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Monday, 2 May 2011

Unlike a Virgin: it's an open-and-shut Casey

... but not like
a CARBON VIRGIN?
Always anxious about how the small guys cope in battles against the big guys which, in his opinion, should never be fought, the IPKat was delighted to see the recent ruling in Virgin Enterprises Ltd v Casey [2011] EWHC 1036 (Ch), a ruling of Mr Justice Norris in the Chancery Division, England and Wales, on what the Kat has long considered the totally unmeritorious opposition lodged by Virgin Enterprises to an innocent and non-threatening trade mark application by a small business.

In short, Michael Casey applied to register the word mark CARBON VIRGIN in May 2008 for "advertising; electronic data storage; advertising services provided via the internet; production of television and radio advertisements; accountancy; auctioneering; trade fairs; opinion polling; data processing" in Class 35.  Virgin Enterprises opposed the registration, asserting that (i) the mark was identical to its own registered mark VIRGIN which was registered for similar services, (ii) the mark was similar to its marks VIRGIN and VIRGIN GREEN FUND and its 'Virgin' signature mark which were registered for similar services and that there was a likelihood of confusion; (iii) the mark was identical or similar to 13 specific marks registered by Virgin Enterprises which had a reputation of which Casey's mark took unfair advantage and (iv) the term VIRGIN and the 'Virgin' signature were earlier unregistered rights which entitled Virgin Enterprises to block Casey's registration.

The hearing officer rejected all the grounds of opposition and Virgin Enterprises appealed. While it accepted the hearing officer's findings and holdings in respect of grounds (i) and (iv), it argued that the hearing officer had blundered in grounds (ii) and (iii), making no fewer than six errors of law:

(i) the hearing officer had treated the mark VIRGIN as being capable of only one conceptual meaning when used alone, and of having that meaning irrespective of context;

(ii) the hearing officer had determined the conceptual meaning of the marks without reference to the services for which they were registered;

(iii) the hearing officer should not have treated conceptual similarity as being the determinative factor when comparing the marks -- or should at least have explained why he did so;

(iv) the hearing officer, concluding that there was no likelihood of direct confusion, appeared to say that there could only be direct confusion where the marks were identical;

(v) the hearing officer's approach to the level of conceptual similarity was inappropriate within the context of the unfair advantage opposition;

(vi) the hearing officer had misapprehended the nature of the link in that, in the case of unfair advantage, the consumer had to make an economic link to the owner of the earlier mark, whereas the true link that had to be made was by calling the earlier mark to mind.

Norris J dismissed Virgin's appeal. In his view:
  • When comparing the parties' marks, the hearing officer had chosen the Virgin Enterprise mark closest to Casey's mark and, having referred to a whole range of materials, agreed that there was a reasonable level of visual and aural similarity. However, in respect of conceptual similarity, the hearing officer found that the word VIRGIN had 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. That analysis did not betray any error of principle, and a finding that essentially different concepts had been involved was one which was open (and indeed proper) on the evidence.

  • The second ground of appeal had nothing to do with the services to which the mark related and was no more than a re-running of the first ground of appeal.

  • Virgin Enterprises' submissions on the third ground of appeal were wrong, since the hearing officer had not actually treated conceptual similarity as the determinative criterion -- he hadn't regarded any factor as determinative. The weight to be given to each of the many factors relevant to his decision was pre-eminently a matter for him and could not be challenged on appeal.

  •  The hearing officer did not not say that there could only be direct confusion where the marks were identical: he was expressly considering marks which were not identical and, deciding that the differences between the two was sufficiently great that there was no likelihood of confusion, he had adopted the correct legal approach.

  • As for the link, whether it existed between the two marks had to be assessed globally, taking into account all relevant factors and applying the principles of interdependence. This is a classic multi-factorial evaluation undertaken by a specialist tribunal, which an appellate court had to respect. In this case the hearing officer had not made any error in deciding whether 'the necessary link' had been established: he had not thought that the link had been to the proprietor (and not to the mark), and he had not thought that the link had to be economic. Further, based on the evidence before him, he was perfectly entitled to find that the necessary 'link' had not been proved: there being no link, there was no need to investigate the question whether Casey's mark would obtain any unfair advantage.
The IPKat is delighted with this outcome, but saddened that Michael Casey should have been put to so much hardship and stress in his encounter with a giant company with a penchant for IP litigation. Naturally Virgin Enterprises is entitled to expect no lower level of IP protection than any other business -- but it doesn't own the word 'virgin' outright and it can expect others to use it in ways which neither confuse the public nor damage their own equity in the goodwill of their brands.

Like a Virgin here

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