In what appears to be the first time that the UK courts have considered the effect of adding an adjectival suffix to an earlier trade mark, the High Court has found that indirect confusion can occur where a trade mark adds a non-distinctive element to an earlier mark such that the average consumer would be likely to think that mark was a brand extension, even if the principles laid down by Medion do not apply (Virgin Enterprises Ltd v Virginic LLC [2019] EWHC 672 (Ch)).

 

The natural organic health and beauty brand Virginic LLC applied to register VIRGINIC as a UK trade mark for cosmetics and related goods in Class 3. Virgin Enterprises Limited opposed the application on the basis of likelihood of confusion with its earlier UKTM and EUTM for VIRGIN. The Hearing Officer rejected the opposition. On appeal, Virgin argued that the Hearing Officer erred in finding that the trade marks were conceptually similar to only a medium degree, that the earlier marks had only a normal degree of distinctive character and that there was no likelihood of indirect confusion.

 

No such thing as “normal”

The Hearing Officer took the view that “the common element “VIRGIN” has no link or association with the goods at issue and can be said to be an arbitrary choice when considering the nature of the goods. Consequently, the mark is found to have a normal degree of inherent distinctive character.”

 

However, as Virgin pointed out, there was no such thing as a “normal” degree of distinctive character and, even assuming that the Hearing Officer meant to say “average”, that conclusion did not follow from the (correct) premise that the word VIRGIN was arbitrary in relation to the goods in question. Arnold J accepted Virgin’s submissions. Given the Hearing Officer’s unchallenged finding that VIRGIN was arbitrary in relation to the goods in question, it followed that it had a fairly high degree of distinctive character (albeit not so high as would be the case if it were an invented word).

 

IC a similar concept

The Hearing Officer found that the average consumer would perceive the VIRGIN element in VIRGINIC but, as Virgin pointed out, he had failed to go on to consider the -IC element. Moreover, Virgin argued, the Hearing Officer had failed to address their argument that -IC was a well-known suffix in the English language meaning “of” or “pertaining to” as in the examples that Virgin provided in written submissions, such as acid/acidic.

 

Arnold J agreed that the Hearing Officer had erred in not considering how the average consumer would perceive the –IC element. The judge found that the average consumer would perceive -IC to be playing its usual role as a suffix and, therefore, would perceive VIRGINIC as a newly-minted adjective meaning “of or pertaining to VIRGIN”. It followed that there was a fairly high degree of conceptual similarity between the trade marks.

 

Confused?

Virgin argued that the Hearing Officer had misapplied the guidance as set out in LA Sugar v Back Beat (BL-O/375/10), which identified three types of variation that pointed towards a likelihood of indirect confusion:

1. where the two marks share a common element that is so strikingly distinctive that the average consumer would assume that no-one other than the original brand owner would be using it in a trade mark (e.g. “26 RED TESCO”);
2. where the later mark simply adds a non-distinctive element to the earlier mark, in a way that might be found in a sub-brand or brand extension (e.g. terms such as “LITE”, “EXPRESS”, “WORLDWIDE” or MINI”, etc.); or
3. where the earlier mark comprises a number of elements, and a change of one element appears entirely logical and consistent with a brand extension (e.g. “FAT FACE” to “BRAT FACE”).

 

Virgin argued that the Hearing Officer had considered category (a) but should have considered category (b) instead. In support, Virgin referred to a number of instances in which owners of well-known brands had deliberately adopted adjectival versions of their brands (e.g. NIKONIC) as well as a number of instances in which such terms had been used by members of the public when referring to well-known brands (e.g. ROLEXIC).

 

Virgin’s underlying point was that, because the average consumer would perceive VIRGINIC as a newly-minted adjective meaning “of or pertaining to VIRGIN”, the average consumer would be likely to think that VIRGINIC was a brand extension of VIRGIN. Arnold J agreed. Re-assessing the likelihood of confusion, the judge concluded that indirect confusion was likely for the following reasons:

 

• the goods were identical;
• the level of attention paid by the average consumer would be average;
• the trade marks were visually and aurally similar to a high degree and conceptually similar to a fairly high degree; and
• the earlier marks were fairly highly distinctive.

 

Comment

Despite the term “VIRGINIC” being an invented word (the recognised adjectival form being VIRGINAL), the judge took the view that the average consumer would still perceive the –IC element as playing its common grammatical role as an adjectival suffix, thereby reinforcing the conceptual connection to the term VIRGIN. Arnold J also considered Medion v Thomson (C-120/04), in which the CJEU found that an average consumer of leisure electronic products confronted with the composite sign THOMSON LIFE could perceive both the whole and its constituent parts to have significance and thus could be misled into believing that there was a similar kind of connection between the respective undertakings.

 

When the well-known pharmaceutical company Glaxo plc acquired the well-known pharmaceutical company Wellcome plc, Arnold J had found that the average consumer of pharmaceutical goods confronted with the composite sign GLAXOWELLCOME would perceive the significance of both the whole and its constituent parts and conclude that this was an undertaking which combined the two previously separate undertakings (see Glaxo Group Ltd v Glaxowellcome Ltd [1996] FSR 388). However, in the present case he took the view that VIRGINIC wasn’t a composite mark made up of two signs – rather, it was a single sign into which the VIRGINelement had been subsumed to form a new, conceptually-related whole – and, in such a scenario, the Medion principle did not apply.

 

Be that as it may, indirect confusion was still likely, on the basis that the later mark would be perceived as an adjectival version of the earlier brand.

 

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