Virgin Enterprises Limited v Defiance Energy Pty Ltd

[2003] ATMO 13

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 808022 (35, 36, 39) - VIRGIN ENERGY - filed in the name of DEFIANCE ENERGY PTY LTD.

DATE OF DECISION:

26 February 2003

DELEGATE:

Hearing Officer Claudia Murray

REPRESENTATION:

Opponent

Dauid Sibtain, of Counsel, instructed by Coudert Brothers, Solicitors and International Attorneys

Applicant

Dominic Katter, of Counsel, instructed by Griffith Hack, Patent and Trade Mark Attorneys

DECISION:

1. Section 52 Opposition: registration refused - s 55(a)

2. Costs awarded against applicant

Background

Defiance Energy Pty Ltd (the applicant) filed trade mark application number 808022 on 23 September 1999. The application, originally filed in class 36 of the International (Nice) Classification of Goods and Services, was for the plain word trade mark:

VIRGIN ENERGY

During the examination process, the application was amended to become a multi-class application in classes 35, 36 and 39. The statements of services in each class became:

Class 35: Wholesaling services for the supply of raw materials and energy including electricity, gas, steam and fuel including coal; purchasing and on-selling of raw materials and energy including electricity, gas, steam and fuel including coal; and including all of the foregoing services for the supply of raw materials and energy to energy intensive applications including minerals processing

Class 36: Brokerage services for the supply of raw materials and energy including electricity, gas, steam and fuel including coal; and including all of the foregoing services for the supply of raw materials and energy to energy intensive applications including minerals processing

Class 39: Supply of raw materials and energy including electricity, gas, steam and fuel including coal; and including all of the foregoing services for the supply of raw materials and energy to energy intensive applications including minerals processing

No grounds of rejection under the Trade Marks Act 1995 (the Act) were raised against the application. Therefore, once the matter of correct classification of the applicant's services had been resolved, the application was accepted for registration. Advertisement of acceptance was advertised in the Official Journal of Trade Marks on 31 August 2000.

On 14 September 2000, Virgin Enterprises Limited (the opponent) filed notice of opposition to registration of the trade mark. Three grounds of opposition were listed in the notice.

The opponent's evidence in support, applicant's evidence in answer and opponent's evidence in reply was served and filed. At the end of the process the matter came to a hearing before me, as a delegate of the Registrar, in Canberra, on 18 October 2002. Mr Dominic Katter, of counsel, instructed by Griffith Hack, Sydney, represented the trade mark applicant. Mr John O'Brien, the applicant's sole Director, and colleagues Mr Richard Anthony and Mr Paul Sarks accompanied Mr Katter at the hearing. Mr Dauid Sibtain, of counsel, instructed by Ms Catherine Chant, of Coudert Brothers, Sydney, represented the opponent.

Evidence

Evidence in support

The opponent's evidence in support comprises five declarations, with details as follows:

Date	Name	Description	Exhibits
9 July 2001	Simon Charles Carter (1st declaration)	Commercial Director, Virgin Energy Limited, UK	SCC-1 to SCC-27
11 July 2001	Peter Maxwell Garlick	Managing Director, P.M. Garlick & Associates Pty Ltd (Energy resource planning-electricity)	PMG-1
12 July 2001	Lavinia Jeanne Strachan	Director, Inview Pty Limited (Market research services)	LJS-1 to LJS-3
11 July 2001	Karen Anne Hayne	Solicitor and Senior Associate, Coudert Brothers	KAH-1 to KAH-103
12 July 2001	Rory James Richardson	Intellectual Property Manager, Virgin Management Limited (Opponent's parent company)	RJR-1 and RJR-2

