Virgin Enterprises Limited v Virgin International Pty Limited

[2006] ATMO 3

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 913329(29) - VIRGIN INTERNATIONAL - filed in the name of VIRGIN INTERNATIONAL PTY LIMITED.

Delegate:

Don Nancarrow

Representation:

Opponent: Mr. David Yates of Counsel instructed by Addisons Lawyers, Sydney

Applicant: Ms. Carmen Champion of Counsel instructed by Hazan Hollander, Solicitors and Intellectual Property Lawyers, Sydney 

Decision:

S. 52 opposition – grounds under ss. 43, 59 and 60 not established – registration allowed. Costs awarded against the opponent.

Background

1. Application was made by Virgin International Pty Limited, (the applicant), for the trade mark depicted below, on 20 May 2002 in respect of “edible oils and oil products” in class 29 of the International Classification of Goods and Services (the Nice classification).

1. The application was accepted for registration and was advertised as such on 19 September 2002. Virgin Enterprises Limited, (the opponent), filed a Notice of Opposition on 18 December 2002 which listed grounds under eight sections of the Trade Marks Act 1995, (the Act).

2. Both parties filed their evidence and the matter came before me in Sydney on 21 October 2005.

The Evidence

1. The evidence filed and served is as set out below:

Declarant	Date Declared	Exhibits	Known As
Evidence in Support
Mark James	26.02.04	MJ-1 & MJ-2	James
Karen Anne Hayne	17.03.04	KAH-1 to KAH-134	Hayne 1
Lavinia Jeanne Strachan	17.03.04	LJS-1 & LJS-2	Strachan
Evidence in Answer
Peter Whitehead	17.12.04	A	Whitehead
Santino Di Bella	21.01.05	SD-1	Di Bella
Evidence in Reply
Karen Anne Hayne	21.04.05	KAH-135 to KAH-138	Hayne 2

1. The evidence goes to show that Mr. Di Bella designed the image involved in this trade mark in the early 1980’s and had it painted on the side of a panel van. Later, around 1990, he states that the image was tattooed onto his back. As the applicant has not yet traded in the goods specified in this application no actual commercial use has been made of the trade mark.

2. The opponent, Virgin Enterprises Limited, is an extremely well-known organization with interests across a wide variety of commercial pursuits. Its evidence (James and Hayne 1) goes to show a sizeable reputation both within Australia and internationally, together with a portfolio of trade mark registrations and applications numbering around 1400 in approximately 140 countries. Although some of the evidentiary material post-dates the application, the reputation that the opponent has built up in its marks is considerable.

3. Ms. Strachan is a Marketing Psychologist and principal of a market research company. She provides information concerning the reputation and brand values of the opponent’s VIRGIN trade marks and offers her opinion as a market research expert regarding the likelihood of deception or confusion between the respective marks of the parties.

4. The opponent’s evidence in reply comprises a group of searches into the applicant company and seeks to bring into question the status of Mr. Di Bella to be able to represent the applicant by means of his declaration.

Grounds of Opposition

1. The eight grounds of opposition nominated in the original notice were those under ss. 41, 42(b), 43, 44, 58, 59, 60 and 62(b). At the hearing only those grounds under ss. 43, 59 and 60 were pursued. For completeness I find that opposition in relation to the other five grounds, those under ss. 41, 42(b), 44, 58 and 62(b), has not been made out.

Submissions, the Law and Comments

(a)Section 43

1. Here the legislation allows:

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.

1. It is not required of an opponent to provide a conflicting trade mark that could be the basis of any deception or confusion. The test is applied to the trade mark application alone. The connotation referred to here must be within the mark itself, as a secondary or implied meaning[1].

