Trade marks are amongst the most valuable assets of many companies and careful professional monitoring of the trade marks register is necessary to protect them. In a case on point, a member of the Virgin group of companies successfully resisted registration of the word ‘Virginic’ on grounds that it was likely to indirectly confuse the public.
Virgin Enterprises Limited (VEL) objected to the registration after its advisers spotted the application. However, its opposition was initially rejected by a decision-maker acting on behalf of the Registrar of Trade Marks. Although he accepted that the word ‘Virginic’ was highly visually and aurally similar to existing Virgin marks, he found that there was no likelihood of direct or indirect confusion between them.
In upholding VEL’s appeal against that decision, the High Court noted that ‘Virgin’ is an ordinary English word which was chosen arbitrarily and is unconnected to any goods or services in which the company trades. Viewed in context, however, it nevertheless had a high degree of inherent distinctive character.
In also finding that ‘Virginic’ has a high degree of conceptual similarity to ‘Virgin’, the Court noted that the suffix ‘ic’ generally means ‘of or pertaining to’, as in hero/heroic, or atmosphere/atmospheric. Average consumers would thus understand ‘Virginic’ as a newly minted adjective meaning ‘of or pertaining to Virgin’. They would also assume that ‘Virginic’ was a brand extension of Virgin and indirect confusion was therefore likely. The application to register ‘Virginic’ as a trade mark was disallowed.
