Virgin Enterprises Ltd v Casey

An appeal from a trade mark opposition decision is by way of review, not rehearing. The appellate court should intervene only for an error of law, serious procedural irregularity, or a distinct and material error of principle. Similarity and likelihood of confusion must be assessed globally, having regard to the marks as a whole, the relevant services, and visual, aural and conceptual factors. No single factor is automatically determinative. Under section 5(3) of the Trade Marks Act 1994, the existence of a link and unfair advantage must be established by evidence. An appellate court should not re-evaluate the weight assigned by a specialist tribunal to competing factors.

Michael Casey applied to register CARBON VIRGIN for services in class 35. Virgin Enterprises Limited opposed the application under sections 5(2)(a), 5(2)(b), 5(3) and 5(4) of the Trade Marks Act 1994. The Hearing Officer rejected all grounds of opposition in a decision dated 3 August 2010. Virgin Enterprises appealed under section 76, alleging errors of law in the assessment of conceptual similarity, likelihood of confusion, the required link under section 5(3), and unfair advantage.

The central issue was whether the Hearing Officer had misapplied the applicable legal tests, rather than whether his factual and evaluative conclusions should be reconsidered.

1. Appeal dismissed. The appeal under section 76 of the Trade Marks Act 1994 was by way of review, not rehearing. The Hearing Officer’s decision could be disturbed only for an error of law or serious procedural irregularity. Findings of fact and evaluative weight were not open to challenge absent a distinct and material error of principle.
2. In assessing similarity under section 5(2)(b), the marks had to be considered as wholes through a global appreciation of visual, aural and conceptual similarity. The Hearing Officer was entitled to find that VIRGIN, used alone, conveyed a primary sexual meaning in the appellant’s marks, whereas CARBON VIRGIN conveyed a different idea of inexperience or naivety. The services and the context in which the marks were used were relevant to the conceptual assessment.
3. No error arose from the Hearing Officer’s treatment of conceptual similarity. He had separately considered visual, aural and conceptual similarity and then made an overall assessment. He had not treated conceptual similarity as determinative, nor had he assumed that direct confusion required identical marks. His conclusion that the overall similarity was moderate but unlikely to cause confusion was an evaluative conclusion open to him.
4. The principle in Medion v Thompson did not assist the appellant. The Hearing Officer had not imposed a legal requirement that the earlier mark dominate the composite mark. He had instead assessed the overall impression and the likelihood of confusion.
5. For section 5(3), the necessary link between the earlier and later marks, and the existence of unfair advantage, were separate matters requiring proper substantiation. Evidence of exploitation, free riding, or an attempt to trade on the reputation of a famous mark was relevant. The Hearing Officer was entitled to find that the necessary link had not been proved, making it unnecessary to consider unfair advantage.
6. The court declined to re-evaluate the weight assigned by the specialist tribunal to the various factors. The provisional order was that Virgin Enterprises should pay Michael Casey’s appeal costs, subject to reconsideration if either party objected.

• High Court (Chancery Division): The appeal from the Hearing Officer’s decision dated 3 August 2010 was dismissed.