Virgin International Pty Ltd v Virgin Enterprises Limited

Virgin International Pty Ltd (the applicant) sought to register the trade mark "VIRGIN INTERNATIONAL" in class 39 for services including "transportation, freight forwarding, shipping, and related services". Virgin Enterprises Limited (the objector) opposed this application, asserting that the proposed mark was deceptively similar to its registered trade marks, including "VIRGIN" and "VIRGIN ATLANTIC", which covered a wide range of services, including air transportation. The matter came before the Federal Court of Australia.

The primary legal issue before the Court was whether the applicant's proposed trade mark was likely to deceive or cause confusion, within the meaning of section 60 of the *Trade Marks Act 1995* (Cth), having regard to the reputation of the objector's trade marks. This involved an assessment of the degree of visual, phonetic, and conceptual similarity between the marks, as well as the nature of the services offered and the likely perception of the relevant public.

The Court considered the established principles for assessing deceptive similarity, including the "imperfect recollection" test and the importance of giving due weight to the common element of the marks. It found that the word "VIRGIN" was the dominant and most distinctive element of both the applicant's proposed mark and the objector's registered marks. Given the extensive reputation of the objector's "VIRGIN" brand across various sectors, including transportation, the Court concluded that the use of "VIRGIN INTERNATIONAL" by the applicant was likely to lead to a significant number of consumers believing that the services originated from, or were connected with, the objector, thereby causing deception or confusion.

The Court therefore dismissed the applicant's appeal and upheld the opposition.