Condoms Pty Ltd, to support use of the mark; and
  • The opponent's search of the online Therapeutics Goods Register did not find an entry in respect of condoms required to support the importation of the goods into Australia for sale.

While the delegate conceded that the applicant's evidence as to the importation of the 20,000 condoms might easily have been corroborated with copies of relevant documentation, he was satisfied on the balance of probabilities that the shipment did take place. Consequently, the Section 59 ground of opposition failed.

For the purposes of its Section 42(b) ground of opposition, the opponent relied on the evidence given by the applicant regarding use of the mark and the fact that Section 41MI(4) of the Therapeutics Goods Act 1989 states that, subject to certain exceptions, "a person commits an offence if... the person imports a medical device into Australia unless the device in question is included in the [Therapeutics Goods] Register”.

At the hearing, the applicant conceded that it had not applied for inclusion of the goods on the Therapeutics Goods Register at the time it applied for registration or at the time of the importation of the goods (even though the delegate subsequently located an entry in the Therapeutics Goods Register in respect of condoms dating from September 2 2009, in the name of Virgin Condoms Pty Ltd).

To be caught by Section 42(b), it is necessary that use of the mark as at the relevant date would be contrary to law, and not that there is "the mere prospect of unlawful use". The applicant had already used the mark without the necessary regulatory approval, which was unlawful. The delegate distinguished this scenario from cases where applications were filed without approval and there was no use of the mark (ie, there was only a prospect of unlawful use).

The delegate cited Osgaig Pty Limited v Shigemitsu Industry Pty Ltd ([2006] ATMO 41, May 26 2006), where use subsequent to filing was found by the Federal Court to breach Sections 52 and 53 of the Trade Practices Act 1974. In that case, Shigemitsu was required to take action that disclaimed any association with Osgaig's business for a period of one year. Although that period had expired by the time the related opposition proceedings were heard, the hearing officer considered the use that had occurred subsequent to filing as establishing the use intended at the filing date. Therefore, he found that the intended use at the filing date of the trademark application would also have been unlawful.

In the present case, as the applicant’s use without the necessary regulatory approval was unlawful, it was found that the relevant intended use would also have been unlawful. The opponent thus established the ground of opposition that the applicant’s use would be contrary to law.

The applicant owns a number of later filed applications, so while the opponent has won this battle, it remains to be seen who will ultimately succeed.

Kathy Mytton and Sean McManis, Shelston IP, Sydney

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