Virgin Enterprises Limited v Alan Raymond Bowes

[2000] ATMO 74

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Virgin Enterprises Limited to registration of trade mark application 707303(37, 42) - VIRGIN HOME SERVICES- filed in the name of Alan Raymond Bowes and Verna Mary Bowes.

Background

This issue arises out of the acceptance of application 707303 to register the trade mark VIRGIN HOME SERVICES in the name of Alan Raymond Bowes and Verna Mary Bowes ('the Bowes').  The application was filed on 29 April 1996 as a single class application in Class 37 and, following amendment, was accepted as a multi-class application in Classes 37 and 42 for the services:

Class 37:

Domestic and commercial cleaning services, namely: cleaning carpets, chimneys, windows, pools, car washing, high pressure cleaning; ironing services; mobile mechanic car maintenance services; handyman repair services.

Class 42:

Gardening and lawn mowing services; rubbish removal

The application was advertised as accepted on 6 March 1997 in the Australian Official Journal of Trade Marks.  On 5 September 1997, within the time allowed to do so, Virgin Enterprises Limited, (VEL) lodged Notice of Opposition to the registration of the trade mark.  On 7 September 1998, after seeking and receiving extensions of time in which to do so, VEL filed its evidence in support of the opposition. On 18 February 1999 the Bowes filed their evidence in answer.  Thereafter, VEL sought, and received, extensions of time in which to file evidence in reply, however, on 19 November 1999 VEL filed notice stating that they no longer intended to rely on evidence in reply.

At this stage, an attempt at a negotiated settlement was unsuccessful and the issue came on to be heard before me in Canberra.  Mr Gerard Skelly of Spruson & Ferguson, Patent and Trade Mark Attorneys of Sydney, represented VEL.  The Bowes relied on written submissions prepared and filed by Dr Carolyn Rolls of Watermark, Patent and Trade Mark Attorneys of Melbourne.

However, before detailing the submissions of the legal representatives, I will touch on the evidence filed in relation to this matter.

The Evidence

The evidence in support is a statutory declaration (the Murphy declaration) by Stephen Murphy of London who is a director of VEL and has held his current position since 1994.  He states that VEL is the owner of a family of trade mark containing or consisting of the word VIRGIN.  He states that "the VIRGIN trade mark is used and registered throughout the world and I believe is well known throughout the world."  I presume by this that Mr Murphy means that VEL has registered the trade mark throughout the world and the trade mark is well known throughout the world as denoting the goods or services of VEL.

Attached at Annexures "A" and "B" to the declaration are schedules of VEL's Australian and worldwide trade mark registrations.

Mr Murphy goes on to state that the VIRGIN trade mark has been continuously used since 1970 by the Virgin Group of Companies (VGC).  First use of the trade mark VIRGIN was in relation to a mail order record retailing business in the United Kingdom.  The first record release by Virgin Records in Australia was in 1985. 

The declaration details the expanding business and trading history of the goods and services sold or supplied under the trade mark VIRGIN.  This includes record stores, music recording and publishing, nightclubs, film and video distribution and production, radio and television broadcasting, computer games, computer software and hardware, airlines operations, travel services and tours, hotels, airship and balloon operations, rail transport, book publishing, cinemas, alcoholic and non-alcoholic beverages and financial services.  Recently, a decision has been taken by VEL to use the trade mark in relation to cosmetics and clothing.

Mr Murphy then states that Virgin Video, Virgin Computer Graphics and Virgin Television Group are no longer active in Australia.  He does not state when they started operation in Australia but logically it must have been sometime after 1985 (when the first VIRGIN record was released in Australia) and before 25 August 1998 (when the declaration was executed).

Mr Murphy annexes to his declaration various materials detailing the operations of Virgin Radio, Virgin Euromagnetics, Virgin Interactive Entertainments, Virgin Cinemas, Virgin Atlantic Airlines [also seemingly identified in the declaration as Virgin Atlantic Airways], Virgin Hotels, Virgin Lightships and Balloons, Virgin Rail and Virgin Publishing.  I do not think that it is suggested that these entities traded in Australia prior to this application being lodged.

I take it that Virgin Records, Virgin Music Group, Virgin Television Group, Virgin Video, Virgin Computer Graphics, Virgin Euromagnetics, Virgin Interactive Entertainments, Virgin Cinemas, Virgin Atlantic Airlines [aka Virgin Atlantic Airways], Virgin Hotels, Virgin Lightships and Balloons, Virgin Rail, Virgin Publishing and VEL are somehow parts of VGC.  Or, possibly, VGC is a part of VEL as may be these other entities.  Without an unambiguous statement as to which of these companies is controlled by who, and whose control the trade marks are used under, to be sure that the trade mark actually denotes the opponent, or some other one person, as the origin of goods and services in trade.  Without such a statement, it could be that this is a list which has been cobbled together of completely unconnected people who are using the trade mark.  I therefore proceed on the assumption that the various entities named in the Murphy declarations as using the trade mark VIRGIN are actually doing so under the control of the opponent or are companies related to the opponent in some way and possibly using the trade mark under license.

Mr Murphy details the opening and closing of the Virgin Megastores in Sydney, Melbourne and Adelaide.  The Sydney stores opened in 1988.  These stores sold a range audio and video recordings, t-shirts, posters, computer software games and video games.  The stores closed down "a few years ago".

