Virgin Enterprises Limited v Sugar Virgin Pty Ltd

[2014] ATMO 39

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 1355410 (30) – VIRGIN - filed in the name of Sugar Virgin Pty Ltd

Delegate:	Bianca Irgang
Representation:	Opponent: Andrew Fox of counsel instructed by Addisons Lawyers Applicant: Self represented by Michael Hain
Decision:	2014 ATMO 39 s.52 opposition – s 60 ground of opposition established for all goods - trade mark use likely to deceive or cause confusion – s 62(a) not established – registration refused.

Background

1. Originally Virgin Sugar Pty Ltd filed the application on 27 April 2010 which was then amended to Sugar Virgin Pty Ltd (‘the applicant’) in class 30 of the International Classification of Goods and Services. Relevant details of the application are set out below.

Trade mark:  VIRGIN

Trade mark application:      1355410

Filing Date:  27 April 2010

Specification:  Class 30: Boiled sugar; boiled sugar confectionery; boiled sugar sweetmeats; caramelised sugar; flavoured sugar confectionery; foamed sugar pastilles; foamed sugar sweets; foodstuffs made of sugar for making a dessert; foodstuffs made of sugar for sweetening desserts; fruit sugar; grape sugar; icing sugar; invert sugar; liquid sugar; non-medicated sugar candies; non-medicated sugar confectionery; powdered sugar for preparing isotonic beverages; preparations made from sugar; sugar; sugar almonds; sugar coated peanuts; sugar confectionery; sugar for making conserves of fruit; sugar for making jams; sugar for making jellies; sugar free chewing gum (not for medical purposes); sugared almonds

1. The application was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 26 August 2010. Acceptance of the trade mark was revoked on 27 August 2010 and advertised on 16 September 2010. Following an amendment to the trade mark owner’s name from Virgin Sugar Pty Ltd to Sugar Virgin Pty Ltd, the application was eventually accepted for possible registration on 23 September 2011 and advertised as such on 29 September 2011.

2. Virgin Enterprises Limited (‘the opponent’) filed a Notice of Opposition (‘the Notice’) to the registration of the application on 24 February 2012. Thereafter the opponent and applicant served and filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).

3. I heard the matter in Canberra on 17 February 2014 as a delegate of the Registrar of Trade Marks. Mr Andrew Fox of counsel instructed by Addisons Lawyers represented the opponent. The applicant was self represented by Mr Michael Hain.

Grounds of Opposition

1. The Notice nominated most of the grounds of opposition available under the Trade Marks Act 1995 (‘the Act’). The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[1] His findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2].

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

   [2] [2009] FCA 891, para 22-27 (2009) 82 IPR 13. See also Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32])

2. At the hearing the opponent advised that it would press and provide submissions only on the grounds under sections 42(b), 43, 44, 60 and 62 of the Act. None of the evidence served and filed by the opponent appears to go to the other grounds in the Notice and for the sake of completeness I find that those grounds have not been established.

3. Therefore, the grounds remaining for my consideration are those under sections 42(b), 43, 44, 60 and 62 of the Act. Should the opponent establish one ground of opposition in relation to all of the applicant’s specification of goods, there is no requirement for the other nominated grounds of opposition to be considered.

Evidence

1. The evidence consists of the following statutory declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Victoria Wisener	Trade Mark Attorney	24.10.12	VW-1 to VW-3
Karen Anne Hayne[3]	Partner of Addisons Lawyers	8.11.12	KAH-A to KAH-FF
Karen Anne Hayne[4]	Partner of Addisons Lawyers	16.11.12	KAH-A to  KAH-E
Evidence in Answer
Michael John Hain	Director of Sugar Virgin Pty Ltd	22.07.13	MJH-A to MJH-B
Evidence in Reply
Karen Anne Hayne[5]	Partner of Addisons Lawyers	8.10.13	KAH-A to KAH-E

[3] For ease of reference throughout the decision this declaration will be referred to as Hayne 1.

