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Home | News & events | Legal updates | Virgin loses out in trade mark ruling
Virgin loses out in trade mark ruling
29 July 2009
South African company Bodtrade has registered the phrase: 'You can't be a virgin all of your life, it's time', despite opposition from global brand Virgin Enterprises Limited.
Virgin objected to Bodtrade's application for the phrase - in respect of telecommunications and catering services - on the basis it had a ‘huge' reputation in its trade mark VIRGIN for a wide range of goods and services, including telecommunications and catering services.
Virgin claimed that if the application were granted, it would take an unfair advantage of, or would be detrimental to, the VIRGIN trade mark.
It also argued that the public would be confused into thinking Bodtrade was in some way associated with Virgin as ‘the public has an expectation that [Virgin]...will introduce new and different products and services on a regular basis', and therefore the public would assume the phrase was connected to Virgin.
Bodtrade refuted the claims, stating that Virgin does not, and should not, have exclusive use of the word ‘virgin', and that in any event ‘virgin' was only one word in a phrase using 10.
IPO ruling
The Intellectual Property Office (IPO) rejected Virgin's opposition to the registration, as it considered there to be very little similarity between the phrase and the VIRGIN trade mark.
Although the word ‘virgin' was a distinctive word, it was not a distinctive feature of Bodtrade's phrase, which included nine other words.
The IPO also found that:
- there was a lack of similarity between the phrase and the VIRGIN mark, so it was unlikely the average consumer would assume any connection between the two companies
- speculative concerns regarding the quality of Bodtrade's services only presented ‘a hypothetical risk of tarnishing and [did] not represent [a] serious risk or likelihood of tarnishing'
- Bodtrade would not be ‘riding on the coat tails' of Virgin's success, as ‘the differences between the marks and the nature and context of the use of the word virgin in the [phrase] make it difficult to see how the reputation of the earlier mark could possibly be projected onto [Bodtrade's] mark'
What does this mean?
Even if you have an established global reputation, you need to pick your fights carefully.
Had the Bodtrade phrase been shorter, Virgin's claim may have been stronger, as the likelihood of tarnishing would be easier to prove.
It remains to be seen whether Virgin will appeal the decision. If not, it may seek to challenge Bodtrade's use of the trade mark under comparative advertising legislation should aggressive advertising campaigns be launched. Bodtrade will have to tread carefully in future.
What should you do?
- Evaluate the potential damage and level of confusion before filing an opposition, as the IPO needs to see persuasive evidence to rule in a trade mark owner's favour. Just because you are a big brand does not mean you will win every time, as the IPO will rule on the evidence before it.
- If your chances of successfully opposing a mark are weak, look to other legal tools which may assist, such as the Comparative Advertising Directive.
- Be distinctive. The best and easiest marks to protect are made up words, such as Kodak or Xerox.
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Rachael Parman
Associate
T: 03700 86 8494
I: +44 (0)1908 48 8494
E: rachael.parman@shoosmiths.co.uk