Virgin Cola, a soft drink, sold in Australia, I gather in Queensland, during 1996 and 1997. 

A file of press clippings relating to Richard Branson, the founder of Virgin Records and the VIRGIN trade mark, is annexed to the Murphy declaration.

Various other articles annexed to the Murphy declaration show the fame of both Mr Branson and the VIRGIN trade mark in a number of different fields and locations.

The evidence in answer is a statutory declaration by Alan Raymond Bowes.  Mr Bowes is the owner of a domestic and commercial cleaning, gardening, lawn mowing and rubbish removal service.  The business is focussed on the Echuca area.  Mr Bowes does not say how he came to alight on the words VIRGIN HOME SERVICES for his trade mark but does state that he did so in 1996.  He appends to his declaration fliers, letterheads, Yellow and White Pages entries for his business in the Echuca Moama directories.  The balance of Mr Bowes declaration is a detailed address of the Murphy declaration and consists for the most part of argument in which he attacks the VEL evidence and contains very little useful fact.  I do not find it particularly helpful and will not dwell on it.

The submissions

Mr Skelly relied on three grounds in his submissions - those under sections 43, 44 and 60 of the Act.  There is some overlap between sections 44 and 60 in that 'deceptive similarity' is a test within both sections.  I will deal with this issue once in these reasons.

Section 43

In relation to section 43, Mr Skelly drew my attention to the dictionary definitions of the word 'connotation' that is used within section 43.  While Mr Skelly acknowledged that the Explanatory Memorandum to the Trade Marks Act 1995 mentioned that the deception or confusion was to be inherent to the trade mark itself, he argued that the definitions of the word 'connotation' allowed for a word developing a secondary meaning through usage and that another use, inconsistent with this could be a source of deception or confusion.  In short, he argued that VEL's usage of the word VIRGIN had been such that the word VIRGIN, used in relation to goods and/or services, had been such that it had come to connote VEL's goods and/or services and VEL's alone.  Use of the trade mark VIRGIN HOME SERVICES by the Bowes was inconsistent with this connotation and thus would be a source of deception and confusion.  Mr Skelly referred me to decisions of the Federal Court in Melhero Pty Ltd & Anor v Club X Pty Ltd & Ors [1997] 118 FCA (20 Jan 1997); Montana Tyres Rims and Tubes Pty Ltd v Transport Tyre Sales Pty Ltd (1998) 41 IPR 301; and, Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411.

Mr Skelly also referred me to decisions of this Office in Down To Earth (Victoria) Co-Operative Society Ltd v Schmidt (1988) 41 IPR 632; Amalagamated Television Services Pty Ltd v Linda Cameron Pickard, Alexandra Cameron Pickard and Linda Louise Pickard [1999] ATMO 103 (11 October 1999); and, Twentieth Century Fox Film Corporation v Michael F Durkan [2000] ATMO 5 (19 January 2000). In these cases the decision-makers had found the use of the of the trade mark would be deceptive and confusing because of a connotation within the trade mark.

The evidence, said Mr Skelly, shows that the trade mark VIRGIN is so associated with VEL that a connotation has arisen in relation to the word.  It is not just, stressed Mr Skelly, the reputation of the trade mark VIRGIN which has given rise to the connotation, but also the extensive press coverage given to the VIRGIN trade mark used by VEL, Mr Richard Branson and his various exploits.

Sections 44 and 60

In relation to sections 44 and 60, Mr Skelly said that the trade marks VIRGIN and VIRGIN HOME SERVICES are at least deceptively similar if not substantially identical.  In regard to reputation, Mr Skelly drew my attention to Re: Conagra Inc. v McCain Foods (Aust) Pty Ltd No. G312 of 1991 FED No. 176; (1992) 23 IPR 193; (1992) AIPC 90-892 (extract); (1992) 106 ALR 465; (1992) 33 FCR 302. An opponent, he said, does not have to have a physical trading presence in Australia. To activate section 60, he says, it requires a mere reputation in the jurisdiction. The relevant reputation can be acquired without use of the trade mark in this country. Next Mr Skelly referred to Pioneer Hi-Bred Corn Co v Highline Chicks Pty Ltd [1979] RPC 410, a decision of the New Zealand Court of Appeal, and said this case shows that the reputation need only exist in that sector of the market concerned with the product in question. Mr Skelly said that the relevant portion of the public is prospective purchasers of VEL's products and services.

Mr Skelly submitted that a relatively strong trade mark, like VEL's VIRGIN trade mark, should require less proof of reputation than a weak trade mark.  And the time in which reputation can be established is less if the trade mark is well promoted.  In this regard Mr Skelly cited Fletcher Challenge Ltd v Fletcher Challenge Pty Ltd [1981] 1 NSWLR 196 and the very short time in that instance which enabled the complainant to be successful.

Mr Skelly submitted that there is no reason that the Bowes might have arbitrarily selected the trade mark VIRGIN in respect of these goods or services.  The only reason that the Bowes might have selected the trade mark VIRGIN, said Mr Skelly, is to trade off VEL's reputation.  Mr Skelly submitted that there are numerous examples in evidence of VEL's use of the trade mark VIRGIN in combination with a descriptive word or words.  Mr Skelly stated that he believed the Bowes VIRGIN HOME SERVICES trade mark would be undoubtedly seen as yet another example of VEL's VIRGIN trade mark in use with a descriptive word.

