Virgin Enterprises Ltd v Virginic LLC

In assessing trade mark similarity and indirect confusion, the court must consider the mark as a whole while addressing the significance of any perceived suffix or other element. A word which is arbitrary for the relevant goods may possess a fairly high degree of inherent distinctive character, although an invented word may be more distinctive. Recognition of an earlier mark within a later mark is insufficient by itself to establish indirect confusion. The question is whether the common element, viewed in the context of the later mark, is likely to lead the average consumer to believe that it represents a brand extension or evolution. A single newly formed word is not necessarily a composite mark containing an independently distinctive sign.

Virgin Enterprises Ltd opposed an application by Virginic LLC to register VIRGINIC for Class 3 goods, relying on earlier VIRGIN registrations under section 5(2)(b) of the Trade Marks Act 1994. The opposition was dismissed by the Registrar’s hearing officer on 20 November 2018 (BL O/739/18).

On appeal, Virgin challenged findings concerning the inherent distinctive character of VIRGIN, conceptual similarity, the independent distinctive role of the VIRGIN element, and indirect confusion. The appeal required the court to determine whether the hearing officer had materially erred in assessing the relationship between VIRGIN and VIRGINIC.

1. The appeal was allowed. The court could interfere with the hearing officer’s decision only for a distinct and material error of principle or where the decision was clearly wrong. The hearing officer had erred in assessing inherent distinctive character and conceptual similarity.

2. Because VIRGIN was arbitrary in relation to the goods, it had a fairly high degree of inherent distinctive character. An invented word might have an even higher degree, but inherent distinctiveness was not confined to invented words.

3. The hearing officer had correctly considered the VIRGIN element in VIRGINIC but had failed to assess the usual role of the suffix “-IC”. The average consumer would perceive VIRGINIC as a newly formed adjective meaning of or pertaining to VIRGIN. The marks therefore had a fairly high degree of conceptual similarity.

4. The independent distinctive role principle recognised in Medion AG v Thomson Sales Germany & Austria GmbH and subsequent case law did not apply. VIRGINIC was a single sign into which the VIRGIN element had been subsumed, rather than a composite mark formed by conjoining pre-existing trade marks. The example discussed in Aveda Corp v Dabur India Ltd concerned such a composite mark and was distinguishable.

5. The hearing officer had not erred in remembering the interdependency principle, but had misapplied the guidance on indirect confusion. Mere association or the bringing of an earlier mark to mind was insufficient. In this case, however, the average consumer would perceive VIRGINIC as a logical brand extension of VIRGIN. The goods were identical, the consumer’s attention was average, the marks were highly visually and aurally similar, conceptually fairly highly similar, and VIRGIN was fairly highly distinctive. Those factors established a likelihood of indirect confusion despite the absence of likely direct confusion.

6. Virgin’s opposition was upheld.

• High Court (Chancery Division) — Appeal from the Registrar’s decision dated 20 November 2018 (BL O/739/18). The appeal was allowed and the opposition upheld.