Mr Carter's declaration details the history of the British company Virgin Energy Limited (Virgin Energy). He describes the company as "a member of the group of companies originally established by Sir Richard Branson in approximately 1970, which operate under, or use extensively, the name 'Virgin' (the 'Virgin Group')." Prior to taking on his current position with Virgin Energy, Mr Carter was firstly Head of Marketing, then Head of Retail Strategy at London Electricity. In that capacity, he worked in 1996 with Mr O'Brien (the applicant's sole Director), who was on a six month exchange program from Australia at the time. Mr O'Brien's brief, according to Mr Carter, was to assist London Electricity in preparing for the impending deregulation of the energy industry in the United Kingdom. (Mr O'Brien's presence in London at the relevant time was later confirmed in Mr Carter's second declaration for the opponent's evidence in reply, which exhibits a 15 March 1996 copy of "Dispatches", the sales and marketing newsletter for London Electricity. Mr O'Brien is feted in the newsletter as "Winner of the Week", for winning back the custom of Australia House to London Electricity.)

According to Mr Carter, in the years prior to the deregulation of the residential electricity market in Britain, there was much speculation about whether the Virgin Group, which had "a reputation for entering into newly deregulated markets", would step in and "liven up the industry". Believing this to be a desirable outcome, Mr Carter was heavily instrumental in brokering a joint venture between London Electricity and the Virgin Group, which resulted in the official launch of Virgin Energy on 4 July 2000.

Mr Richardson's declaration details something of the history and expansion of the Virgin Group of companies, as a whole. He explains that Sir Richard Branson first used the name VIRGIN in connection with the sale of recorded music by way of mail order. Since that time, the name VIRGIN has been used in connection with a broad range of goods and services by a large group of companies that comprise the Virgin Group (as also described by Mr Carter). Sir Richard Branson is the Chairman of the Virgin Group. The Virgin Group now comprises companies that remain under its ownership and control, together with companies operating under licence to use the VIRGIN trade marks. Mr Richardson declares that, over the last thirty years, the Virgin Group has used the name VIRGIN throughout the world in relation to a very broad range of businesses. He lists, by way of example, forty six businesses, which provide such diverse goods and services as passenger balloon flights, airline services, soft drinks, sale of gas and electricity, freight delivery, hotel services, financial services, sale of clothing, and many others. Several of these businesses have been active in Australia or in the Asian region.

Mr Richardson reports that the opponent (Virgin Enterprises Limited) owns more than 1,400 trade mark registrations in over 140 countries, including Australia. The first VIRGIN trade mark was registered in Australia in 1974. Exhibit RJR-1 to Mr Richardson's declaration is a 58-page document listing the all the opponent's trade mark registrations throughout the world. With a few exceptions, these trade marks comprise the word VIRGIN alone, either in plain type or in a signature script, or together with another word, such as VIRGIN MEGASTORE, or VIRGIN ATLANTIC. Forty-two Australian registrations are listed, covering goods and services in classes 16, 18, 25, 28, 32, 33, 35, 36, 38, 39, 41 and 42. To illustrate the different versions of the opponent's VIRGIN trade marks, and as the information is also relevant for the purposes of the opponent's ground of opposition under section 44, discussed below, I have detailed below those of the opponent's prior registrations that cover services in class 39:

TM No	Trade Mark	Class	Filing Date	Statement of Goods (Class 39 only)
486336	39	3 May 1988	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
486340	VIRGIN	39	3 May 1988	As above
561556	39	13 Aug 1991	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
751188	35, 39, 41, 42	16 Dec 1997	Transportation of and arranging transportation of goods and of passengers by road, rail, air and sea; freight services; ground transport services; car and motorcycle hire; chauffeur services; arranging of travel; tourist offices; travel agencies; tour operating; reservation services; operation of aircraft, airships and air balloons
751189	VIRGIN ATLANTIC AIRWAYS	35, 39, 41, 42	16 Dec 1997	As above
751190	VIRGIN ATLANTIC	35, 39, 41, 42	16 Dec 1997	As above