Mr Skelly referred the to the various tests for deceptive similarity including those in Southern Cross Refrigerating Co v Toowomba Foundry Pty Ltd (1954) 91 CLR 592, Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, re Application by Pianotist Company Ltd 1A IPR 379, London Lubricants (1920) Ltd's Appn (1925) 42 RPC 264, Jafferjee v Scarlett (1937) 57 CLR 115, Cooper Engineering Co Pty Limited v Sigmund Pumps Ltd (1952) 86 CLR 536.

Mr Skelly stressed that it is incorrect to consider the use of the Bowes' trade mark just in the Echuca area since the application is for registration throughout Australia and also includes commercial cleaning services.  Use of the Bowes' trade mark could be licensed throughout Australia, including cleaning entertainment complexes such as cinemas and theatres associated with VEL.

Mr Skelly drew my attention to the practice of 'brand extension' and the expectation that many Australians might have that the cleaning services performed by the Bowes, under the trade mark VIRGIN HOME SERVICES, are a logical extension from the services current offered by VEL.

The Bowes' Submissions

Ms Rolls submitted that the central issues in the present matter were the grounds relied upon by the opponent under ss.58 and 60.

Ownership/Proprietorship

Ms Rolls stated that the term "owner" in the Trade Marks Act 1995 equates to that of "proprietor" as referred to in the Trade Marks Act 1955: see p.2 of the Readers Guide to the 1995 Act.

The starting point, submitted Ms Rolls, must be to consider the nature of the claim made by an applicant for registration under s.27 of the Act.

In the case of Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1 987) 10 IPR 402 at 413:

The basic common law principle is that the first person who uses a trade mark of an appropriate type within a country becomes the proprietor of the mark there.

Re Registered Trade Mark 'Yanx",- Ex parte Amalgamated Tobacco Corp Ltd (1951) 82 CLR 199 at 203; 1B IPR 504; Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592; 1A IPR 511 at 603; Moorgate Tobacco Co Ltd v Philip Morris Ltd (No.2) (1984) 3 IPR 545; 59 ALJR 77 at 83.

Ms Rolls submitted that the first user of the mark in Australia for relevant goods and before the date of application becomes the owner at common law.  That ownership is limited to "the same kind of thing" as per Holroyd J in Re Hicks'Trade Mark (1897) 22 VLR 636. Any small amount of use will suffice, but the effect of the act relied on to constitute use must be the creation in the minds of those concerned, of an impression that goods of a particular trader are being offered for sale, in Australia, under the trade mark.

From the evidence, said Ms Rolls, it is undisputed that Mr Bowes has used the trade mark VIRGIN HOME SERVICES since before the date of the application.  Furthermore, the trade mark has been in continuous use to this day.

In deciding the issue of ownership, it is necessary to consider whether the marks are identical or so similar as to be virtually the same mark: Kendall Co v Mulsyn Paint & Chemicals (1963) 109 CLR 300; and Tavefar Pty Ltd v Life Savers (Australasia) (1988) 12 IPR 159. The marks should be, at the very least substantially identical. That phrase was discussed by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 414; 1B IPR 523. It requires a total impression of similarity to emerge from a comparison between the two marks.

The opponent appears to be relying on its use of the word VIRGIN, solus.

It is obvious, said Ms Rolls, that the opponent's trade marks and that covered by application 707303 both comprise the word "VIRGIN".  However, in the case of application 707303, the additional words HOME SERVICES are sufficient to differentiate the applicants' and opponent's marks.

With respect to a comparison of the services of the current application, and the services in respect of which the opponent has used VIRGIN, we note that there is no overlap.  According to the evidence submitted by the opponent, the trade mark VIRGIN has been used on a range of entertainment, tourism, music and retailing services.  Conversely, application 707303 relates to domestic and commercial cleaning, gardening and lawn mowing.  Clearly the services of application 707303 are not the same or similar to the services in respect of which the VIRGIN mark has been used.

Section 60

Ms Rolls stated that, as she submitted above in respect of the s.58 ground, the evidence presented did not show any use of the VIRGIN trade mark in respect of domestic and commercial cleaning services, gardening and lawn mowing services or rubbish removal or similar services.  It follows that there was negligible reputation, if any, for the opponent's trade marks in the relevant market as at the application date.  Accordingly, there can be no deception or confusion in the mind of the public.

Famous Marks

Any presumption that VIRGIN is a famous trade mark is strongly disputed by Ms Rolls.  A trade mark becomes famous in Australia if it has been used to such an extent that the use of the trade mark in relation to any goods or services would be likely to be taken as indicating a connection between the other goods or services and the registered proprietor.  The evidence presented is insufficient to justify an assumption that the VIRGIN mark is a famous mark in Australia.

Ms Rolls notes that the opponent has no registrations under s.185, which provides for defensive registrations.

VIRGIN is not an invented word, said Ms Rolls, but is a word of common usage in the English language.  Furthermore, as presented in the Bowes Declaration, there are numerous Australian trade mark registrations which include the word "VIRGIN".  Most of the evidence presented regarding use of the trade mark VIRGIN by the opponent relates to use in the United Kingdom, rather than Australia.  While some Australians may have become aware of the VIRGIN trade mark through travel to the United Kingdom and by virtue of British newspaper and magazine articles available in Australia, this would not be sufficient to raise VIRGIN to the level of recognition of a famous trade mark.

Accordingly, Ms Rolls submitted, VIRGIN is not a famous trade mark and that the opponent is seeking to exercise a monopoly in the word VIRGIN to which it is not entitled.

