Overall Impression Test Means Court Rejects Virgin's Claim

An advertising and media company run by a Mr Casey sought to register the trade mark ‘Carbon Virgin’. The application was opposed by Richard Branson’s Virgin Enterprises Ltd. (VEL) on the grounds of the similarity of the proposed trade mark and the fact that it was proposed in respect of similar services to those provided by VEL. VEL argued that allowing registration of the mark would give Mr Casey the advantage of ‘passing off’ – making additional profit due to a perceived connection with VEL.

The Hearing Officer rejected VEL’s argument, concluding that ‘Carbon Virgin’ would be suggestive of someone who is naïve in a particular context. When considered in context, the overall impression was important. Although there was a reasonable similarity between the marks, the Hearing Officer concluded that ‘…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…’.

VEL appealed the granting of the registration to the High Court, where it was again rebuffed. Mr Justice Norris commented, “If [VEL’s] argument does not assert that VEL can appropriate the word ‘VIRGIN’ for exclusive use in connection with its products and services it comes within a hair’s breadth of doing so. I reject it.”

VEL was ordered to pay Mr Casey’s costs.

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