Virgin fails to prevent registration of VIRGIN mark

United Kingdom
A hearing officer at the UK Intellectual Property Office has rejected Virgin Enterprises Ltd's opposition against the registration of the mark YOU CAN’T BE A VIRGIN ALL YOUR LIFE ITS TIME on all grounds, thereby allowing the registration of the first mark containing the word 'virgin' that is wholly unconnected with the Virgin group (Case O-216-09, July 23 2009).

Bodtrade 54 (Pty) Ltd applied to register the phrase 'you can't be a virgin all your life its [sic] time' in respect of telecommunications and café services. Virgin opposed the application on the basis of its earlier registrations for VIRGIN MOBILE and VIRGIN for identical services under Sections 5(2)(b), 5(3) and 5(4) of the Trademarks Act 1994. Virgin alleged that Bodtrade’s mark:
  • was likely to cause confusion among consumers;
  • would take unfair advantage of the reputation of Virgin’s earlier registrations; and
  • would infringe its common law rights.
Virgin gave evidence that with the exception of some marks registered for olive oil, in which the word 'virgin' is descriptive, and the mark VIRGIN HILLS, which was registered pursuant to an agreement with Virgin, all registered UK trademarks featuring the word 'virgin' were owned by Virgin.

Virgin also gave evidence that it regularly introduced new products under the VIRGIN mark, together with either a descriptive word or a distinctive sub-brand. It argued that members of the public had an expectation that Virgin or its licensees would frequently launch new and different products and that any new marks incorporating the word 'virgin' would emanate from Virgin. Accordingly, any third-party use would confuse members of the public, trade on the reputation of Virgin and risk damage to Virgin’s reputation, as Virgin would have no control over the goods or services offered under the third-party mark.

The hearing officer accepted Virgin’s submissions that the services covered by the two marks were identical and that Virgin’s earlier marks were highly distinctive. However, he considered that there was little visual or aural similarity between the two marks, since the only similarity was that Virgin’s mark made up the fifth word of Bodtrade’s 10-word mark. 

Turning to conceptual similarity, the hearing officer considered that the fact that Virgin used the word 'virgin' as a brand did not mean that it had lost its original meaning. He accepted that Bodtrade’s mark was not limited to a person who had not had sexual intercourse, but rather that it used the word 'virgin' figuratively to indicate a suggestion that it was time to try something new. The hearing officer considered that although the word 'virgin' was distinctive, being only a small part of a 10-word phrase, it was not the dominant or distinctive element of Bodtrade’s mark.

The hearing officer held that the average consumer (being either a business or a member of the general public in respect of telecommunications services, and a member of the general public in respect of café services) would not expect there to be an economic connection between Virgin and Bodtrade. The ground of opposition based on Section 5(2)(b) thus failed.

Considering the Section 5(4) ground, the hearing officer accepted that Virgin enjoyed protectable goodwill at the relevant date. However, since he concluded that there was no likelihood of confusion, this ground of opposition also failed.

As regards unfair advantage, in light of the decisions of the European Court of Justice in General Motors (Case C-375/97), Intel (Case C-252/07), adidas-Salomon (Case C-408/01) and L'Oréal v Bellure (Case C-487/07), the hearing officer considered that the relevant factors were as follows:
  • Virgin’s mark was highly distinctive for the services at issue;
  • Virgin’s mark was essentially unique on the UK market;
  • the services and users were the same;
  • Virgin’s VIRGIN mark had a huge reputation generally, and its VIRGIN MOBILE mark had a smaller reputation in the field of telecommunications services; and
  • there was very little similarity between the two marks.
The hearing officer held that the final factor meant that the relevant public would not make a link between Bodtrade’s mark as a whole and Virgin’s mark. He went on to state that even if there were such a connection, the opposition under Section 5(3) also failed since it had already been established that there was no likelihood of confusion.

Virgin stated that it felt that it had no choice but to oppose this mark, as Bodtrade had not said what it planned to do with the mark and very little background information about the company was available. It remains to be seen whether Virgin will appeal the decision.

Désirée Fields, McDermott Will & Emery UK LLP, London

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