It is rare for a parent company to oppose the trade mark of one of its subsidiaries. Yet, as recently reported in The Age, (6/11/09, “Branson and Virgin Blue battle over name”) this appears to be the case in a trade mark opposition brought by Virgin Enterprises against an application lodged by Virgin Blue. At stake is whether Virgin Blue has the rights to use the “V Australia” trade mark and brand, the name of Virgin Enterprises’ trans-Pacific airline, on a wide variety of goods.
Intrigued by this story, we undertook a review of the Trade Marks Register, and it confirms:
- The initial trade mark application suffered its own problems, receiving three adverse reports from the trade marks office, before acceptance was eventually provided in October 2007.
- Virgin Blue wants to use the V Australia trade mark for everything from magazines and financial services to entertainment and mobile phones.
- On 8 February 2008, Virgin Enterprises lodged a formal opposition to such expanded classes.
- Since then, and up to August 2009, six extensions for opposition have been granted by the trade marks office. The opposition process has also twice been suspended for negotiations, first on 5 November 2008, and most recently on 10 September 2009. It seems these settlement attempts have not yet succeeded.
So, what is the dispute about? According to The Age, at its heart is an agreement between the Virgin group and Singapore Airlines, the two principal shareholders in the British-based trans-Atlantic service, Virgin Atlantic. That agreement allegedly prohibits the use of the Virgin name outside Australia, and has already forced Virgin Blue to adopt the name Pacific Blue for its short-haul international carrier.
This may not be the whole issue though, given that the relevant mark is for ‘V Australia’ not a ‘Virgin’ variant and the Trade Marks Act only confers trade mark protection within Australian shores. We will watch this case with interest.
Whatever the basis for the dispute, it is certainly unusual for a parent company to oppose the trade marks of one of its subsidiaries. If the negotiations break down then the trade marks office will have to consider which entity has greater rights to the “V Australia” brand.