[4] This declaration shall be referred to as Hayne 2.

[5] This declaration shall be referred to as Hayne 3.

Opponent’s Evidence

1. The opponent’s evidence is voluminous, comprising of 23 volumes containing more than seven thousand pages of exhibits. The majority of this is contained in exhibit KAH-A accompanying Hayne 2, which is a copy of Ms Hayne’s earlier statutory declaration dated 14 October 2010 (‘the defensive declaration’) and its volumes of exhibits filed in support of the opponent’s defensive application for the trade mark application no.1373084 VIRGIN in classes 10 and 30. The opponent has submitted this exhibit for the purpose of establishing the reputation of its trade marks across a broad range of goods and services since before the priority date of the opposed trade mark. Given the extensive evidence I will provide a brief overview under this heading and address the evidence in more detail in the discussion of the particular grounds of opposition.

10.  The opponent is a UK company which is the owner of all the trade mark applications and registrations for the Virgin group of companies (‘the Virgin Group’) of which the entrepreneur Sir Richard Branson is the Chairman. There are approximately 3000 of these applications and registrations in more than 150 countries, including Australia. The Opponent first registered the word VIRGIN in Australia in 1974 in class 9, and first registered the word VIRGIN in fancy script (depicted below) in 1986, also in class 9[6].

[6] For ease of reference throughout the decision I will refer to the word and fancy script marks collectively as the opponent’s VIRGIN trade marks.

11.  Sir Richard Branson first used the name VIRGIN in the UK in 1970 in respect of the sale of recorded music by mail order. Since that time, a wide range of businesses have been conducted under that name either under the control of, or as licensee of, the Virgin Group in areas as disparate as airlines, balloon rides and beverages or computer games, fitness health clubs and bridal wear. Turnover has been in the order of billions since the late 1990s. Not all of these businesses are still in operation. However, it is clear from exhibit KAH-4 of the defensive declaration that from 2001 the opponent has had many diverse businesses and continues to pursue new business opportunities which use the VIRGIN trade marks. It is also clear from the evidence that the opponent is known for its diversification.

12.  In particular I note that the opponent has used their VIRGIN trade marks in Australia on a number of beverages including cola and iced tea (exhibits KAH-67 to KAH-77 accompanying the defensive declaration) as well as goods such as nuts, mints and Vodka (exhibit KAH-96 accompanying the defensive declaration). While the opponent has also used its VIRGIN trade mark on chocolates it appears that these chocolates could only be purchased in the UK by consumers who had purchased a VIRGIN branded balloon flight (exhibit KAH-E accompanying the defensive declaration). During February 1996 and January 1998 the turnover for VIRGIN cola is moderate with a considerable amount of cases of the cola sold within Australia.

13.  The opponent’s annual turnover for some of its other businesses listed in paragraphs 41 and 107 of the defensive declaration demonstrates considerable growth in sales since at least 2001. Exhibits KAH-8, KAH-35, KAH-36, KAH-38, KAH-69, KAH-74, KAH-80, KAH-82, KAH-89, KAH-92, KAH-116, KAH-129, KAH-130, KAH-138, KAH-169 accompanying the defensive declaration set out further very considerable gross sales and advertising expenditure related to the opponent’s various VIRGIN goods and services.

14.  The advertising expenditure for its various VIRGIN businesses has also been very considerable and has involved many different advertising mediums including print, online, television, radio, billboards, brochures, bus side panels, and flyers. Evidence of these advertising activities as well as promotion through independent news articles is supported by voluminous examples found throughout the thousands of pages of the opponent’s evidence (exhibits KAH-6, KAH-7, KAH-9 to 30, KAH-32 to 34, KAH-37, KAH-39 to 68, KAH-70 to 73, KAH-75 to 79, KAH-81, KAH-83 to 88, KAH-90 to 91, KAH-93 TO 99, KAH-105 to 115, KAH-117 to 128, KAH-131 to 137, KAH-139 to 168, KAH-170 to 192 accompanying the defensive declaration).  

