Carbon Virgin Trademark Upheld in UK

The UK High Court has upheld a hearing officer’s decision rejecting an opposition filed by Virgin Enterprises Limited (VEL) under sections 5(2)(b) (likelihood of confusion) and 5(3) (unfair advantage) of the Trade Marks Act 1994,thereby allowing the word mark CARBON VIRGIN to be registered as a trade mark in class 35 for services including advertising, opinion polling and data processing.

The opposition was based on Virgin Enterprises Limited ‘s registrations of VIRGIN and other marks including the word “Virgin”. Norris J confirmed that appeals against a hearing officer’s decision were by way of review rather than rehearing (applying Reef TM [2003] RPC 5). Among other things, he upheld the finding that, while there was a reasonable level of visual and phonetic similarity between the marks, the word “Virgin” had a subtly different meaning in each mark, resulting in different concepts being created in the mind of the average consumer looking at the respective marks as a whole.

Case: Virgin Enterprises Ltd v Casey [2011] EWHC 1036 (Ch), 20 April 2011.

Despite noting that Richard Branson has attracted headlines for reducing carbon emissions, we approve of this decision, which contrasts nicely to the Israel Patent Office upholding a similar opposition from Virgin Enterprises against ‘Virgin Candles’ for candles made from olive oil. See http://blog.ipfactor.co.il/2007/11/10/david-loses-virgin-to-goliath/

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