The High Court has dismissed an appeal by Virgin Enterprises Limited (VEL) in respect of a Hearing Officer’s decision rejecting VEL’s opposition to an application for “CARBON VIRGIN” as a trade mark registration in the UK.
Mr Casey applied to register the word mark “CARBON VIRGIN” as a UK trade mark in May 2008 in relation to services within class 35 including advertising, accountancy, auctioneering, opinion polling and data processing. VEL opposed on the basis of various earlier trade marks and various other grounds. The principle grounds were:
- that the mark was similar to VEL’s registered Community trade marks “VIRGIN”, “VIRGIN GREEN FUND” and its “Virgin” signature mark and the proposed application was in respect of services similar to the services covered by those registered Community trade marks (Section 5(2)(b) of the Trade Marks Act 1994 (similarity of marks and services and a likelihood of confusion)); and
- that the mark was identical or similar to thirteen specific marks registered by VEL which had a reputation of which Mr Casey took unfair advantage (Section 5(3) of the Trade Marks Act 1994 (reputation/unfair advantage)).
The Hearing Officer at the UK Intellectual Property Office rejected all of the grounds of opposition by VEL. VEL then appealed the Hearing Officer’s decision to the High Court. The High Court confirmed that an appeal against a decision of the Hearing Officer is an appeal by way of a review rather than a re-hearing and that the decision of the Hearing Officer should be confirmed unless it is wrong in law or unjust because of a serious procedural irregularity.
VEL accepted that the Hearing Officer had correctly summarised the law but it appealed on the basis that the Hearing Officer failed to apply the law to the material before him in respect of the opposition grounds (i) and (ii) above.
The first ground was that there was a likelihood of confusion by reason of similarity to an earlier mark. The High Court confirmed that the requirement of similarity of a trade mark to another trade mark “looks at the overall impression of the mark assessed by reference to a global appreciation of several factors - visual, aural and conceptual”. This means that in assessing similarity, each mark is assessed as a whole rather than each component of the mark being assessed individually.
The Hearing Officer had to consider the extent of the similarity between VEL’s mark “VIRGIN” and Mr Casey’s mark “CARBON VIRGIN”. The Hearing Officer had found that, whilst there was a reasonable level of visual and phonetic similarity, the marks had different conceptual meanings. The Hearing Officer had found that the dominant meaning of the word “VIRGIN” used alone suggested a person who had never had sexual intercourse but that the meaning of the compound expression “CARBON VIRGIN” was unclear. However, on viewing the “CARBON VIRGIN” mark as a whole and in context, it communicated the concept of someone who was naïve or inexperienced in a particular context (as in the expression “political virgin”). The Hearing Officer had accordingly held the word “VIRGIN” “had a subtly different meaning in each mark resulting in different concepts being created in the mind of the average consumer” looking at the respective marks as a whole and as such there was no conceptual similarity.
The High Court upheld this finding of the Hearing Officer confirming, “there was plenty of evidence that VEL exploited the risque allusion to sexual intercourse. There was none suggesting that in offering its services VEL was alluding to naivety or inexperience”.
Among other things, the High Court held that the Hearing Officer had adopted the correct legal approach in respect of the Hearing Officer’s decision that “VIRGIN” has one meaning to a consumer and “CARBON VIRGIN” has another meaning to a consumer and that the different concepts are sufficient that services provided by Mr Casey are unlikely to be thought by the consumer to have been provided by VEL and therefore there was no likelihood of confusion.
The High Court also upheld the Hearing Officer’s decision that there was not sufficient similarity between the marks to cause the relevant public to establish a link between VEL’s marks and the “CARBON VIRGIN” mark and therefore there was no need to assess whether Mr Casey's trade mark took unfair advantage of VEL's reputation in its trade marks. The Hearing Officer had held that the lack of conceptual similarity and the different impressions created in the mind of the consumer, when confronted with the respective marks, would result in the consumer not making the necessary link between the two marks.
The High Court’s decision to uphold the Hearing Officer’s decision reiterates that the overall impression of a trade mark will be examined when assessing similarity. It also serves as a reminder that just because an organisation holds registered trade marks for a certain trade mark, that organisation cannot prevent third parties from using that trade mark unless the grounds in section 5 of the Trade Marks Act 1994 are satisfied.