Ms Strachan's declaration, drawing on thirty-six years of market research experience, describes the VIRGIN brand as "one of the most recognised and strongest brand names in the world today". VIRGIN's success is attributed to exposure of the whole "global village" to the Sir Richard Branson and Virgin Group publicity machine. This machine, (boosted mightily in my observation by the eagerness of its founder to ever satisfy the spectacle-hungry media with a bountiful and diverse array of photo opportunities and "media events"), generates vast amounts of free publicity, on top of the considerable amount of paid advertising it also utilises. Ms Strachan says:

In the case of the Virgin brand, it is not so much the trade mark (be it the Virgin signature or Virgin word marks) that I consider consumers necessarily need to see to recognise the Virgin brand. It is the intangible aspects of the Virgin brand which the word "Virgin" raises in the minds of consumers. In my view, the strength of the Virgin Group brand is the word "Virgin", whether appearing in stylised signature form or commonly written, and it is with this word that consumers recognise the brand. The power of the Virgin brand is that it has, in a very short space of time, evolved a very clear set of brand values.

In my opinion, there are a number of attributes or brand values which the Virgin brand communicates to consumers. These include:

·good value for money;

·superior customer service;

·diversity;

·a touch of the Sir Richard Branson charisma and adventurer spirit; and,

·fun and innovative style.

One of the major strengths of the Virgin brand is its ability to extend into unrelated and unexpected areas, which are very diverse. Consumers are aware and understand this about the Virgin Group. In addition, the public personality of Sir Richard Branson is also full of the unexpected, and the "willing to have a go" attitude. One therefore rubs off onto the other. In the case of Sir Richard Branson, he does not, for instance, appear to the average person to have the trappings of extreme wealth about him and is often referred to as an adventurer rather than a business man. The Sir Richard Branson persona, which has become welded to the Virgin Group, therefore allows the Virgin brand to extend where other brands could not. It is difficult to think of a brand which has travelled over such a broad array of areas as the Virgin Group has and continues to do.

Ms Haynes' declaration, supported by 103 exhibits, paints an extravagant picture of the publicity generated throughout the world for the various business activities carried out under the auspices of Sir Richard Branson and his VIRGIN brand. At the hearing, Mr Sibtain described it as a "convenient repository" for many media articles and other documents evidencing the opponent's "ubiquitous" reputation across a wide range of goods and services.

Evidence in answer

The applicant filed four declarations in answer:

Date	Name	Description	Exhibits
13 May 2002	John Gerard O'Brien	Opponent's Sole Director	JOB-1 to JOB-9
27 March 2002	Diane Connolly	Management Consultant
27 March 2002	Heather Joy Laurie	Director, Equinox Pty Ltd, t/as Facing Pages Advertising
27 March 2002	Graham Brian Kirkwood	Director/Owner Karleigh Pty Ltd (Corporate support and advisory services)

Mr O'Brien's declaration gives a brief account of his 22 years engineering experience in energy provision services. He explains that he accepted a redundancy offer from his employer, North Queensland Electricity Corporation Limited in 1998 to become an energy consultant. Mr O'Brien makes no response to Mr Carter's recollections of his activities in London in the critical period prior to deregulation of the UK energy industry. Instead, he recounts that he first proposed the name VIRGIN in relation to the provision of energy services while on secondment to Northern Electricity Retail Corporation Pty Ltd (Northern Electricity) in October 1997, during a planning retreat organised to choose a new name for that corporation. He explains his choice in terms of the 12^th definition of "virgin" in the Macquarie Dictionary, Third Edition, of "untouched, untried or unused; virgin bush; virgin soil". This definition, he says, makes the name "appropriate for an entity engaged in the provision of energy from sources that may be considered as, to some extent, 'untouched, untried or unused' including solar energy and wind power".