The opposition, Ms Rolls submitted, must be dismissed.

Ms Rolls submitted that costs are in the discretion of the Registrar.  Considerations relevant to the exercise of that discretion were set out by Toohey J in Hughes v Western Australian Cricket Association (Inc) (1986) 8 ARPR 40748 at 48,136:

1. Ordinarily, costs follow the event and a successful litigant receives his costs in the absence of special circumstances justifying some other order.

2. Where a litigant has succeeded only upon a portion of his claim, the circumstances may make it reasonable that he bear the expense of litigating that portion upon which it has failed.

3. A successful party who has failed on certain issues may not only be deprived of the costs of those issues but may be ordered as well to pay the other party's costs of them.  In this sense, "issue" does not mean a precise issue in the technical pleading sense but any disputed question of fact or of law.

Mathematical precision is illusory, submitted Ms Rolls, and the exercise of the discretion will often depend upon matters of impression and evaluation; Dodds Family Investments Pty Ltd (formerly Solar Tint Pty Ltd) and Anor v Land Industries Pty Ltd and Ors, 26 IPR 261

In the present case, says Ms Rolls, Mr Bowes seeks registration of his preferred trade mark for the services offered by his small business.  He seeks the certainty afforded by registration of a trade mark and has been subject to considerable uncertainty for four years.  It is undisputed that Mr Bowes has commenced use of the trade mark in the Echuca-Moama areas of Victoria and New South Wales and has expanded its use to the Bendigo and Shepparton regions.  However, intended expansion of his business has been restrained due to uncertainty as to whether or not the VIRGIN HOME SERVICES trade mark could be registered.

Ms Rolls concluded by stating that, in view of the fact that registration has been held up by an opponent who ostensibly has no interest in cleaning and gardening services, she suggests that the opposition should not have been brought.  Accordingly, the Bowes requested that costs be awarded in their favour.

Discussion

I do not consider that the detail of the VEL evidence is totally satisfactory.  It paints a picture of extensive use of some VIRGIN trade marks both in Australia and overseas but it is not clear by whom the trade marks have been used.  The evidence is quite vague about when use of the VIRGIN trade mark in Australia commenced and/or ceased in relation to specific goods or services - the most that the evidence establishes in relation to many services presumably attributed to VEL and its trade mark is that they are no longer offered here.  In general, though, the evidence does show that the VIRGIN trade marks of VEL are very well-known.  This accords with my personal knowledge of the reputation of the VIRGIN trade mark and the fame of the head of the Virgin empire - Sir Richard Branson - who is quite well-known in Australia as an entrepreneur, a founder of airlines and an aeronaut. 

On the other hand, the Bowes declaration is short on fact and long on argument.  It establishes very little fact for me to take into consideration in these reasons.  However, as it happens, not much turns on the defects in the evidence of the parties.

Reasons

For the sake of convenience, I will consider the issues in this order: sections 58, 43, 44 and 60.

Section 58

Section 58 of the Act provides:

Applicant not owner of trade mark

58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:  For applicant see section 6.

Although this ground was not argued by VEL at the hearing, it was argued by the Bowes in their solicitor's written submissions and, for the benefit of completeness, I will give reasons in relation to this section of the Act.

As observed by Ms Rolls, in deciding the issue of ownership, it is necessary to consider whether the marks are identical or so similar as to be virtually the same mark: Kendall Co v Mulsyn Paint & Chemicals (1963) 109 CLR 300; and Tavefar Pty Ltd v Life Savers (Australasia) (1988) 12 IPR 159. In Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375 at 391, Gummow J, referring to The Shell Co of Australia Ltd v Rohm and Haas Co (1949) 78 CLR 601, said:

When the decision is understood in this way, it does not supply any general authority for the proposition that in the case of disputed claims to proprietorship under the present statute anything less than substantial identity between the two marks will suffice.  The phrase “substantially identical” as it appears in s 62 (which is concerned with infringement) was discussed by Windeyer J in The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414. It requires a total impression of similarity to emerge from a comparison between the two marks.

Although Ms Rolls argued that the trade marks VIRGIN and VIRGIN HOME SERVICES are not substantially identical, I do not agree.  In QH Tours Ltd v Mark Travel Corporation (1999) 45 IPR 553 at 558-9, I observed:

Accordingly, it falls out for me to decide whether the addition of the word “service” to the word “Funjet” is an alteration substantially affecting its identity.

I think that, as the registration of the FUNJET SERVICE trade mark is in respect of “services”, the word “service” is not an addition or alteration that substantially affects the identity of the word “Funjet”. Or, alternatively, that the omission of the word “service” is an alteration that does not substantially affect the identity of the trade mark FUNJET SERVICE.

This view is corroborated by the registrar’s practice in relation to s 51 of the Trade Marks Act 1995 which allows:

51 (1) A person may make a single application under subsection 27 (1) for the registration of 2 or more trade marks in respect of similar goods or similar services within a single class if the trade marks resemble each other in material particulars and differ only in respect of one or more of the following matters:

…

(d)      any matter that is not inherently adapted to distinguish the goods or services and does not substantially affect the identity of the trade marks.

