24 October 2018Trademarks

Virgin Enterprises secures TM win against hair and wig company

The UK Intellectual Property Office (IPO) has ruled in favour of Virgin Enterprises after the company opposed a trademark application by Virgin Hair Company.London, a wig and hair extension company.

The IPO handed down its decision on Monday, October 22.

In February, the hair extension company filed a trademark for a stylised version of ‘Virgin Hair Company.London’ in gold font, citing services in class 44, relating to beauty care.

Virgin then opposed the mark based on earlier UK and EU trademarks.

Both of Virgin’s earlier marks are for the word mark ‘Virgin’ and cover hygienic and beauty care in class 44.

According to Virgin, the applied-for mark is “highly similar” to the earlier marks and the services are identical or similar, leading to a likelihood of confusion.

The hair company responded by filing a counter-statement in which it relied on a number of arguments. For example, it highlighted that it owns the domain name VirginHairCompany.London.

However, the IPO said that just because a domain name is registered, it does not mean it is in use. Even if it was, the office said, ownership of a domain name is not a defence to a trademark opposition.

In addition, the company said that it is not aware of anyone confusing its applied-for mark with the earlier ‘Virgin’ marks. The IPO rejected this argument and said that just because the company is not aware of any confusion, it does not mean that none has occurred.

Virgin said in its opposition that the first word in the applied-for mark is visually, aurally and conceptually identical to its earlier marks. In addition, the company said that the words ‘Hair Company’ and ‘London’ are not distinctive.

While Virgin Hair Company.London claimed that the marks cannot be mistaken for one another, Emily Venables, on behalf of the IPO, said that the company did not submit any evidence supporting this claim.

Venables ruled that the element ‘Hair Company’ in the applied-for mark is descriptive for the services cited by it, and the element ‘London’ suggests where the company is based. As a result, she said that the word ‘Virgin’ plays the greatest role in the overall impression of the mark.

According to Venables, the differences in font and colour between the marks do not constitute visual differences between them, although she did say that there was a medium degree of visual similarity between the marks.

In her decision, Venables said that the ‘Virgin’ elements of the marks at issue are aurally identical and that there is a high degree of conceptual similarity between the marks.

“I am of the view that since the differences between the marks are caused by the descriptive words in the application, the marks will both be seen as ‘Virgin’ marks,” Venables said.

“Considering the identity of the services, I find that the average consumer will believe the marks to come from the same undertaking,” she concluded.

Virgin Hair Company.London was ordered to pay Virgin £100 ($129) in costs.

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