Northern Electricity did not adopt Mr O'Brien's suggestion. Subsequently, in early 1998, he registered the business name VIRGIN ENERGY in Queensland, with a view to establishing an energy services company providing "consulting services for the 'green' or environmentally safer and renewable energy sectors" operating under that business name and trade mark (applied for later, in September 1999). Mr O'Brien then describes in his declaration a small amount of business that was conducted under the trade mark in the years 2000 and 2001.

Evidence in reply

The opponent replied with a further two declarations:

Date	Name	Description	Exhibits
14 August 2002	Simon Charles Carter (2nd declaration)	Commercial Director, Virgin Energy Limited, UK	SCC-1
15 August 2002	Martin Joseph O'Connor	Partner and Solicitor, Coudert Brothers	MOC-1 to MOC-16

Grounds of opposition

The notice of opposition specified three grounds of opposition, under sections 43, 44 and 60. At the hearing, Mr Sibtain indicated that the opponent wished to press all three grounds, but would focus mainly on sections 43 and 60, with "lesser submissions" under section 44. For convenience, I will deal with the three grounds of opposition in numerical order.

Section 43 - Trade mark likely to deceive or cause confusion

Section 43 of the Act provides:

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.

Submissions

Mr Sibtain began his submissions by stating that the relevant test under section 43 is:

Having regard to the reputation acquired by the name VIRGIN, is the Registrar satisfied that the mark applied for, that is VIRGIN ENERGY, if used in a normal and fair manner in connection with any goods covered by the proposed registration will not be reasonably likely to cause deception or confusion amongst a substantial number of persons?

Mr Sibtain cited Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, Jafferjee v Scarlett (1937) 57 CLR 115, Johnson & Johnson v Kalnin (1993) 26 IPR 435 at 438-42, and Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375 at 378-379 and 383-384 in support of this proposition. He said, further, that the likelihood of confusion is to be answered not be reference to the manner in which the applicant has used its trade mark in the past, but by reference to the use to which it can properly put the mark if it becomes registered (Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353 at 362). He argued that the evidence the evidence of Karen Anne Hayne, Rory James Richardson and Lavinia Jeanne Strachan clearly demonstrated the opponent's reputation in the name VIRGIN. He argued:

The opponent, through its subsidiaries, associates and licensees, is ubiquitous. One of the major strengths of the VIRGIN brand is its ability to extend into unrelated and unexpected areas. It is one of the most recognized brand names in the world today. The goods and services in respect of which it has acquired a substantial reputation are, in many respects, entirely unrelated. They are drawn together by the pervasive influence of the name VIRGIN upon the minds of persons who acquire goods or services by reference to that name.

The evidence demonstrates, not only that the opponent has conducted a wide range of activities in Australia under or by reference to its name VIRGIN, but also that Australian consumers and commercial persons understand the opponent to be a company which engages in a limitless range of activities. Moreover, those persons are aware of the fact that the opponent's reputation is neither limited by jurisdictional boundaries or by business type. The worldwide reputation (as to evidence of overseas activities, see Anheuser-Busch v Castlebrae Pty Ltd (1991) 32 FCR 64) of the opponent has permeated Australian consciousness to such an extent that the use of the name VIRGIN in connection with an apparently limitless range of goods and services will signify a connection with the opponent.

Mr Sibtain submitted that, in light of these circumstances, there was a real and tangible risk that persons seeking to acquire the applicant's services would, upon seeing the applicant's mark, be caused to wonder whether those services came from the opponent.

Mr Katter began his submissions in response by, somewhat surprisingly, reading out a passage from the Bible. The passage referred to the Virgin Mary, and Mr Katter's point was that, in the English language, the word "virgin" has certain connotations that have nothing whatsoever to do with the opponent. Mr Katter then went on to quote the nineteen meanings given in the Macquarie Dictionary for the word "virgin". While I will not reproduce all of them here, they range from:

• a woman, especially a young woman, who has had no sexual intercourse (1^st definition),

• the Virgin, Mary, the mother of Christ (often called the Blessed Virgin) (4^th definition) and

• denoting the oil obtained as from olives, etc, by the first pressing without the application of heat" (18^th definition).