The tests under s 51, because they deal with “substantial identity”, offer illumination of the tests under s 100 (3) which specifies “additions or alterations not substantially affecting … identity”. In this regard I note that the registrar has accepted for registration the trade marks listed below as being “series” trade marks:

550903 (42)    COMPUSERVE        Compuserve Information Service

618323 (37)    VIP  VIP Homes Services

618324 (37)    VIP  VIP Home Services

714906 (42)    VIP  VIP Home Services

725577 (36)    WIZARD                   Wizard Financial Services

I note that the trade marks VIRGIN and VIRGIN HOME SERVICES are very much analogous to the trade marks VIP and VIP HOME SERVICES, which were accepted as a series on the basis that the words HOME SERVICES, in the context of the provision of domestic services, do not substantially affect the identity of the trade mark.  This application must be considered to be on all fours with the example cited, dealing as it does with the provision of domestic cleaning services.  I therefore find that the trade marks in question are substantially identical.

The second leg of the tests in relation to section 58 is whether the goods or services at issue are 'the same kind of thing': Re Hicks’ Trade Mark (1897) 22 VLR 636 at 640. There is no evidence that supports the contention, nor was it argued at the Hearing, that VEL has provided services which could be construed as 'the same kind of thing' as the services for which the Bowes seek registration.

I therefore dismiss the opposition under section 58.

Section 43

This section of the Act provides:

Trade mark likely to deceive or cause confusion

43. An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

As noted by Mr Skelly in submissions, Hearing Officer Forno, in Down To Earth (Victoria) Co-Operative Society Ltd v Schmidt (1998) 41 IPR 632, made the following observations, at pages 664-5:

“Connotation” is a new term in trade mark legislation and as such has not yet been interpreted by the courts. The following are two dictionary definitions which define the ordinary meaning:

Macquarie Dictionary :

1. the act or fact of connoting. 2. that which is connoted; secondary implied or associated meanings (as distinguished from denotation): for example the word “bum” has connotations of vulgarity.

Oxford English Dictionary :

1. The signifying in addition; inclusion of something in the meaning of a word besides what it primarily denotes; implication.

Therefore it can be said that the word connotation refers to that which is implied in a trade mark — in addition to its essential or primary meaning. A connotation can result from the trade mark as a whole, or can result from a sign contained within the trade mark. The prominence and context of the potentially deceptive or confusing element in the trade mark is important in deciding whether the trade mark is likely to deceive or cause confusion. Considerations under s 43 concentrate on the matter within the trade mark that could cause deception or confusion in the mind of the relevant buying public. For example, deception or confusion could arise in regard to the character of the services, or the implied endorsement or licence of services by a person or organisation.

As Mr Skelly observed, the Explanatory Memorandum to the Trade Marks Bill 1995 says, of section 43, that the clause provides that an application for registration must be rejected if the trade mark, because of some signification inherent to it, would be likely to deceive or cause confusion regarding some characteristic of the goods or services.

Thus, consistent with the observations of Mr Forno in Confest, supra, what is to be considered is what the trade mark, or part of the trade mark, signifies as a word or device to the average Australian and whether, because of that signification it would be likely to confuse or deceive concerning a characteristic of the goods or services.  In many instances, what the word signifies will be found in dictionaries.  At other times, the signification or connotation will be shown by evidence.

In Amalagamated Television Services Pty Ltd v Linda Cameron Pickard, Alexandra Cameron Pickard and Linda Louise Pickard [1999] ATMO 103 (11 October 1999), I decided that the words SUMMER BAY had only slight use as a trade mark and that their use and identity within Australian parlance signified the fictitious location in a television series and thus was likely to confuse or deceive because of the implicit suggestion that the goods were somehow connected (via licensing) with the opponent (ATS).

In Twentieth Century Fox Film Corporation v Michael F Durkan [2000] ATMO 5 (19 January 2000), Deputy Registrar Hardie found that the trade mark BRAVEHEART THE MUSICAL would give rise to a connotation of the motion picture BRAVEHEART, a coinage in relation to William Wallace by Twentieth Century Fox Film Corporation (Fox). This was because of the very wide publicity surrounding the release of the film which led to a signification of the word, combined with the strong public identity of the film with its makers and widespread knowledge of marketing and 'spin-offs' from such films.

These decisions implicitly assess the significations of the indicia as words, as opposed to trade marks, and are thus consistent with the Explanatory Memorandum.

I think that the word VIRGIN does not have a connotation of the services or goods of VEL.  I think that this conclusion can be explained in the following way.  Most Australians encountering the words BRAVEHEART or SUMMER BAY would immediately understand those words as signifying Fox, ATS and/or their entertainments.  I do not think that the average Australian encountering the word VIRGIN will see it as signifying VEL and/or their services.  This is partially because such an immediate signification is difficult to make in view of the dictionary definitions of the word VIRGIN which are at the forefronts of minds when encountering the word.  For example, the Macquarie Dictionary gives:

virgin
noun
1. a woman, especially a young woman, who has had no sexual intercourse.
2. a girl, young woman, or unmarried woman.
3. Ecclesiastical (usu. of saints) an unmarried religious woman.
4. the Virgin, Mary, the mother of Christ (often called the Blessed Virgin).
5. (cap.) any representation of the Virgin, especially a statue or statuette.
6. any female animal that has not copulated.
7. a youth or man who has not had sexual intercourse.
8. an insect which reproduces by parthenogenesis.
9. (cap.) the zodiacal constellation or sign Virgo.
--adjective
10. being a virgin: Virgin Mother.
11. consisting of virgins.
12. relating to, characteristic of, or befitting a virgin.
13. resembling or suggesting a virgin; pure; unsullied; undefiled: virgin snow.
14. without admixture, alloy, or modification: virgin gold.
15. untouched, untried, or unused: virgin bush, virgin soil.
16. Zoology unfertilised.
17. Metallurgy made directly from ore or from first smelting.
18. denoting the oil obtained as from olives, etc., by the first pressing without the application of heat.
19. Physics (of a neutron) not having experienced a collision of any kind.
[ME virgine, from OF, from L virgo maiden]

