Trade mark decision

BL Number

O/285/03

Decision date

22 September 2003

Hearing officer

Mr A James

Mark

VIRGIN OIL

Classes

04, 07

Applicant

Virgin Oil Limited

Opponent

Virgin Enterprises Limited

Opposition

Sections 5(2)(b); 5(3) & 5(4)(a)

Result

Section 5(2)(b) - Opposition partially successful.

Section 5(3) - Opposition successful.

Section 5(4)(a) - No formal finding.

Points Of Interest

• 1. Section 5(3): dilution of the distinctive character of the earlier mark.
• 2. Section 5(3) : without due cause.

Summary

The opposition was based on the opponent'’ use of various VIRGIN marks and a registration of VIRGIN in Class 12.

The Hearing Officer found that VIRGIN was inherently highly distinctive in relation to the goods in Class 12. The marks were 'highly similar'. There was some similarity between the goods and the Class 7 specification but this was 'not very high'. The Class 4 goods, were dissimilar. The Section 5(2)(b) objections succeeded in the case of the Class 7 application, but failed in respect of the Class 4 application.

Under Section 5(3) the Hearing Officer discounted much of the opponent’s survey evidence, but basing his assessment on his own analysis of the relevant factors he eventually concluded that a significant proportion of the relevant public would believe that a new oil or fuel product might be connected to the opponents. Use of the mark applied for would be bound to damage to distinctive character of the opponents’ mark. Even if that were not the case it seems to the Hearing Office that this was "one of those rare cases" where the dilution of the distinctive character of the earlier mark might of itself justify an objection under Section 5(3). The applicants had not established, in evidence, that they had 'due cause' to use the mark. Hence the Section 5(3) objection succeeded.

The Hearing Officer made no finding under Section 5(4)(a).