Mr Katter cited the Explanatory Memorandum to the Trade Marks Bill 1995, and Trade Marks Office decisions such as Down To Earth (Victoria) Co-Operative Society Ltd v Schmidt (1998) 41 IPR 632, Durkan v 20th Century Fox Film Corporation (2000) 47 IPR 651, and others. These sources, he said, clearly showed that the word "connotation" in section 43 refers to that which is implied in a trade mark, in addition to its essential or primary meaning. Such an implication, said Mr Katter, derived from an inherent signification in a word or device, as opposed to any trade mark signification that may be attached to it.

Discussion

I agree with Mr Katter's interpretation of section 43. The kind of circumstances intended to be addressed by that section occurred in the VITAMIN and ORLWOOLA cases (J. Kitchen & Sons Pty LTD v Inman (1939) 9 AOJP 1383 (Reg.), Re Trade Mark "Orlwoola" (1909) 26 RPC 850 (C.A.)). In those cases, there was a danger the public might make a reasonable, but incorrect, assumption about a product based upon the trade mark, which could not easily be confirmed or discounted by even close inspection of the product.

The underlying principle enshrined in section 43 is described by Lord Macnaughten in Dunn's Trade Mark (1890) 7 RPC 311 at 318:

Unfortunately in the competition for business a trader not infrequently endeavours to attract custom by representing that the goods which he offers for sale are different in origin, composition or character from what they really are. The public are constantly tempted to buy one thing when they think they are buying another. It is not, as has been observed, the province of the court to protect speculations of this kind. Between rival traders the application of the principle is necessarily a matter of extreme difficulty. But as between the innocent public and a trader seeking registration of a proposed trade mark, there is, I think, no room for hesitation or doubt.

Mr Sibtain is, however, not alone in his broader interpretation of the purpose to which section 43 might be put. Lahore, Patents, Trade Marks and Related Rights (2001) disagrees that the function of section 43 should be restricted to a consideration of the application mark itself, because section 60 provides protection against deception and confusion where the application trade mark is compared with a mark with a reputation in Australia. It says, at 66,125, "this line of argument may not withstand close scrutiny". The Trade Marks Office Manual of Practice and Procedure (the Manual) says, at Part 29, paragraph 1.4, that deception and confusion of the public within the scope of section 43 might arise in relation to:

• Character of the goods and/or services including their composition, nature or other properties

• Quality or quantity of the goods and/or services

• Geographical origin of the goods and/or services

• Intended use or purpose of the goods and/or services

• The endorsement or licence of a product or service by a person or organisation.

The Manual discusses the inclusion in trade marks of names or representations of well known persons at paragraph 4.1.1. An example given is that the name of the famous tennis player Boris Becker, if used as trade mark for tennis gear, could suggest to ordinary member of the public that those goods were endorsed by Becker. Upon this point, Lahore, supra, makes the following comment:

Accepting that a trade mark may enjoy a reputation at least equivalent to that which Boris Becker has in his name, it should follow that the owner of a well known mark which is not registered in Australia, and in respect of which no application has been filed should be able to rely on s 43 to argue that use of the application mark will give rise to deception or confusion because it connotes an association with the well known mark. The connotation may arise irrespective of differences between the goods/services in respect of which registration is sought and the goods/services in respect of which the well known mark has acquired its reputation.

It is however likely that the risk of deception or confusion will decrease in inverse proportion to the similarities between the goods/services in respect of which the marks are used (to be used).

The Full Federal Court, in Big Country Developments Pty Ltdv TGI Friday's Inc, [2000] FCA 720, 48 IPR 513 at 521, does not agree. Wilcox, Kiefel and Emmett JJ said:

The case on deception and confusion sought to be made by Big Country and Friday's Australia in the present proceedings is one that falls outside the reasons specified in [section 43]. It does not depend upon some connotation in the registered mark, but upon its similarity to a name used by Big Country and others. So the alleged deception or confusion is not for a reason covered by s 43.

