26 November 2018Trademarks

Virgin fails to fight off cosmetics TM

Virgin Enterprises suffered a defeat last week when the UK Intellectual Property Office (IPO) dismissed its opposition to a trademark covering cosmetics.

On Tuesday, November 20, the IPO allowed the registration of ‘Virginic’, which covers cosmetic creams, lotions and oils in class 3.

The trademark, owned by Wyoming-based Virginic, was applied for in January this year.

Virgin submitted an opposition after the mark’s publication in February, citing UK trademark ‘Virgin’ (3,163,121) and European trademark ‘Virgin’ (15,255,235).

While both of Virgin’s trademarks are registered in several classes, including class 3, the company relied only on a part of the class 3 element of the trademarks, including essential oils, hair lotions, hand cream and eye shadow, which are some of the goods covered by the earlier trademarks.

Virgin contended that as its earlier ‘Virgin’ marks are “wholly contained” within the first portion of the applied-for trademark, this creates a high degree of visual, aural and conceptual similarity.

In opposition, Virginic claimed that while there is a level of similarity between the trademarks, the word ‘Virgin’ doesn’t have an independent existence within the applied-for mark.

Andrew Feldon, on behalf of the IPO, sided with Virginic and allowed the trademark to be registered.

He found that the goods covered by both trademarks are identical and that the level of attention paid by the average consumer will be average.

According to Feldon, the trademarks are visually and aurally similar to a high degree, but conceptually similar only to a medium degree.

“The applied-for mark ‘Virginic’ has no clear or obvious meaning as a whole, however, it is likely that the element ‘Virgin’, which constitutes the beginning of that mark, will be perceived by the average consumer, as it is a fairly common English word,” said Feldon.

He went on to conclude that neither direct nor indirect confusion between the trademarks will occur.

“I believe that the average consumer of the goods at issue will not, when faced with the mark ‘Virginic’, assume that it is a logical brand extension or an evolution of ‘Virgin’ products,” he added.

Virgin was ordered to pay £300 ($385) to Virginic.

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