Virgin successfully opposes diluting VIRGIN OIL mark

In Virgin Enterprises v Virgin Oil Limited, the UK Patent and Trademark Office has upheld Virgin Enterprises' opposition to the registration of the mark VIRGIN OIL on the grounds that it was likely to be confused with the famous VIRGIN mark and would dilute it. The hearing officer considered that Virgin Oil did not have due cause to use the mark.

Virgin Oil Limited applied to register a stylized word mark for VIRGIN OIL (with the 'o' of 'oil' comprising two semi-circular arrows) in relation to industrial oils and greases (in Class 4 of the Nice Classification) and filters for engines (Class 7). Virgin Enterprises opposed the application on the basis of its prior registration for VIRGIN in relation to automobiles, and parts and fittings in Class 12. It claimed that:

• the goods for which the new registration was sought were similar to those to which its VIRGIN mark applies in Class 12, which is contrary to Section 5(2) of the Trademarks Act 1994;
  
  
• Virgin Oil's mark would constitute passing off under Section 5(4)(a) of the act; and
  
  
• it would take unfair advantage of, or be detrimental to, the distinctive character or repute of the VIRGIN mark contrary to Section 5(3) of the act.

The hearing officer upheld the opposition. First, he considered that the goods covered by Virgin Oil's application in Class 7 were somewhat similar to those covered by Virgin Enterprises' registration in Class 12. This low level of similarity of goods gave rise to a likelihood of confusion under Section 5(2) when combined with the high degree of similarity between the marks and the highly distinctive nature of the VIRGIN mark. However, the hearing officer considered that the goods covered by Class 4 were not sufficiently similar to Virgin Enterprises' Class 12 registration to be caught by Section 5(2).

Second, the hearing officer determined that the reputation of the VIRGIN mark is unusual in that it is founded on goods and services that would not typically be provided by one undertaking - for example drinks and financial services. This made it far more likely that the public would assume that other VIRGIN trademarks originated from the same group. Coupled with the virtual uniqueness of the VIRGIN mark in the marketplace, the hearing officer concluded that a significant proportion of the relevant public would believe that a new oil or fuel product offered for sale under the VIRGIN OIL mark would be connected with Virgin Enterprises. This would damage the distinctive character of the VIRGIN mark. Such a finding meant that Virgin Oil would need to show that its use of VIRGIN OIL was with due cause, in order to prevent a finding against it based on Section 5(3).

However, the hearing officer rejected Virgin Oil's assertion that 'virgin' is a term of art describing oils that have the highest level of purity and thus was used with due cause. The hearing officer commented that there was no evidence that the term was used in relation to other oils besides olive oil. He also pointed out that even if Virgin Oil had been able to establish that the use of the term 'virgin' was with due cause because of its descriptive nature in the relevant field, this would have cast doubt on whether the mark applied for was sufficiently distinctive to be registered.

Accordingly, the hearing officer found that Virgin Oil's mark would dilute the VIRGIN mark pursuant to Section 5(3) of the Trademarks Act in relation to the goods that survived the opposition under Section 5(2). On this basis, he did not go on to consider Virgin Enterprises' case on section 5(4) of the act.

Jane Mutimear, Bird & Bird, London