Virgin Enterprises Ltd v Casey
| Jurisdiction | England & Wales |
| Judge | Mr Justice Norris |
| Judgment Date | 20 April 2011 |
| Neutral Citation | [2011] EWHC 1036 (Ch) |
| Docket Number | Case No: CH/210/0521 |
| Date | 20 April 2011 |
| Court | Chancery Division |
[2011] EWHC 1036 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY
Royal Courts of Justice
Strand, London, WC2A 2LL
Mr Justice Norris
Case No: CH/210/0521
On Appeal from the Intellectual Property Office
In the Matter of the Trade Marks Act 1994
and
In the Matter of Application No. 2487177 to register the Mark Carbon Virgin in Class 35 Made in the name of Michael Casey
and
In the Matter of Opposition No. 98170 thereto by Virgin Enterprises Limited
and
In the Matter of Decision dated 3 August 2010 by Mark Bryant for the Registrar
Benet Brandreth (instructed by Ipulse (IP) Ltd) for the Appellant
James St Ville (instructed by Forsyth Simpson LLP) for the Respondent
Hearing dates: 8 February 2011
This is an appeal from the decision of Mr Mark Bryant (the Hearing Officer acting for the Registrar) in the Intellectual Property Office given on 3 August 2010. It is brought under Section 76 of the Trade Marks Act 1994 ("the 1994 Act"). As such it is an appeal by way of a review (and not a re-hearing). Therefore the decision of the Hearing Officer should be confirmed unless it is wrong in law or unjust because of a serious procedural irregularity. It is not open to challenge as regards the facts found. I should display a degree of reluctance to interfere with the decision of the Hearing Officer in the absence of a distinct and material error of principle (a less than adequate summary of the approach made out in REEF [2002] EWCA Civ 763 at paragraphs [17]–[30]).
On the instant appeal it is accepted that an error of law must be shown. VEL does not say that the Hearing Officer did not know the law. His summary of the relevant law was accepted as accurate (although disparagingly referred to as a "cut and paste job"). The heart of the appeal lies in the argument that having correctly summarised the law the Hearing Officer then failed to apply it to the material before him.
Michael Casey applied to register the word mark "CARBON VIRGIN" in that form on 9 May 2008. The mark was applied for in relation to goods and services within class 35 namely:-
"Advertising; electronic data storage; advertising services provided via the internet; production of television and radio advertisements; accountancy; auctioneering; trade fairs; opinion polling; data processing".
The appellant ("VEL") opposed the registration. It asserted:-
(a) That the mark was identical to the VEL's registered mark "VIRGIN" (CTM 1471143) and was proposed in respect of similar services as that registered mark (so that Section 5(2)(a) of the 1994 Act made registration impermissible):
(b) That the mark was similar to VEL's registered mark "VIRGIN" (CTM 4262093), "VIRGIN GREEN FUND" (CTM 6261473) and its "Virgin" signature mark (CTM 4262085) and was proposed in respect of similar services as those registered marks (so that Section 5(2)(b) of the 1994 Act made registration impermissible):
(c) That the mark was identical or similar to thirteen specific marks registered by VEL which marks had a reputation of which Mr Casey's mark took unfair advantage (so that Section 5(3) of the 1994 Act made registration impermissible):
(d) That the term "VIRGIN" and the "Virgin" signature are signs protected by the law of passing off by reason of their use since 1970 (so that Section 5(4) of the 1994 Act rendered registration impermissible).
The Hearing Officer did not find that any of those grounds of opposition were made out. His findings and holdings under arguments (a) and (d) are accepted. As to his findings and holdings on arguments (b) and (c) on this appeal VEL say that he made six errors of law. During the hearing I expressed the view that VEL seemed to be arguing that it could appropriate the ordinary English word "virgin" for its exclusive use in connection with its products and services (save perhaps in the context of "virgin wool" and "virgin olive oil"): but I was assured that that certainly was not what VEL was attempting, and that this appeal had a narrower technical base.
The first error is said to be that in considering whether the mark "CARBON VIRGIN" was similar to VEL's earlier marks the Hearing Officer treated VEL's marks as having only a dictionary definition as to their conceptual meaning, by which VEL means that the Hearing Officer treated the mark "VIRGIN" as being capable of only one conceptual meaning when used alone, and of having that meaning irrespective of context.
Section 5(2)(b) of the 1994 Act addresses the problem of a likelihood of confusion by reason of similarity to an earlier mark. The Hearing Officer had to consider the extent of the similarity between VEL's mark "VIRGIN" and Mr Casey's mark "CARBON VIRGIN". In the former the word "VIRGIN" stood alone: whereas in the latter it was the second part of a compound expression.
The requirement of "similarity" looks at the overall impression of the mark assessed by reference to a global appreciation of several factors – visual, aural and conceptual. A "global appreciation" is required because the average consumer perceives the mark as a whole and in general does not subject its component parts to separate analysis.
In the instant case the Hearing Officer chose the VEL mark closest to Mr Casey's proposed mark and (having referred to a whole range of material) found that there was a reasonable level of visual and aural similarity. When he came to assess conceptual similarity he found:-
(a) That the primary and dominant (not sole) meaning of the word "VIRGIN" used alone suggested a person who had never had sexual intercourse:
(b) That the compound expression "CARBON VIRGIN" was somewhat opaque (or even impenetrable) but that in that context and in viewing the mark as a whole the concept being communicated was of someone who was naïve or inexperienced in a particular context (as in the expression "political virgin"):
(c) Accordingly 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.
In my judgment that analysis does not betray any error of principle, and a finding that essentially different concepts were involved is one that was open (and proper) on the evidence. This evidence the Hearing Officer had reviewed in paragraphs [35] to [58] of his determination. There was plenty of evidence that VEL exploited the risque allusion to sexual intercourse. There was none suggesting that in offering its services VEL was alluding to naivety or inexperience. The Hearing Officer did not say that as a matter of law the word "VIRGIN" used alone had only one conceptual meaning: he said that used alone it had a primary or dominant meaning which was the meaning in fact exploited by VEL and which was different from the meaning exploited by Mr Casey. So I reject this ground of appeal.
The second ground of appeal is that the Hearing Officer determined the conceptual meaning of the marks without reference to the services for which they were registered, and in so doing fell into an error of law. This ground is unsustainable.
First, paragraph [35] of the determination began a section headed "Comparison of Services" (which included a table comparing the services of Mr Casey's application with the services of VEL's marks). This led into a section (at paragraph [54]) in which he sought to identify who was the average consumer of "the services at issue". It is fanciful to suggest that these were abstract exercises unrelated to the immediately following section headed "Comparison of Marks" and that that section was conducted on an acontextual basis by reference only to dictionary definitions and divorced from the findings of fact made in the preceding sections.
Second, the Hearing Officer plainly did not make the alleged error of law in relation to the arguments on Section 5(2)(a) where he held:-
"…it is clear to me that the consumer will see the mark as a distinctive whole rather than the distinctive word VIRGIN preceded by the purely descriptive word CARBON. Certainly this will be the case in respect of the services covered by Mr Casey's application…".
There is no reason to think that the understanding that this was the correct approach deserted the Hearing Officer when he...
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IP Snapshot May 2011
...in BPI v MCPS [1993] EMLR 86 was relied on. For the full text of the decision, click here TRADE MARKS Virgin Enterprises Ltd v Casey [2011] EWHC 1036 (Ch), 20 April The High Court upheld the hearing officer's decision which rejected an opposition filed by Virgin Enterprises Limited under se......