On 20th November 2018, the United Kingdom Intellectual Property Office (UKIPO) decided to register the trademark ‘Virginic’ applied by Wyoming-based Virginic. This trademark covers cosmetic creams, oils, and lotions in class 3. Virginic had applied for this trademark in January 2018.
When Virgin Enterprises became aware of such trademark registration they filed an appeal against the registration of the mark ‘Virginic’ in February pointing out the similarity between the applied mark and the mark used by Virgin.
In the appeal, the Virgin Enterprises cited two UK trademarks, ‘Virgin’ (3,163,121) and ‘Virgin’ (15,255,235). These two trademarks cover several classes, including class 3. However, the company deals with a part of class 3 materials including eyeshadow, essentials oils, hair creams, and hand lotions.
According to their claims, there is a higher degree of similarity between their registered marks and the applied mark. This similarity between marks can cause a level of direct and indirect confusion among their consumers.
According to the claim, the similarity is on the conceptual, visual and aural level. Both of these companies deal with cosmetic products.
In a counter statement, Virginic claimed that the mark ‘Virgin’ does not exist independently in their applied mark. However, they agree that there is a level of similarity between the marks, although they don’t think that this would confuse the consumers.
The UKIPO sided with Virginic in their decision, stating even though UKIPO found that the marks are visually and aurally similar to each other on a higher level the conceptual similarity is of medium level.
Therefore, they think an average customer will pay average attention to the marks. Thus, there is no chance of direct and indirect confusion among the customers. Furthermore, Virgin was ordered to pay £300 to Virginic.