Virgin Loses Out In Trade Mark Ruling

Author:Ms Rachael Parman
Profession:Shoosmiths
 
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South African company Bodtrade has registered the

phrase: 'You can't be a virgin all of your life, it's

time', despite opposition from global brand Virgin Enterprises

Limited.

Virgin objected to Bodtrade's application for the phrase -

in respect of telecommunications and catering services - on the

basis it had a 'huge' reputation in its trade mark VIRGIN

for a wide range of goods and services, including

telecommunications and catering services.

Virgin claimed that if the application were granted, it would

take an unfair advantage of, or would be detrimental to, the VIRGIN

trade mark.

It also argued that the public would be confused into thinking

Bodtrade was in some way associated with Virgin as 'the

public has an expectation that [Virgin]...will introduce new and

different products and services on a regular basis', and

therefore the public would assume the phrase was connected to

Virgin.

Bodtrade refuted the claims, stating that Virgin does not, and

should not, have exclusive use of the word 'virgin', and

that in any event 'virgin' was only one word in a phrase

using 10.

IPO ruling

The Intellectual Property Office (IPO) rejected Virgin's

opposition to the registration, as it considered there to be very

little similarity between the phrase and the VIRGIN trade mark.

Although the word 'virgin' was a distinctive word, it

was not a distinctive feature of Bodtrade's phrase, which

included nine other words.

The IPO also found that:

there was a lack of similarity between the phrase and the

VIRGIN mark, so it was unlikely the average consumer would assume

any connection between the two companies

speculative concerns regarding the quality of Bodtrade's

services only presented 'a hypothetical risk of tarnishing

and [did] not represent [a] serious risk or likelihood of

tarnishing'

Bodtrade would not be 'riding on the coat tails' of

Virgin's success, as 'the differences between the marks

and the nature and context of the use of the word virgin in the

[phrase] make it difficult to see how the reputation of the earlier

mark could possibly be projected onto [Bodtrade's]

mark'

What does this mean?

Even if you have an established global reputation, you need to

pick your fights carefully.

Had the Bodtrade phrase been shorter, Virgin's claim may

have been stronger, as the likelihood of tarnishing would be easier

to prove.

It remains to be seen whether Virgin will appeal the decision.

If not, it may seek to challenge Bodtrade's use of the trade

mark under...

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