Similarly, in the present case, the opponent's arguments for deception and confusion do not depend upon any connotation inherent to the applicant's trade mark VIRGIN ENERGY, but rather they rely upon its similarity to the opponent's VIRGIN trade mark. Mr Sibtain has requested me to consider his arguments equally in relation to sections 43 and 60. However, I find that they do not support a case for opposition under section 43. Accordingly, I will address the arguments again in the context of section 60. Here, I find the ground of opposition under section 43 to be unsuccessful.

Section 44 - substantially identical or deceptively similar trade marks

The relevant subsection (and notes) of section 44 provides:

(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 definition of "deceptively similar" in section 10 is that "a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion". Subsection 14(2) provides that services are similar to other services if they are the same as, or of the same description as, those other services.

Submissions

Mr Sibtain cited the well known tests for substantial identity and deceptive similarity set out in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407, and Australian Woollen Mills Ltd v F.S.Walton & Co Ltd (1937) 58 CLR 641. He submitted that, under these tests, the applicant's trade mark VIRGIN ENERGY was both substantially identical and deceptively similar to the opponent's trade mark VIRGIN. Therefore, he argued, assuming normal and fair use of both the applicant and the opponent's trade marks in respect of the goods covered by their respective application/registrations, there was a reasonable likelihood that a substantial number of persons would be deceived or confused.

In regard to the further question under section 44, whether the applicant's and opponent's services were similar, Mr Sibtain pointed out that it is relevant to take into account the nature of the services, their uses, and the trade channels through which they are bought and sold. He cited Jellinek's Application (1946) 63 RPC 59, John Crowther & Sons (Milnsbridge) Ltd's Application (1948) 65 RPC 369 at 372, and others in support of this point. He said:

It is submitted that the applicant's services are similar to the services in respect of which the opponent's class 39 trade marks are registered. The supply of raw materials may involve the transportation of raw materials such as coal. The supply is, in effect, facilitated by the provision of transportation services. All aspects of supply are covered by the scope of the services of the application, such that, when used normally and fairly, the trade mark may be applied to the transportation services which are provided as a necessary incident of supply.

Mr Katter, citing amongst others the same tests cited by Mr Sibtain, argued to the contrary that the trade marks in question were neither substantially identical, nor deceptively similar. Further, he submitted that the services covered by the applicant's trade mark were completely unrelated to the services covered by the opponent's registrations.

Discussion

The opponent's trade mark registrations have an earlier priority than the subject application. This important criterion, set out at paragraph 44(2)(b), is not in dispute between the parties. The issues to be decided here are whether the trade marks in question are either substantially identical or deceptively similar, and whether the services to which they apply are similar.

The test for substantial identity referred to above is set out by Windeyer J in The Shell Co. of Australia Ltd. v. Esso Standard Oil (Australia) Ltd, supra, at page 415:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106.

Mr Sibtain did not differentiate in his submissions the opponent's class 39 registrations upon which he was particularly relying in terms of section 44. I have listed all of them in the "Evidence" section above. Some show the word VIRGIN in script form, and two contain the extra words ATLANTIC and ATLANTIC AIRWAYS. However, to simplify discussion here, I will focus on the opponent's prior trade mark number 486340, which is in respect of the plain word VIRGIN.

In regard to the question of substantial identity and trade marks containing the word VIRGIN, there are some interesting precedents to be considered. For example, in Virgin Enterprises Ltd v Bowes (2000) AIPC 91-656 at 38,391, the trade marks VIRGIN and VIRGIN HOME SERVICES were found to be substantially identical. This contrasts with the hearing officer's finding in the unreported opposition decision (dated 17 January 2000), regarding trade mark number 663433. Mr Nancarrow found there that the trade mark VIRGIN GARDEN was neither substantially identical, nor deceptively similar to the trade mark VIRGIN because their respective meanings were different.