   [1] Down to Earth (Victoria) Co-operative Society Ltd v Schmidt (1998) 41 IPR 632 at 644, confirmed Winton Shire Council v Lomas (2002) 56 IPR 72

2. Mr. Yates argued that the opponent had built up a set of values, based on the persona of Sir Richard Branson, that had become associated with the opponent’s VIRGIN trade marks and which had now spilled over to become associated with the word “virgin”. He directed me to the James declaration where, he said, these values were clearly described and listed them as: (i) diversity, (ii) superior customer service, (iii) good value for money, (iv) a touch of the Sir Richard Branson charisma and adventurous spirit and (v) fun and innovative style. Mr. Yates claimed that this atmosphere, ethos or feeling had now been accepted to such an extent that the purchasing public would be likely to be deceived or confused with that connotation in the present mark. Included within the opponent’s values was the often “cheeky” or “slightly risqué” promotional or advertising methods used by the opponent, he said. He also alleged that the presently applied for mark also exhibited this characteristic.

3. A second point was made by the opponent, that the applicant had chosen the word INTERNATIONAL in the trade mark in order to have purchasers believe that the goods are associated with the opponent, through the international reputation of the opponent company.

4. Ms. Champion submitted that it had already been decided that VIRGIN trade marks did not exhibit a connotation by Hearing Officer Thompson in an earlier decision of the Trade Marks Office (Virgin Enterprises Limited v Bowes (2000) 51 IPR 615). Mr. Yates countered here by claiming that the factor that he said would lead to a connotation had not been canvassed in that earlier decision. An issue which cannot be overlooked, however, is that I must consider whether or not the trade mark in the present application has a connotation – clearly a question that Hearing Officer Thompson did not have to decide because his matter dealt with another trade mark.

5. Insofar as s. 43 is concerned I must look at the trade mark and decide whether or not that particular sign has a secondary meaning. The denotation is clear. Any standard dictionary will provide meanings for “virgin” consistent with “untouched, intact, undamaged, untainted, a person who has never had sexual intercourse, a particularly fine grade of olive oil made from the first pressing of the olives”. A secondary meaning, or connotation, that “would be likely to deceive or cause confusion” does not grasp my attention on a consideration of the mark. I see a silhouette of a girl rather cleverly formed by use of the letters of the word “virgin” with the word INTERNATIONAL in quite small lettering of upper-case font below the silhouette.

6. To accept the opponent’s argument of a connotation here I would need to think of the “aura” or “values” of the opponent’s company when I saw the word VIRGIN appear in this trade mark. The context or setting of a word is often the element that leads to a confining (or possibly sometimes even a diverging) of the thoughts about that word. To see the word “virgin” used in terms of a forest, or in terms of the Mother of Jesus or in terms of olive oil will conjure up quite different thoughts and feelings about that word – none with any connotation that would involve a secondary meaning. The present trade mark produces its own understanding, arguably involving any of the denotations listed above – but none with a connotation that “would be likely to deceive or cause confusion” as a secondary meaning involving the opponent’s “aura” or “values”. The list of the opponent’s values that Mr. Yates claimed gave the present trade mark a connotation, it seems to me, are ideas or concepts that come to mind in relation to a VIRGIN trade mark only AFTER a recognition that a trade mark is the property of the opponent. It seems to me that the five brand values listed by the opponent, that it claimed produced such a connotation, are matters that form part of the opponent’s reputation – matters that may attract purchasers to the opponent’s goods or services – rather than any secondary meaning that has come to be immediately associated with the word VIRGIN.      

7. The opponent’s reputation, including its “international” reputation as a factor causing deception or confusion is more appropriately a matter for consideration in terms of opposition under s. 60.

8. I find that the s. 43 ground of opposition has not been established.

(b) Section 59

1. In relation to this section the legislation reads:

Applicant not intending to use trade mark

59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

Note:  For applicant see section 6.

1. The wording of this section of the Act states that opposition may be mounted on the ground that the applicant “does not intend to use” the trade mark. It does not say “did not intend to use” the trade mark.

2. Thus, the intention of the applicant needs to be determined, not at the date of application, but as at the date that the Notice of Opposition is filed. In the present matter that date is 18 December 2002.

3. The opponent attacked the Di Bella declaration on the basis that it alleges that there is no actual business that intends to use this trade mark. It also brought into question (Hayne 2) the standing of Mr. Di Bella in representing the company via his declaration.

