Ipkat Riddle No. 7

Michael Edenborough has kindly supplied the IPKat alongside a re-create of the Hearing Officer’s conclusion inwards Virgin Oil Ltd’s application to register VIRGIN OIL for diverse types of oils inwards Class iv in addition to filters for engines in addition to motors inwards Class 7. Virgin Enterprises (Richard Branson’s company) successfully opposed the application, disputation likelihood of confusion nether s.5(2) of the Trade Marks Act 1994 in addition to detriment to distinctive grapheme nether s.5(3) of the same Act.

What caught the IPKat’s attending was the Hearing Officer’s consideration of whether the applicant had “due cause” to role the score (if an applicant does convey due displace so the score tin hold upwardly registered, fifty-fifty if it would otherwise autumn nether s.5(3), the UK’s version of “dilution”). He noted that the term “virgin” is sometimes used to depict high lineament oil. However, he said that fifty-fifty if this was the representative alongside industrial stone oil (such equally the applicant’s) the applicant could non debate due displace because this would hateful that the score was non distinctive in addition to in that location would hold upwardly a compulsion for other traders to role it in addition to thus the term would non hold upwardly registrable equally a merchandise mark. wishes to know, what then, if anything, is the business office of the “due cause” provision nether s.5(3) inwards application cases. Previously, the Lucas Bols definition has been followed in addition to due displace had alone been recognised where the applicant has a prior correct to the term or he cannot reasonably hold upwardly expected non to role it. However, it is difficult to imagine a province of affairs that would gibe into the minute category simply where the term inwards interrogation would rest distinctive rather than e.g. descriptive in addition to thus hold upwardly registrable equally a merchandise mark.

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