Applicant’s evidence

15.  The applicant’s evidence consists of the statutory declaration of Michael John Hain. The Hain declaration has been made in direct response to the opponent’s evidence in support either accepting or denying the various statements made in the opponent’s evidence. The statements of Mr Hain generally corroborate time lines for the acceptance and revocation of the opposed trade mark and the correspondence which passed between the parties. However, most of the Mr Hain’s statements are unsupported by evidence.

16.  The Hain declaration does outline Mr Hain’s intent that Virgin Sugar Pty Ltd was to be incorporated and that the trade mark application was researched, prepared, initiated, submitted and conducted in all respects by Mr Hain for the benefit of the company that was to be incorporated. The Hain declaration also outlines how Mr Hain’s attempts to incorporate Virgin Sugar Pty Ltd were frustrated by Addisons Lawyers who reserved the name with ASIC[7]. A copy of the form, ‘Application for reservation of name’, was requested by Mr Hain from ASIC and was provided in his evidence (exhibit MJH-B).

Discussion

[7] Australian Securities & Investments Commission

Section 62

17. Section 62 of the Act provides:

62 Application etc. defective etc.

The registration of a trade mark may be opposed on any of the following grounds:

(a) that the application, or a document filed in support of the application, was amended contrary to this Act;

(b) that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.

Note: For file see section 6.

18. The opponent contends that the opposition may be determined swiftly in its favour by the application of section 62(a) of the Act because the application was amended contrary to the Act. This is because at the time the application was filed on 27 April 2010, the entity which was named as the owner on the trade mark application, did not exist. The company listed on the original trade mark application was Virgin Sugar Pty Ltd and as of 27 April 2010, was not incorporated. The individual who prepared the application on behalf of the initial applicant, Mr Michael Hain, never caused a company bearing that corporate name to be incorporated in Australia. However, I note that Mr Hain was at all times the primary contact for all correspondence relating to this trade mark application and that he had intentions of registering the entity Virgin Sugar Pty Ltd with ASIC.

19. The opponent asserts that because of the above, the entity purporting to file the application had no recognizable legal status at the time the application was filed. As such, the failure of the initial application to be made by an incorporated entity at the time of filing constitutes a failure to comply with section 27(2)(c) of the Act. The opponent also submits that the Registrar’s decision to amend the name of the owner from Virgin Sugar Pty Ltd to Sugar Virgin Pty Ltd was an amendment made contrary to the Act and invokes the opposition ground under section 62(a) of the Act. However, I do not believe this is the case and that this two pronged argument by the opponent requires discussion.

20.  The relevant chronology relating to the amendment of the opposed application starts with the filing of the application on 27 April 2010 in the name of Virgin Sugar Pty Ltd. As advised earlier, the application was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 26 August 2010. The opponent applied for revocation of acceptance of the application on 14 July 2010 and acceptance of the trade mark was revoked on 27 August 2010 and advertised on 16 September 2010.

21.  On 9 August 2011, nearly a year after acceptance of the application was revoked, Mr Hain requested in a conversation with the trade mark Examiner that the name of the applicant be changed to “Sugar Virgin Pty Ltd atf Virgin Sugar Trust’. On 22 September 2011, the request was allowed.

22. Firstly, I will consider the opponent’s argument that section 27 has not been complied with and that the application did not meet the filing requirements.

23. Section 27 of the Act states:

27 Application—how made

(1) A person may apply for the registration of a trade mark in respect of goods and/or services if:

(a) the person claims to be the owner of the trade mark; and

(b) one of the following applies:

(i) the person is using or intends to use the trade mark in relation to the goods and/or services;

(ii) the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;

(iii) the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.

Note: For use see section 7.

(2) The application must:

(a) be in accordance with the regulations; and

(b) be filed, together with any prescribed document, in accordance with the regulations; and

(c) be made by a person or persons having legal personality.

Note: For file see section 6.