4. On the second of these matters, the fact that Mr. Di Bella is apparently not an officeholder or shareholder in the applicant company does not preclude him from acting on the applicant’s behalf. Mr. Di Bella claims to be “the Manager of Virgin International Pty Limited” and provides his declaration in that capacity.

5. On the first of these allegations, even if proved, the application would not be shown to be fatally flawed. Many trade mark owners file their applications before finalizing their business arrangements. A further delay can also occur if a trade mark acceptance is opposed, as may be true in the present case. Alleging, or even showing (which does not appear to be the case here from the opponent’s ASIC searches), that no business exists that could be in a position to use a trade mark, only goes a short part of the way to satisfy me that the applicant does not intend to use the trade mark. Surely, if there is no intention to use a trade mark then it would be expected that there would be no business ready to use it, but simply because there is no business ready to use it tells very little of the intention, or of the plans, to set up such a business and of the intention to also use the mark.

6. Although the opponent attacked the applicant’s intention to use the mark on the basis that it has not used the mark at all, the issues are entirely separate. The actual use already made of a trade mark does not necessarily have any relevance to the issue of “what is the applicant’s intention?” Certainly, actual use would prove that the applicant has (or had) the intention to use, but lack of use does not directly show anything concerning intent.

7. None of the circumstances brought to my attention here are sufficient for me to find that the opponent has discharged its onus in relation to s. 59 and I find that the ground of opposition has not been established.

8. Ms. Champion, on behalf of the applicant, requested permission to serve a copy of further evidence, at the hearing, for material that she said could have some effect on my finding under s. 59. However, as I have found in the applicant’s favour on the issue there is no need to consider the material. I also note that as part of the applicant’s submissions to support bringing in that further evidence, the point was made that it could be required if the matter goes on appeal. However, the parties remain free to bring in any further evidence if the decision is appealed.

(c) Section 60

1. Under this ground of opposition the Act reads:

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.

1. The very first aspect of this ground of opposition places an onus on the opponent to point me to a trade mark which is either substantially identical with, or deceptively similar to, the mark applied for. Mr. Yates directed me to two particular trade marks of the opponent, the “VIRGIN name mark” and the “VIRGIN signature mark” as he called them.

2. The standard test for substantial identity of competing trade marks is set out by Windeyer J. in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd, (1961) 109 CLR 407 at 414.

   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.

3. The “name mark” referred to by Mr. Yates is simply the word VIRGIN in normal upper-case font and the “signature mark” is as depicted below.

1. The mark applied for, reproduced below, is a highly stylized device mark.

1. So much so, that it is entirely possible to completely miss the word “virgin” in this trade mark while the brain is interpreting the overall silhouette and attempting to make some sense of the “shading” on the body.

2. A side by side comparison of the opponent’s marks with the presently applied for trade mark directs me to many, many more differences than similarities. The differences are so obvious and overwhelming that to consider that these marks could be substantially identical when placed next to each other is entirely fanciful. The opponent, however, had not argued that the respective marks are substantially identical, but had claimed that they are deceptively similar.

3. The test for deceptively similar trade marks is quite different from that for substantial identity as discussed by Windeyer J. in Shell vEsso, supra, at 415 in the words:

   On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions.     

4. Mr. Yates also sought to rely on the principles raised concerning deceptive similarity from Australian Woollen Mills Limited v F. S. Walton and Co Limited, 58 CLR 641 at 658. He directed me here to the concept of “notional and fair use” of the opposed mark, and also to the “doctrine” of “imperfect recollection” of the opponent’s marks in the face of the mark applied for, and submitted that both should be considered.

5. Mr. Yates claimed that the opponent’s VIRGIN marks are ubiquitous. He said that any VIRGIN trade mark could be seen as belonging to the opponent in view of its overwhelming reputation and variety of business interests. He said that the general public would be unsurprised by the expansion of the opponent into any market of goods or services (Strachan at ¶33 to 36). I do not believe, however, an argument can be sustained that any VIRGIN trade mark would be seen as being the property of the opponent. This is especially so where there are some prominent features in the trade mark which are not found in any of the opponent’s trade marks. In such circumstances, the usual test for deceptive similarity must be applied.

