Carbon Virgin and Virgin: No Likelihood of Confusion

An individual, 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 the mark was identical to its own registered trade mark VIRGIN which was registered for similar services and that the mark was similar to its marks VIRGIN, VIRGIN GREEN FUND and VIRGIN signature which were all registered for similar services.

As such, Virgin Enterprises alleged a likelihood of confusion.

They also asserted that the mark applied for was identical or similar to 13 specific marks registered by Virgin Enterprises which had a reputation. They alleged that Michael Casey’s mark took unfair advantage. A fourth ground of objection alleged that the term VIRGIN and the VIRGIN signature were earlier unregistered rights.

The hearing officer rejected all grounds of opposition and Virgin Enterprises appealed. The appeal was rejected with the judge confirming that appeals against a hearing officer’s decision are by way of a review rather than re-hearing (following the REEF decision). Accordingly, while there may have been a reasonable level of visual and phonetic similarity between the marks, the work VIRGIN had a subtly different meaning in each mark, resulting in different concepts being created in the mind of the average consumer when looking at the respective trade marks as a whole.

Is this another example of a potential retreat from the Thomson Life principals? Note that Virgin’s rights included the word mark VIRGIN. Following that decision, if 'Virgin' retained an independent distinctive role within CARBON VIRGIN, there would be basis for finding a likelihood of confusion. However, the hearing officer found that in the former, the word VIRGIN stood alone whereas in the latter was the second part of a compound expression. Applying a global appreciation test, the hearing officer found that there is a reasonable level of visual and oral similarity but the marks differed on a conceptual comparison. It was found that the different concept was sufficient to differentiate the marks in the mind of consumer, even taking into account imperfect recollection. This decision seems to reaffirm that despite the Medion v Thomson principal (2002) ETMR 13, the global appreciation test is the one that prevails. However, outcomes can clearly be difficult to predict. The General Court has recently followed Medion v Thomson finding that the trade marks FIRST and FIRST-ON-SKIN were confusingly similar applying the Medion test; yet last month the Appointed Person in the UK confirmed a hearing officer’s decision that the trade marks DOOM and TOWER OF DOOM were not confusingly similar.

The conclusion for applicants must still be that it is a risky strategy to adopt a trade mark which incorporates the totality of an earlier right held by a third party. However, if additional distinctive matter which dominates a trade mark as a whole is added such that the overall impression is different visually, phonetically or conceptually, a likelihood of confusion can be avoided.