Secondly, I think that the proposition that the word VIRGIN signifies VEL relies on an underlying assumption that the word is almost uniquely identified whether in trade or not as being connected with VEL: a cursory examination of a dictionary or the register of trade marks shows that this is not so.  I acknowledge that the evidence shows that this may be different elsewhere in the world where the exploits and works of Sir Richard Branson and his Virgin Empire are all-pervasive.  However, this is not the case in Australia and accordingly the word does not connote VEL or its goods or services..

On this basis, the opposition in terms of section 43 should fail.

However, even were VEL to establish that the word VIRGIN connotes itself and its services, then it (VEL) must then go on and show that, because of that connotation, the use of the trade mark VIRGIN would confuse or deceive.  I think that, in order for the trade mark to confuse or deceive, there would have to be some logical connection in the minds of the public between the use to which the trade mark is put by the Bowes and VEL and/or its goods or services.  I refer in this regard to the decision of Hearing Officer Vija Zars in RS Components Limited v Holophane Corporation [1999] ATMO 67 (23 June 1999). Hearing Officer Zars found that, notwithstanding the entry of the term RSL in English dictionaries as signifying the Return Services League, the use of the trade mark would not be likely to deceive or cause confusion as the public would not make a connection between the services of the Returned Services League and the electrical goods of the applicant.

I believe that it is most unsafe to conclude that any normal Australians would view services of the type performed by the Bowes as being in any way connected with those performed by VEL, or with the goods offered by VEL.

I therefore dismiss the section 43 grounds of opposition.

Section 44

Insofar as it is relevant to these proceedings, this section of the Act provides:

Identical etc. trade marks

44.(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:

(a) it is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

Note 1: For deceptively similar see section 10.

Note 2:  For similar services see subsection 14(2).
Note 3:  For priority date see section 12.

The section specifies the following issues for me to consider.  Whether the:

·     Trade marks are substantially identical or deceptively similar;

·     Specifications are in respect of similar services or closely related goods; and,

·     Whether VEL's priority dates are earlier than that of the Bowes.

In respect of the above considerations, I note that I have already found under my section 58 considerations that the trade marks VIRGIN and VIRGIN HOME SERVICES are substantially identical.  The relevant priority date is the date on which this application was filed: 29 April 1996.  The following is a list of the registered and pending trade marks with an earlier priority date appended to the Murphy declaration, on which VEL appears to be basing this head of opposition.  I am not certain which, as (while Mr Skelly addressed this ground in his submissions) he did not specify particular, if any, VEL registrations on which he founds these grounds:

Reg Number:            280224
Owner:  VEL
Priority Date:             19 July 1974

Goods Services:         Sound records in this form of discs and tapes; and cassettes for use with said tapes.

Trade Mark:               VIRGIN

Reg Number:            452565
Owner:  VEL
Priority Date:             23 September 1986
Goods Services:         All goods this Class (9)
Trade Mark:               

Reg Number:              452566
Owner:  VEL
Priority Date:             23 September 1986
Goods Services:         All goods this Class (16)
Trade Mark:               

Reg Number:            452567
Owner:  VEL
Priority Date:             23 September 1986
Goods Services:         All goods in this class (25)
Trade Mark:               

Reg Number:            452720
Owner:  VEL
Priority Date:             25 September 1986
Goods Services:         All goods in this class (9)
Trade Mark:               VIRGIN

Reg Number:            452721
Owner:  VEL
Priority Date:             25 September 1986
Goods Services:         All goods in this class (16)
Trade Mark:               VIRGIN

Reg Number:            452722
Owner:  VEL
Priority Date:             25 September 1986
Goods Services:         All goods in this Class (25)
Trade Mark:               VIRGIN

Reg Number:            467420
Owner:  VEL
Priority Date:             22 June 1987

Goods Services:         Retail services in this class, being department store services including those in relation to the sale of sheet music, audio cassettes, records and compact disks, video cassettes, clothing and novelty items, and the provision of restaurant, food and beverage services

Trade Mark:               VIRGIN MEGASTORE

Reg Number:            486334
Owner:  VEL
Priority Date:             3 May 1988

GoodsServices:          Services in class 42 being services in connection with clubs, nightclubs, bars, hotels, resorts, hotel reservations, hotel and resort management, restaurants, take-away, public houses, cafes, cafeterias and public eating places but excluding hotel and public house bottleshop services or services relating to the sale of alcohol off these premises; catering; services in this class in connection with exhibitions, vending machine rentals, computer programming and design services, artwork and design services in this class, photography and preparation of slides in this class, typesetting and printing services; arranging, preparation and providing facilities for conferences, exhibitions, large and small scale events and services relating thereto; retail services relating to the provision of department store services including the retailprovision of records, tapes, cassettes, videos, compact discs, clothing, footwear, napery, photographic apparatus, linen, towels, bedding, furniture; department store services relating to the sale of electrical and electronic apparatus and instruments, computer software, hardware, perfumes and cosmetics, watches, clocks, jewellery, posters, magazines, printed material, stationery, luggage, bags, toys, games and playthings; food and tobacco goods; but excluding retail services in relation to the sale of alcohol