6. The impression based on recollection of the opponent’s VIRGIN marks lies particularly in the fact that both marks comprise a single word – there is no device or get-up to provide another element to remember. Even the degree of stylization in the “signature mark” is not major. I believe that it would generally be remembered as a signature in relatively common hand-written script with a single underlining. Some may recall that the lettering is much closer to being printed rather than “joined” letters in the writing.

7. In the mark applied for, as mentioned earlier, a percentage of the population would not immediately see that the mark contained the word VIRGIN. The letters “I” and “N” are almost deliberately hidden and the relative size of the letter “V” formed by the legs of the figure adds to the possible concealment of the word VIRGIN for some. Certainly, after some consideration very few would still remain ignorant of the word VIRGIN in the mark, but the figure remains a major feature of the trade mark and a feature, in my opinion, that would be readily remembered. That female silhouette and the quite clever construction of the body by the letters of the word “virgin” provide clear markers not present in the opponent’s marks. A second memorable feature of the applicant’s mark lies in the very fact that it is a device mark, whereas the opponent’s marks are word marks.

8. The applicant’s mark, I believe, exhibits a number of features that serve to distinguish it from the opponent’s two marks. Visually, in my opinion, the respective marks of each party are readily distinguishable.

9. What of possible oral or aural confusion? The judgment of Dixon and McTiernan JJ in Australian Woollen Mills v F. S. Walton, supra, that the opponent directed to my attention highlights this aspect at 658 in the words:

   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, then 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. …. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.

10. Certainly, if the applicant’s mark were to be described over the telephone or by word of mouth then it could be abbreviated to “the virgin trade mark”. This is as Mr. Yates submitted, “where a trade mark combines a device with a word, customers will more naturally refer to the word when ordering the product.”[2] But even on that score it is difficult to imagine how it would be possible for such an occurrence to produce any degree of “deception or confusion” that could persist to the point of sale of goods. The applicant’s goods are “edible oils and oil products”. Such goods are normally purchased in supermarkets, corner stores or possibly market stalls where the visual cues in the mark are present and would, in usual circumstances, be sufficient to alert a prospective consumer to the source of the goods. Such goods are simply not purchased by means of oral communication in usual retail operations in the present age.

    [2] GoldenCrumpet Co Australasia v Hardings Manufacturers Pty Ltd (1987) 8 IPR 147 at 154

1. On the other hand, if the applicant chose to operate the business as a mail order arrangement, where the goods were not viewed until they are purchased through the mail, then it is possible that the means of advertising the goods could become an issue. How would the applicant use the trade mark in advertising? In such circumstances, visual advertising by the applicant using the mark presents no greater difficulty than use of the mark in a supermarket. Oral advertising, say via radio, for such a mail order business could present a problem if the description of the mark is the word “virgin” only.

2. I note that Justice French commented, in dealing with a comparison of marks under s. 44, in Registrar of TradeMarks v Woolworths Limited, 45 IPR 411 at 428:

   (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not enough.

3. In the present comparison I have gone to great length to try and present a scenario whereby deception or confusion could occur. I don’t see this unlikely hypothetical situation as being “a real tangible danger”. It is, at worst, a mere possibility, but the closest that I can imagine for the opponent to suffer any possible disadvantage.

4. From the above I find that the applicant’s trade mark is neither substantially identical with, nor deceptively similar to, the marks of the opponent.

5. Thus, I find that the s. 60 ground has not been established.

Decision

1. From the foregoing, I have found that none of the grounds of opposition relied upon, those under ss. 43, 59 and 60 of the Act, have been established. Accordingly, I find that the overall opposition fails.

2. The trade mark application may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

1. Both parties requested costs in this matter. As the applicant has been the successful party and I have no reason before me why costs should not follow the event, I award costs against the opponent in accord with the Official scale as set out in Schedule 8 of the Regulations to the Act.

Don Nancarrow

Hearing Officer

Trade Marks Hearings

16 January 2006