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
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
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
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
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
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]
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
It remains to be seen whether Virgin will appeal the decision.
If not, it may seek to challenge Bodtrade's use of the trade