(2A) Despite paragraph (2)(c), an application for registration of a collective trade mark need not be made by a person or persons having legal personality.

Note: For collective trade mark see section 162.

(3) Without limiting the particulars that may be included in an application, the application must:

(a) include a representation of the trade mark; and

(b) specify, in accordance with the regulations, the goods and/or services in respect of which it is sought to register the trade mark.

(4) Regulations made for the purposes of paragraph (3)(b) may apply, adopt or incorporate any matter contained in any listing of goods and/or services published by the Registrar from time to time and made available for inspection by the public at the Trade Marks Office and its sub‑offices (if any).

(5) An application may be made in respect of goods and services of one or more of the classes provided for in regulations made under subsection 19(3).

24. As detailed above, section 27 of the Act sets out how a person may apply for the registration of a trade mark in respect of goods and/or services. Significantly, a person may apply if they ‘claim to be the owner of the trade mark’ (section 27(1)(a)). A ‘person’ for the purposes of the Act is defined, subject to contrary intention, to include an unincorporated body of persons (section 6 of the Act).

25. An entity will have legal personality if the legal system confers rights and imposes duties on it. Natural persons and owners corporations (such as corporations) have separate legal personality as per section 124 of the Corporations Act 2001. However, in the case of partnerships and trusts, the individual partners and the trustee are generally regarded as the ‘persons’ having legal personality. As such, business names are merely trading names which are not usually separate legal entities and cannot make an application for the registration of a trade mark.

26.  Having said that, the issue before me is essentially whether an application purportedly made by an entity that is not a person or persons having legal personality is a nullity. In The King v The Commissioner of Patents and Others (1939) 61 CLR 240, the High Court considered the case where a notice of an objection to a patent, which was required to be made by a person, was made in the name of a firm, ie a mere trading name. Dixon J stated (at 259-260):

To make an objection in the firm's name was irregular. The firm-name is the description of the partners acting in conjunction for the purposes and within the scope of the partnership. It may be conceded that, not only does it insufficiently identify the individuals constituting the partnership, but it indicates an association of persons acting in a particular capacity or right. But I do not think that the misdescription or misnomer involved in the use of the partnership name makes the notices of opposition mere nullities. Under the power to make regulations contained in sec. 108, it would, I think, be possible to authorize the use of the firm-name in a notice of opposition. In fact the regulations prescribe a form requiring the full names of the opponents. But the regulations also confer a power of amendment. A firm-name is, after all, a reference to persons, and, notwithstanding its inadequacy and the limitation of capacity or legal relationship implied, it notifies a real intention to oppose by real persons. In my opinion it forms a sufficient foundation to entitle the commissioner to proceed. It is needless to add that in a proper case irregularity in a notice may justify dismissal of the opposition. In the present case, however, it has been thought right to allow an amendment and thus to make the notice regular. (Emphasis added.)

27.  Rich J in the above case held (at 253):

In these days the objection is overcome by amendment and not by the defendant pleading in abatement and offering a better writ or proceeding to the plaintiff. Accordingly I think that the commissioner acted rightly in amending the notice of opposition.

28.  I believe that an analogy may be drawn between the circumstances discussed above and with the present case regarding an application for the registration of a trade mark. Where an application is made in the name of a firm or in a business name which lacks a legal personality and it is possible to show a real intention by a person or persons with legal capacity to make the application, I do not think that it should be treated as a nullity.

29. As the opponent has also argued that the Registrar should not have amended the application to ‘substitute a new legal personality’, it raises the question of whether the application was able to be amended to reflect the real applicant. This requires me to consider the relationship between section 27(2)(c) of the Act and regulation 4.2(d) of the Regulations.

30.  Regulation 4.2 of the Regulations states:

Application in approved form—requirements for filing

(1) To be taken to be filed, an application for registration of a trade mark that is in an approved form must:

(a) state that the application is for registration of the trade mark, or contain a clear indication to that effect; and

(b) include a representation of the trade mark that is sufficient to identify the trade mark; and

(c) specify the goods and/or services in relation to which the application is made; and

(d) include sufficient information to enable the Registrar to establish the identity of the applicant; and

(e) contain sufficient information to enable the Registrar to contact the applicant.