Trade Mark:               

Reg Number:            486335
Owner:  VEL
Priority Date:             3 May 1988

Goods Services:         Entertainment and entertainer services, recording studios and movie and television studios, video, film, television entertainment services and recording services in this class; services in this class relating to recreational facilities being for entertainment; publication services in this class; theatre productions; music publishing, film distribution and production; all of the above being services in class 41

Trade Mark:               

Reg Number:            486336
Owner:  VEL:
Priority Date:             3 May 1988

Goods Services:         Services included in class 39 being transportation and distribution services in this class by road, rail, air and sea, freight services, tourist offices in this class, travel agencies, tour operators and reservation services in this class

Trade Mark:               

Reg Number:            486337

Owner:  VEL
Priority Date:             3 May 1988

Goods Services:         Advertising services included in class 35 being direct mail advertising and dissemination of advertising matter and printed material, but excluding such services in relation to products of tobacco and alcohol

Trade Mark:               

Reg Number:            486338
Owner:  VEL
Priority Date:             3 May 1988

Goods Services:         Services in class 42 being services in connection with clubs, nightclubs, bars, hotels, resorts, hotel reservations, hotel and resort management, restaurants, take-away, public houses, cafes, cafeterias and public eating places but excluding hotel and public house bottleshop services or services relating to the sale of alcohol off these premises; catering; services in this class in connection with exhibitions, vending machine rentals, computer programming and design services, artwork and design services in this class, photography and preparation of slides in this class, typesetting and printing services; arranging, preparation and providing facilities for conferences, exhibitions, large and small scale events and services relating thereto; retail services relating to the provision of department store services including the retail provision of records, tapes, cassettes, videos, compact discs, clothing, footwear, napery, photographic apparatus, linen, towels, bedding, furniture; department store services relating to the sale of electrical and electronic apparatus and instruments, computer software, hardware, perfumes and cosmetics, watches, clocks, jewellery, posters, magazines, printed material, stationery, luggage, bags, toys, games and playthings; food and tobacco goods; but excluding retail services in relation to the sale of alcohol

Trade Mark:               

Reg Number:            486339
Owner:  VEL
Priority Date:             3 May 1988

Goods Services:         Entertainment and entertainer services, recording studios and movie and television studios, video, film, television entertainment services and recording services in this class; services in this class relating to recreational facilities being for entertainment; publication services in this class; theatre productions; music publishing, film distribution and production; all of the above being services in class 41

Trade Mark:               

Reg Number:            486340
Owner:  VEL
Priority Date:             3 May 1988

Goods Services:         Services included in class 39 being transportation and distribution services in this class by road, rail, air and sea, freight services, tourist offices in this class, travel agencies, tour operators and reservation services in this class

Trade Mark:               

Reg Number:            486341
Owner:  VEL
Priority Date:             3 May 1988

Goods Services:         Advertising services included in class 35 being direct mail advertising and dissemination of advertising matter and printed material but excluding such services in relation to products of tobacco and alcohol

Trade Mark:               

Reg Number:            561556
Owner:  VEL
Priority Date:             13 August 1991

Goods Services:         Transportation and distribution services in this class by road, rail, air and sea; freight services; tourist offices; travel agencies; tour operators and reservation services in this class

Trade Mark:               

Reg Number:            621469
Owner:  VEL
Priority Date:             28 January 1994

Goods Services:         Toys, games and playthings including electronic games and video games in this class

Trade Mark:               VIRGIN

Reg Number:            621471
Owner:  VEL
Priority Date:             28 January 1994

Goods Services:         Toys, games and playthings including electronic games and video games in this class

Trade Mark:               

Reg Number:            631923
Owner:  VEL
Priority Date:             9 June 1994
Goods Services:         Wines, spirits and liqueurs
Trade Mark:               

Reg Number:            631924
Owner:  VEL
Priority Date:             9 June 1994
Goods Services:         Wines, spirits and liqueurs
Trade Mark:               VIRGIN

Reg Number:            637971
Owner:  VEL
Priority Date:             16 August 1994

Goods Services:         Beers; fruit juices; non-alcoholic beverages; syrups and preparations for making beverages

Trade Mark:               

Reg Number:            637972
Owner:  VEL
Priority Date:             16 August 1994

Goods Services:         Beers; fruit juices; non-alcoholic beverages; syrups and preparations for making beverages

Trade Mark:               VIRGIN

Reg Number:            679394
Owner:  VEL
Priority Date:             28 November 1995

Goods Services:         Life insurance policies, general insurance policies, health insurance policies, pensions, annuities, unit trusts, investment trusts, investment funds, open- or close-ended investment company services, personal equity plans, tax advantaged personal savings, investment products, protection products, all the aforementioned in Class 36

Trade Mark:               VIRGIN

Reg Number:            679397
Owner:  VEL
Priority Date:             28 November 1995

Goods Services:         Life insurance policies, general insurance policies, health insurance policies, pensions, annuities, unit trusts, investment trusts, investment funds, open- or close-ended investment company services, personal equity plans, tax advantaged personal savings, investment products, protection products, all the aforementioned in Class 36

Trade Mark:              

I have reviewed the usual tests such as those in Aussat (1993) 27 IPR 309 where, as delegate of the Registrar, I said:

I believe that the tests must lie in the adoption of criteria similar to those oft quoted from Re John Crowther & Sons (Milnsbridge) Ltd’s Appn (1948) 65 RPC 369 at 372 adopted by the High Court in Reckitt and Colman (Aust) Ltd v Boden (1945) 70 CLR 84 at 94. I believe that these criteria should include:

• are the services performed directly upon or by means of the goods? if so,

• are the goods and services generally regarded by the ordinary consumer as originating in, or being part of, the one industry or trade, or, a closely related trade or industry?