In PB Foods Ltd v Malanda Dairy Foods Ltd (1999) AIPC 91-531, Carr J held that the trade marks CHOC CHILL and CHILL were substantially identical. I do not believe that the situation there is analogous to the present case. In deciding that the trade marks CHILL and CHOC CHILL were substantially identical, and applying Windeyer J's test quoted above, Carr J found (at paras 31 and 32) that the essential feature of both trade marks was the word CHILL. This word "serve[d] to denote the trade origin of the goods." The word CHOC, he said, had "different work to do". The word was "utterly descriptive". This phrase, as Carr J went on to explain, was borrowed from a decision by Hearing Officer Forno, Microcom Pty Ltd v Microcom Systems Inc (1998) 41 IPR 163. In that decision, Hearing Officer Forno found the words NETWORKING PROTOCOL to add nothing to the mark MICROCOM NETWORKING PROTOCOL, such that the trade marks MICROCOM and MICROCOM NETWORKING PROTOCOL were substantially the same.

Setting the applicant's and the opponent's trade marks side by side, the difference between VIRGIN and VIRGIN ENERGY is clear. As I will explain below, I do not believe it is the kind of difference that would lead the trade marks to avoid being deceptively similar to each other. However, it seems to me that the word ENERGY in the applicant's trade mark, even in relation to the services specified, has more "work to do" than did the words CHILL, NETWORKING PROTOCOL, or HOME SERVICES in the trade marks discussed above. It serves to create context, and a total impression, along the lines of "untouched or untried energy" as described by Mr O'Brien in his declaration. This impression is missing from the word VIRGIN alone which, without qualification, stands for any or all of its nineteen meanings. I conclude that, on a side by side comparison, there is a total impression of dissimilarity between the applicant and the opponent's trade marks which leads to a finding that they are not substantially identical.

The tests for deceptive similarity are less straightforward than those for substantial identity. Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd, supra, at page 658 say:

In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.

I believe that the "ordinary person" faced with, given both its sexual and biblical associations in the English-speaking world, a somewhat unexpected use of the word VIRGIN in a trade mark context, would carry away and retain a significantly strong impression from the word. This strong impression would, in my opinion, lead to their likely deception and confusion if they then encountered use by another party of the trade mark VIRGIN ENERGY, in the context of the same or similar services.

This brings me to the final criterion for an opponent's success under section 44. That is, whether the services covered by the trade marks in question are "similar", in terms of subsection 14(2). The services covered by the opponent's trade mark number 486340 include:

Services included in class 39 being transportation and distribution services in this class by road, rail, air and sea.

The applicant's services in class 39 include:

Supply of raw materials and energy including electricity, gas, steam and fuel including coal.

The International (Nice) Classification of Goods and Services, version 7, contains listings for "distribution of energy" and "transport by pipeline" in class 39. Therefore, as Mr Sibtain has pointed out, the scope of the opponent's registration for a broad range of transportation and distribution services includes such services as might necessarily be involved in the supply of energy covered by the applicant's trade mark.

Taking all of the above into account, I find that a ground of opposition exists under section 44, based upon trade mark number 486340. The applicant did not argue a case for acceptance under either of the honest concurrent use or prior use exceptions offered under subsections 44(3) and (4), and the evidence before me does not in any event support such an acceptance. The opponent has therefore succeeded under section 44.

Section 60 - trade mark with a reputation in Australia

Section 60 provides:

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.