(2) If an application does not meet a requirement set out in paragraph (1)(a), (b), (c) or (d), the Registrar must give to the applicant written notice of the requirement.

(3) If the applicant meets the requirement within a period of 2 months from the date of the notice, the application is taken to be filed on the day on which the requirement is met.

(4) If the applicant does not meet the requirement within that period, the application is taken not to have been filed.

31.  Regulation 4.2(1)(d) requires the application include ‘information that allows the identity of the applicant to be established’ and does not contain a requirement that the application specify the name of the applicant. This regulation determines that an application which identifies the applicant in such a way may still be treated as filed.

32. In the present case, the fact that Virgin Sugar Pty Ltd was not a legal entity at the time of filing does not mean that the application did not meet the filing requirements. In the present case, it is clear that there was always a single person involved in the filing, care and conduct of all matters pertaining to the application, namely, Mr Hain. It is clear that Mr Hain always had a real intention to make the application and that sufficient information was provided for him to be contacted/identified regarding the application. The opponent has pointed out a period of time when Mr Hain’s wife was listed as a temporary contact whilst Mr Hain was overseas, however, I do not believe that this dilutes the intentions of Mr Hain with regards to this trade mark application. I am satisfied that the filing requirements under section 27 have been met.

33. As for the opponent’s argument that the Registrar (at the examination stage) amended the applicant’s name contrary to the Act, I am also in disagreement. The opponent put forward the case of Crazy Ron’s Communications Pty Limited v Mobileworld Communications Pty Limited [2004] FCAFC 196 (‘Crazy Ron’s’) as an authority that the substitution of the name of an application is not an amendment which is permissible under section 65(5) of the Act. The opponent contended that if such an amendment was made under section 65(5) of the Act then it invokes the opposition ground under section 62(a) and that the amendment is not otherwise permissible by reason of any other sub-section in section 65 of the Act. However, I note the amendment to the application was made under the current section 65(7) which states:

65 Amendment after particulars of application have been published—request for amendment not advertised

(7) An amendment may be made to any other particular specified in the application unless the amendment would have the effect of extending the rights that (apart from the amendment) the applicant would have under the registration if it were granted.

34.  Crazy Ron's is authority for the proposition that the amendment provision is not available where one 'person' or legal entity is to be substituted for another 'person' or legal identity, as where an individual lodges an application for a trade mark and later realises that the application should have been lodged in the name of a company with which he or she is associated. As the court said in Crazy Ron's, the appropriate course in such a case would be to withdraw the application and file a new one.  

35. However, the current case is distinguishable from Crazy Ron’s and the situations are not analogous. In this case, as the opponent went to such great pains to prove to the Registrar and has repeatedly pressed in its arguments before me, Virgin Sugar Pty Ltd was not a ‘person’ or legal entity at the time of filing. As in the same instance where a business name is tendered, I believe that there is scope for section 65(7) to operate to permit an amendment to the application to indicate the person who is the applicant. This more akin to correcting the identity of the applicant than substituting one legal entity for another (as was the case in Crazy Ron’s). That is, the amendment to the application will not change who is applying for the registration of the trade mark but will correctly identify the person with legal personality.

36. I am satisfied that the Registrar’s decision to amend the name of the applicant to reflect a legal entity put forward by Mr Hain met all the conditions set out under the Act. Therefore, the opponent has not established the section 62(a) ground of opposition.

Section 60 - Reputation in Australia

37. Section 60 of the Act provides:

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

(a)another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, 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: For priority date see section 12

38. Unlike sections 44 or 58 of the Act, section 60 does not require that the goods and services upon which the opponent uses its trade mark be of a specified standard of similarity with the goods and services of interest to the applicant, nor is there a requirement that the trade marks be substantially identical or deceptively similar. Therefore, it is now for me to determine if the opponent has acquired a reputation in Australia by 27 April 2010 for its VIRGIN trade marks which is sufficient to establish that use of the opposed trade mark would be likely to deceive or cause confusion.

