Factual and Procedural Background
An appeal was brought by the Appellant ("Company A") against a decision by the Registrar of Trade Marks dismissing Company A's opposition to a trade mark application filed by the Respondent ("Company B"). The application concerned registration of the word mark "VIRGINIC" for goods in Class 3. Company A opposed the application under section 5(2)(b) of the Trade Marks Act 1994, relying on two earlier trade mark registrations for the word "VIRGIN" covering identical goods. Company A elected a fast-track opposition procedure, resulting in no evidence or hearing, only brief written submissions, and the Hearing Officer decided the matter on the papers.
Legal Issues Presented
- Whether the Hearing Officer erred in assessing the conceptual similarity between the marks.
- Whether the Hearing Officer erred in assessing the inherent distinctiveness of the earlier marks.
- Whether the Hearing Officer erred in concluding there was no likelihood of indirect confusion.
- Whether the principle that a component of a composite mark can have an independent distinctive role applies to the mark "VIRGINIC".
Arguments of the Parties
Appellant's Arguments
- The Hearing Officer incorrectly described the inherent distinctiveness of the earlier marks as "normal," arguing that the correct assessment should be a fairly high degree of inherent distinctiveness since "VIRGIN" is an arbitrary word in relation to the goods.
- The Hearing Officer erred in the conceptual similarity assessment by not considering the suffix "-IC" in "VIRGINIC," which the Appellant argued would be understood by the average consumer as a suffix meaning "of or pertaining to," thus making the marks conceptually highly similar.
- The Hearing Officer failed to apply the principle that a distinctive element within a composite mark can have an independent distinctive role, citing relevant CJEU case law.
- The Hearing Officer misapplied guidance on indirect confusion, particularly by focusing on the lack of "striking distinctiveness" rather than recognizing that "VIRGINIC" could be perceived as a brand extension of "VIRGIN" due to the adjectival suffix.
Respondent's Arguments
- The Hearing Officer was justified in not considering the suffix "-IC" further because "VIRGINIC" is not a recognized adjectival form of "VIRGIN," the correct adjectival form being "VIRGINAL."
- No evidence was presented to support the claim that adjectival forms with "-IC" are commonly used as brand extensions, and no application to adduce fresh evidence on appeal was made.
- The mark "VIRGINIC" is a single word and not a composite mark with independently distinctive components, so the principle regarding independent distinctive roles does not apply.
- The Hearing Officer correctly concluded that there was no likelihood of indirect confusion because the word "VIRGIN" is not strikingly distinctive in relation to the goods, and the presence of the suffix does not create a brand extension impression.
Table of Precedents Cited
| Precedent |
Rule or Principle Cited For |
Application by the Court |
| Medion AG v Thomson Sales Germany & Austria GmbH [2005] ECR I-8551 |
Recognition that a component of a composite mark can have an independent distinctive role. |
The court concluded this principle did not apply because "VIRGINIC" is a single word with the suffix incorporated, not a composite mark with separate distinctive components. |
| Bimbo SA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [EU:C:2014:305] |
Consideration of the overall impression made by marks and the independent distinctive significance of components. |
The Hearing Officer cited this for the proposition that the overall impression must be considered, but the court found no error in not applying the independent distinctive role principle here. |
| L.A. Sugar Limited v By Back Beat Inc, BL O/375/10 |
Definition and criteria for indirect confusion, including mental process required by the consumer. |
The court found the Hearing Officer correctly applied this guidance but erred in concluding no indirect confusion given the adjectival suffix and conceptual similarity. |
| Duebros Limited v Heirler Cenovis GmbH, BL O/547/17 |
Indirect confusion requires more than a mere association; it requires a likelihood that the later mark is perceived as a brand extension. |
The court applied this to find that indirect confusion was likely because the suffix "-IC" would be perceived as indicating a brand extension. |
Court's Reasoning and Analysis
The court began by accepting the unchallenged findings of identity of goods, average consumer, and high visual and aural similarity. It found that the Hearing Officer's description of the inherent distinctiveness of the earlier marks as "normal" was imprecise and that, given the arbitrary nature of the word "VIRGIN" in relation to the goods, it should be considered to have a fairly high degree of inherent distinctiveness.
On conceptual similarity, the court identified an error in the Hearing Officer's failure to consider the suffix "-IC" in "VIRGINIC." The court reasoned that the average consumer would perceive "-IC" as a suffix meaning "of or pertaining to," thus making "VIRGINIC" a newly coined adjective conceptually closely related to "VIRGIN." Consequently, the conceptual similarity should be assessed as fairly high rather than medium.
The court rejected the argument that the principle of a component having an independent distinctive role applied because "VIRGINIC" is a single word forming a new adjective, not a composite mark composed of two separate distinctive signs.
Regarding indirect confusion, the court acknowledged the Hearing Officer's reliance on established guidance that indirect confusion requires the consumer to perceive the later mark as a variant or brand extension of the earlier mark. The Hearing Officer had concluded no indirect confusion because "VIRGIN" was not strikingly distinctive. However, the court found that the adjectival suffix "-IC" would lead the average consumer to perceive "VIRGINIC" as a brand extension of "VIRGIN," thus making indirect confusion likely.
Accordingly, the court reassessed the likelihood of confusion and concluded that, while direct confusion was unlikely, indirect confusion was likely due to the combination of identical goods, average consumer attention, high visual and aural similarity, fairly high conceptual similarity, and fairly high inherent distinctiveness of the earlier marks.
Holding and Implications
The appeal is ALLOWED and Company A's opposition to the trade mark application is upheld.
This decision directly affects the parties by preventing registration of the mark "VIRGINIC" for the specified goods, reinforcing protection for the earlier marks. No new precedent was established beyond the application of existing principles to the facts of this case.