IPKAT RIDDLE NO. 7

Michael Edenborough has kindly supplied the IPKat with a copy of the Hearing Officer’s decision in Virgin Oil Ltd’s application to register VIRGIN OIL for various types of oils in Class 4 and filters for engines and motors in Class 7. Virgin Enterprises (Richard Branson’s company) successfully opposed the application, arguing likelihood of confusion under s.5(2) of the Trade Marks Act 1994 and detriment to distinctive character under s.5(3) of the same Act.

What caught the IPKat’s attention was the Hearing Officer’s consideration of whether the applicant had “due cause” to use the mark (if an applicant does have due cause then the mark can be registered, even if it would otherwise fall under s.5(3), the UK’s version of “dilution”). He noted that the term “virgin” is sometimes used to describe high quality oil. However, he said that even if this was the case with industrial oil (such as the applicant’s) the applicant could not argue due cause because this would mean that the mark was not distinctive and there would be a compulsion for other traders to use it and thus the term would not be registrable as a trade mark. The IPKat wishes to know, what then, if anything, is the role of the “due cause” provision under s.5(3) in application cases. Previously, the Lucas Bols definition has been followed and due cause had only been recognised where the applicant has a prior right to the term or he cannot reasonably be expected not to use it. However, it is hard to imagine a situation that would fit into the second category but where the term in question would remain distinctive rather than e.g. descriptive and hence be registrable as a trade mark.

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