39.  In McCormick & Co Inc v McCormick[8](‘McCormick’) Kenny J discussed the meaning of “reputation” as follows:

[8] [2000] FCA 1335; (2000) 51 IPR 102, at [81] – [82].

What is intended by the word “reputation” in section 60? The word is defined in The Macquarie Dictionary as follows:

reputation…1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute…2. favourable repute; good name…3. A favourable and publicly recognised name or standing for merit, achievement, etc…4. The estimation or name of being, having done, etc, something specified.

Compare The Oxford English Dictionary. In s60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

and Heerey J in Le Cordon Bleu B.V. v Cordon Bleu International Ltee[9] said that the reputation required to be demonstrated was:

One of which a significant number of persons were aware…What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.

[9] [2000] FCA 1587; (2000) 50 IPR1.

40.  It is for me to determine therefore whether the opponent has established that before 27 April 2010 its trade marks were recognized by the public generally, or at least by a significant number of persons in the marketplace, and whether because of that reputation the use by the applicant of its trade mark on the designated goods would be likely to deceive or cause the public confusion.

41. The opponent relies upon its use of its various VIRGIN trade marks to establish the ground under section 60. I note from the evidence that the VIRGIN trade mark is used by the opponent in a number of different ways and in a number of different fonts. Below are copies from the evidence of a few of the various forms in which the opponent has used its VIRGIN trade mark:

VIRGIN          

42.  Considering the evidence as discussed earlier in my decision, there is little doubt that the opponent has spent a considerable amount on advertising and that it has enjoyed very substantial annual turnover. Based upon the evidence it is obvious that the opponent has a very extensive and long standing reputation for its various VIRGIN branded goods and services internationally. However, the onus is on the opponent to demonstrate that a reputation in its VIRGIN trade marks existed in Australia before the priority date of the opposed trade mark. This is more than merely demonstrating use before the priority date. The opponent’s trade mark needs to be “associated in the minds of the Australian public”[10].

[10] Seven Up Co v OT Ltd (1947) 75 CLR 203 at 211

43.  Since around 1974, the opponent has been marketing VIRGIN branded goods in Australia. From the evidence it is clear the opponent has extensively promoted its VIRGIN branded goods and services throughout Australia via brochures, television, magazines, news articles, online publications and billboards[11]. Paragraphs 41 and 107 as well as a number of exhibits accompanying the defensive declaration contain  breakdowns of the opponent’s various businesses and related advertising expenditure and annual turnover. The figures provided are very considerable and demonstrate an ever increasing annual turnover and increase in advertising expenditure.

[11] See paragraph 13 for list of exhibits

44.  These advertising efforts combined with its VIRGIN branded goods and services being promoted through event endorsements and sponsorship deals including 2010 Australian Federation of Travel Agents National Travel Industry Awards, 2005 Sydney Film Festival, 2006-2010 Australian British Chamber of Commerce, 2003-2004 Young Achievement Australia Sydney Trade Fair, South Sydney Youth Service, Stretch-A-Family and V Festival makes it highly probable that a very considerable number of Australian consumers are aware of the opponent’s relevantly branded goods and services.

45.  This is also reflected in the number of industry awards that the opponent has won which include 2010 Skytax Awards – Best Low Cost Airline Australia/Asia Pacific; 2010 CHOICE Domestic Airline Survey – Best Domestic Carrier, 2009 Customer Service Institute of Australia’s Service Excellence Awards – Best Large Business (Queensland winner); Chief Customer Officer of the Year (National Winner); Service Excellence in a Call Centre (Queensland winner) to name just a few. I also note the Virgin Earth Challenge being run by the opponent offers a prize of $25 million for whoever can demonstrate a commercially viable design which results in the removal of anthropogenic greenhouse gases from the atmosphere. It is clear that the opponent has a very substantial reputation for its VIRGIN trade mark across a very broad range of goods and services in Australia and internationally. However, it needs to be determined if, given this reputation in Australia, use of the applicant’s trade mark would be likely to deceive or cause confusion.