Submissions

Mr Sibtain's submissions in terms of section 60 have already been recorded in respect of the ground of opposition argued under section 43. Mr Katter responded that the opponent's evidence did not show any use of its VIRGIN trade mark with respect to the kind of services actually provided by the applicant. The services provided were, he said, "the provision of specialised technical advice in the electricity efficiency sector and as a developer of generally remote wind-generation projects or the provision or raw materials in the energy sector." Mr Katter continued that the "commercial field" in which the opponent uses its VIRGIN trade marks has "a hazy and indefinite connection with the services that the Applicant offers". In these circumstances, he said, "a reasonable member of the public would not expect [the opponent] to logically extend use of its brand into the provision of specialised technical, electrical services".

Discussion

To satisfy section 60, an opponent must demonstrate that at the time of filing of the opposed application, it had a reputation in a substantially identical or deceptively similar trade mark, such that use of the applicant's trade mark would likely cause the public to be deceived or confused. I have already concluded above that I do not consider the trade marks in question to be substantially identical. However, I have found that the trade marks VIRGIN and VIRGIN ENERGY are deceptively similar. I have reported above a precis of the nature and considerable scope of the opponent's activities, which have been demonstrated in the voluminous documentary evidence put before me. I am now convinced that, as at 23 September 1999, use of the applicant's trade mark, even on the very limited services suggested by Mr Katter, (leaving aside the full range of services actually covered by the application) would have resulted in deception or confusion of the public.

In his comments regarding the lack of connection between the commercial field of use of the opponent's trade mark and the applicant's very narrow field of actual interest, Mr Katter was echoing the words of Hearing Officer Thompson in Virgin Enterprises Ltd v Bowes, supra. However, the situation here is different from the situation before Mr Thompson. In the first instance, as Mr Sibtain drew to my attention, deficiencies in the opponent's evidence in the earlier case relating to control of the VIRGIN trade mark have since been rectified. Further, in the Bowes case, the services of interest to the applicant were in the nature of domestic and commercial cleaning services. In his concluding remarks, Mr Thompson said:

My assessment of the reputation of [the opponent'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 [the opponent].

By contrast, here there is, at the very least, a notional connection between some of the transportation and distribution services for which the opponent has achieved registration and upon which it uses its VIRGIN trade mark in Australia, and the services covered under the applicant's mark. Further, the opponent's evidence shows it has provided services similar to the applicant's services in the UK since July 2000, (1^st Carter declaration), and that commercial consumers of energy, energy brokers and others in the energy supply industry in Australia would be very familiar with this fact (Strachan declaration, paragraphs 36-40).

In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) AIPC 90-892, at 38434, Gummow J relevantly describes various circumstances in which a party may have established a reputation in its trade mark, which may then be affected by the use of a deceptively similar trade mark by another trader:

In my view, where the plaintiff, by reason of business operations conducted outside the jurisdiction, has acquired a reputation with a substantial number of persons who would be potential customers were it to commence business within the jurisdiction, the plaintiff has in a real sense a commercial position or advantage which it may turn to account. Its position may be compared with that of a plaintiff who formerly conducted business within the jurisdiction and has retained a reputation among its erstwhile customers, and with that of a plaintiff with a reputation which arises from its trade in the jurisdiction, but extends to goods or services which are not presently marketed by him. If the defendant moves to annex to itself the benefit of such a reputation by attracting custom under false colours, then the defendant diminishes the business advantage of the plaintiff flowing to it from the existence of his reputation.

After due consideration of all the circumstances of this case, I find that the opponent has demonstrated it has the requisite reputation in the trade mark VIRGIN, to support its ground of opposition under section 60.

Decision

Section 55 of the Act provides:

Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

(a) to refuse to register the trade mark; or

(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

Note:    For limitations see section 6.

I have found the opposition to have succeeded on two of the three grounds argued at the hearing. Therefore, subject to any successful appeal from my decision, I refuse to register trade mark application number 808022.

Costs

The opponent has sought and is entitled to its costs in this matter. Accordingly, I award costs, according to the official scale, against the unsuccessful trade mark applicant, Defiance Energy Pty Ltd.

Claudia Murray

Hearing Officer

Trade Marks Hearings

26 February 2003