The (Virgin) Empire Strikes Back

Everyone is familiar with Sir Richard Branson and his empire, Virgin Enterprises Limited (“Virgin Enterprises”) whose interests include airlines, soft drinks, mobile phone services and even commercial space travel.  You may even be familiar with our previous posts on their involvement in trade mark proceedings for “V Australia” brand” and in relation to slogans used in Australia and throughout the world.  Now Virgin Enterprises has taken on Virgin International Pty Ltd (“Virgin International”), successfully opposing registration of a stylised trade mark incorporating the word “Virgin” (the “Trade Mark”) for condoms. 

Firstly, Virgin Enterprises attacked registration of the mark on the basis that Virgin International did not intend to use the Trade Mark (section 59 of the Trade Marks Act).  In reply to this, Virgin International claimed that it had already imported 20,000 condoms from China (bearing the mark) and hence had already used the Trade Mark.  However, in a strange play of events, Virgin International could not provide any documentation of this importation.  At this stage, the alarm bells started ringing (where did they go?); however the Hearing Officer wasn’t perturbed, finding that “on the balance of probabilities” the importation did take place.

Next came one of Virgin Enterprises’ more creative grounds of opposition; that the use of the Trade Mark would be contrary to law (section 42(b) of the Trade Marks Act).  The basis for this argument was that importation of the condoms would have breached the Therapeutic Goods Act.  Under this Act, a person commits an offence if they import a medical device (which includes condoms) into Australia, unless the device is included on the Therapeutic Goods Register.  At the time of the alleged importation, there was no record of Virgin International (or its related company, Virgin Condoms Pty Ltd) on the Register.  Despite acknowledging that in some instances a business decision may be made to acquire trade mark protection before all of the necessary approvals/permits have been obtained, the Hearing Officer found that since the importation had already occurred there had already been a breach of the Act.  The Hearing Officer therefore found that this ground of opposition had been made out and accordingly refused to register the Trade Mark.

This case shows that when opposing registration of a trade mark, one needs to ‘think outside the square’ and ensure all potential grounds of opposition have been covered.  To view the full text of this decision click here.

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