VIRGIN ENTERPRISES LIMITED V SUGAR VIRGIN PTY LTD [2014] ATMO 39

Virgin Sugar Pty Ltd, later Sugar Virgin Pty Ltd, applied to register the trade mark VIRGIN for a wide range of sugar goods in Class 30. The application was opposed by Virgin Enterprises Limited on the grounds of section 60, that it holds a reputation in relation to VIRGIN trade marks sufficient that the use and registration of another VIRGIN trade mark would be likely to lead to consumer deception or confusion.

The opponent led voluminous evidence, ‘comprising of 23 volumes containing more than seven thousand pages of exhibits’. From this evidence, the Hearing Officer was able to find that:

‘the opponent’s evidence demonstrates that the opponent has a considerable reputation and that it is well known for moving into various diverse and different businesses with virtually nothing in common save the opponent and its VIRGIN trade mark’.

Accordingly, section 60 had been established and the application refused.

The opponent also pursued its opposition under section 62 on the grounds that the application was amended contrary to the Trade Marks Act. This is because at the time of filing the applicants name was incorrectly recorded as Virgin Sugar Pty Ltd, a company that did not exist. This error was later corrected and the Hearing Officer found it sufficient for the purposes of making the application that there was one contact with a bona fide intention to make and pursue the application at all times.

To view the Office decision, click here.