In consideration of the latter point some guide-lines might be suggested and I stress that these are not in any particular order of priority:

• are the goods and services of matching technical complexity?

• is the technical training of the people who make the goods or provide the services the same?

• do the people who make the goods or provide the services belong to the same unions or associations?

• are there personnel who are implicit in the provision of the service, or a necessary ancillary to the provision of it, who are viewed by the ordinary person as having the essential expertise in common to the provision of either the goods or services? (For example, in “vehicle hire services” and the goods “cars”, there are the ancillary personnel common to both, such as car detailers, mechanics, salespersons, credit checkers, and so on which give both the same flavour).

• do the goods usually have this service as a related service agreement or package? For instance, it would be most unusual for a person buying a very expensive piece of machinery not to enter some sort of service agreement. Conversely, are the goods usually offered as part of a service agreement?

• is the nature of the goods or the service such that they would cease to exist without each other, thus creating an expectation of a common source? (Such as “transportation services” and “vehicles” ; or, “vehicle hire services” and “vehicles” ; or “restaurant and take-away food services” and “food”).

• does the service consist of altering, matching and/or installing the goods to a customer’s or client’s requirements? (Such as “curtains and furnishings” and “the sewing of furnishings”). It must be observed that the person doing the service of sewing the furnishings is also exercising the same or very similar skills as were involved in making the curtains. Also, the installers of domestic and industrial equipment are often employed either directly or indirectly by the manufacturer.

• are the goods and services commonly offered by the one company or organisation? (For example, “retail sales” and the equivalent “goods”; or, “telephone communication services” and “telephones”).

• are the goods a necessary adjunct to a particular service or the only tangible result of it? (For example, “advertising services” and “directories”, or “publications”; or, “travel agency services” and “publications” ; or “telephone services” and “directories”).

This list of criteria is not exhaustive, neither, I think, is it necessary that all considerations be satisfied, nor do I think that any single criterion is of necessity conclusive although it may be. However, taken as a general guide, these criteria build up a picture of the total of the considerations involved in assessing what are closely related goods and services. In complex cases such as oppositions, the issue may only become clear on the provision of evidence that addresses factors such as those above.

I have no doubt that the services of this application are completely unrelated to the goods or services of those 25 registrations on which VEL appears to rely.

I therefore dismiss the opposition in terms of section 44.

Section 60

Section 60 of the Act provides:

Trade mark similar to trade mark that has acquired  a reputation in Australia

60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and

(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

Note 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

I have already decided in terms of section 58 that the trade marks are substantially identical. Ms Rolls, in her submissions, said that the evidence presented did not show any use by VEL of the VIRGIN trade mark in respect of domestic and commercial cleaning services, gardening and lawn mowing services or rubbish removal or similar services.  Because of this, she said, the opposition in terms of section 60 should fail.  This is not so.  The third and fourth commas in subparagraph 60(a) operate as brackets and make it clear that the goods or services referred to are not the goods or services of the opponent but those of the applicant.  The inquiry thus is not limited to a bald comparison of similar goods and/or services but to whether, because of the reputation of the opponent's trade mark, the use of the applicant's trade mark on goods or services would deceive or cause confusion.

I do not consider this case to be analogous to the 'brand extension' cases such as Campomar Sociedad, Limitada & Anor v Nike International Ltd & Anor [1998] 776 FCA (7 July 1998); Canon Kabushiki Kaisha v Brook and Another (T/A Cannon Watch Company) (1996) 36 IPR 88; or, McIlhenny Co v Blue Yonder Holdings Pty Ltd formerly trading as Tabasco Design & Anor [1997] 962 FCA (18 September 1997).  The marketing principle, as I understand it, is that the owner of a trade mark in one particular field, such as sports clothing, uses or licenses the trade mark for use in another, notionally related, field, such as deodorants.  The judicial principle appears to be applied in light of what public expectations and prior education about what are the norms in 'brand extension' are.  I think that the commercial fields in which VEL uses its VIRGIN trade mark have such a hazy and indefinite connection with the services that the Bowes offer that the principle does not apply.  I do not think that the public would expect VEL, a supplier of entertainment goods and services to logically extend use of their brand into domestic or commercial cleaning services.

My assessment of the reputation of VEL's VIRGIN trade marks is that to most Australians they represent glitz, glamour and high visibility promotion and entertainment.  Contrasting with this glitz and adventure, the Bowes are concerned with grime and grind.  I do not believe that any ordinary, average Australian could ever be confused or deceived into thinking that the Bowes use of the trade mark VIRGIN could be in any way connected with VEL.

Decision.

I dismiss the opposition on each of the grounds that it was argued.

Costs

Having been successful, the Bowes are entitled to their costs which I award against VEL.

Ian Thompson
Hearing Officer

22 July 2000