46.  Mr Hain advised at the hearing that a few days previous he had requested an amendment to the goods specification of his application and that he only wanted to use the VIRGIN trade mark on:

boiled sugar; boiled sugar confectionary; fruit sugar; grape sugar; preparations made from sugar; sugar; sugar confectionary; sugar for making jams; sugar for making jellies.

47.  Mr Hain argued that use of his trade mark on the above goods would not cause deception or confusion between the parties because the opponent has not used its VIRGIN trade mark on sugar or sugar confectionary and that the opponent was unlikely to sell its goods through a supermarket. However, I am not persuaded by Mr Hain’s reasoning.

48.  For the necessary comparison, I would put the matters as follows. I am not to be overly influenced by the evidence that the disputing parties use their trade marks in ways that, at the moment, may be quite different. I am to consider any of the modes of business that would be within the scope of the registration, should it be granted in the terms presently sought. The applicant has claimed sugar and sugar confectionary. In essence, the question comes down to my being satisfied that there is a “finite and non-trivial” risk of deception or confusion[12].

[12] Registrar of Trade Marks v Woolworths Limited (1999) AIPC 91-499 at 36, 697-8 (per Justice French) and 39, 703-4 (per Justice Branson)

49. As mentioned earlier, section 60 does not require that the goods or services upon which the opponent uses its VIRGIN trade mark be of a specified standard of similarity with the goods of interest to the applicant, nor is there a requirement that the trade marks be substantially identical or deceptively similar. However, in this particular case, the respective trade marks are substantially identical apart from the ‘VIRGIN ACTIVE’ logo. They are both for the word VIRGIN. There is more likely to be deception and confusion in the market place in the situation where the respective marks are applied to the same or similar goods and services[13] and the trade marks share a commonality of features.

[13] Shachihata Industrial Co Ltd v. Magic Marker Corp (1984) 3 IPR 519

50.  Mr Fox argued that the opponent has a huge reputation in Australia and internationally and that one of the characteristics of the opponent’s reputation was how well known it was for being entrepreneurial and continually expanding its interests into new and diverse businesses (exhibit KAH-4 accompanying the defensive declaration). I agree that the opponent’s evidence demonstrates that the opponent has a considerable reputation and that it is well known for moving into various diverse and different businesses with virtually nothing in common save the opponent and its VIRGIN trade mark.

51.  I believe that this reputation, along with the opponent’s well established propensity to use its VIRGIN trade mark in relation to so many different goods and services each and every year, is likely to emphasise a connection between the opponent’s goods and those of the applicant. I consider that, given the reputation evidenced by the opponent in its VIRGIN trade mark, a significant number of Australian consumers would, at the very least, subscribe to a reasonable doubt[14] as to some sort of connection between that well-known trade mark and the applicant’s trade mark. Since the trade marks are for the same words, VIRGIN, the degree of speculation would, in my assessment, rise to, at the very least, the reasonable doubt required to trigger section 60. The ordinary consumer would, in my view, likely be confused or caused to wonder if the applicant’s VIRGIN trade mark had a connection with the opponent’s VIRGIN trade mark and its established commercial success. Therefore, the opponent has established a ground of opposition under the provisions of section 60.

[14] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5

Decision

52. Section 55 of the Act provides:

Decision

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.

53. I find that the opponent has met the onus upon it, in terms of the grounds of opposition under section 60 argued at the hearing. Accordingly, I refuse to register trade mark application 1355410.

Costs

54.  It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the applicant in terms of Schedule 8 of the Regulations.

Bianca Irgang
Hearing Officer
Trade Marks Hearings
7 May 2014