One of the most recognised brands in South Africa and the world is the Virgin brand owned by Richard Branson and his company Virgin Enterprises Limited (Virgin).
The Virgin brand expands over a number of different goods and/or services, including air travel, mobile services, health spa and gyms and even space travel (a trademark for Virgin Galactic was recently registered).
Despite the great value of the Virgin brand and the unconventional business style of its owner, Virgin was recently brought back down to earth when a UK High Court reiterated that the VIRGIN trade mark is still subject to trade mark laws.
A trademark can be registered in one or more of 45 classes. Once registered, a trademark is generally only protected against confusingly similar trademarks used in respect of identical goods or services.
However the protection of well-known trademarks, such as VIRGIN, extends beyond the protection available for “ordinary” trademarks and can also be protected in circumstances where, even in the absence of confusion, there would be a dilution in the proprietor’s trade mark rights or where unfair advantage of the well-known mark would be taken, should a similar mark be used by an unauthorised third party.
The UK the High Court recently dismissed an appeal by Virgin in respect of the Registrar of Trade Marks’ decision to reject an opposition by Virgin to an application for the trademark “CARBON VIRGIN”.
The applicant applied to register the trade mark “CARBON VIRGIN” in the UK in respect of class 35 services including advertising, accountancy, auctioneering, opinion polling and data processing. Virgin opposed this application, based on their prior registrations.
However, the Registrar rejected all of the grounds of opposition. The High Court confirmed that the requirement of similarity of a trademark 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 must be assessed as a whole rather than each component of the mark being assessed individually.
The Registrar and court held that, although there are phonetic and visual similarities, different conceptual meanings can be identified. It would appear that Virgin is mainly using its mark as referring to sexual virginity and not as alluding to naivety or inexperience. Because of the different meanings of the composite forms of the trade marks there would be no likelihood of confusion.
The High Court also upheld the initial decision that there was not sufficient similarity between the marks to cause the relevant public to establish a link between the VIRGIN trademarks and the CARBON VIRGIN trade mark and that there would therefore be no risk of dilution.
The High Court’s decision is not flawless, in that the assessment of confusing similarity from a phonetical, visual or conceptual perspective, does not need to clear all three hurdles. It is possible for two marks to be confusingly similar in the absence of conceptual similarity.
However, it appears as if the Court did indeed come the correct decision. The VIRGIN trademark is not an invented word (such as GOOGLE) but a dictionary word. It is possible that a trademark, even a well-known trademark, can lose its distinctiveness in a composite trademark which incorporates such well known trademark.
Well-known marks, no matter how strong, are not immune to trade mark laws and do not per se grant proprietors monopolistic rights in respect of the use of its trade marks in composite marks.
Regardt Botes is senior associate, intellectual property, at Cliffe Dekker Hofmeyr
