Israel: VIRGIN – A Well-Known Trademark In Israel And Part Of Family Of Marks

Last Updated: 4 December 2007
Article by Avi Ordo

I. Summary

1. The Israeli Patents, Designs and Trademarks Registrar (hereinafter: "the Registrar") held that the mark "VIRGIN CANDLES" (hereinafter: "the Requested Mark") is confusingly similar to the registered trademark "VIRGIN", which the Registrar recognized as a well-known trademark in Israel.

2. Accordingly, the Registrar held in his decision dated October 30, 2007, that the opposition filed against the Requested Mark is accepted and rejected the Requested Mark.

II. The Factual Background

3. Applicant, a local individual, has filed an application to register the Requested Mark - "VIRGIN CANDLES" (plain block letters) with respect to "candles and wicks" in class 4. Applicant is a small manufacturer of candles and candlewicks, manufactured through innovative method of cold pickling, similarly to the method used for the production of quality olive oil, also known as "VIRGIN OIL".

4. The Requested Mark was accepted by the Trademarks Office during examination, subject to a disclaimer for the word "candles" and a notification of the publication of the Requested Mark to the owner of the prior registered trademark no. 114292 "VIRGIN VIE" (see copy below) for soaps and other cosmetic preparations in class 3.

5. The Requested Mark was published for opposition purposes in the Trademarks Journal, and Virgin Enterprises Ltd. (hereinafter: "the Opponent"), owner of registered trademark no. 114292 "VIRGIN VIE", has filed an opposition against the registration of the Requested Mark.

6. The Opponent is an English corporation, part of the Virgin Group, established in 1970. Opponent was originally engaged in the fields of music and records. Currently, Opponent owns 2,000 "VIRGIN" trademark registrations and applications all over the world in various fields. In Israel, Opponent owns 25 trademark registrations and applications in different fields, inter alia, cellular, clothing, aviation, hotel keeping, etc., including the above-mentioned trademark registration "VIRGIN VIE".

III. The Registrar's Decision

7. The Registrar recognized the trademark "VIRGIN" as a well-known trademark in Israel with respect to many different products, including products close to the field of candles. The Registrar's finding was made, inter alia, in light of the accumulated following factors:

7.1 A telephone survey conducted by the Applicant revealed that approximately a quarter of the Israeli public is familiar with the trademark VIRGIN;

7.2 An expert's opinion filed on behalf of the Opponent enclosed many press publications made in Israel regarding the Opponent and its activity in Israel and abroad, that were addressed to the broad public;

7.3 The fact that the trademark VIRGIN is famous and well-known in England is also relevant to a certain extent, as the public in Israel is exposed also to publications abroad, through internet and other media and through traveling;

7.4Opponent continuously used its mark VIRGIN since 1970, first in the fields of music and records, and gradually in additional fields;

7.5 The Opponent presented little evidence regarding extent of sales of its products in Israel. Notwithstanding, there is not a precondition of actual use of a well-known mark in Israel, and the Opponent has presented large quantity of evidence regarding worldwide registration and use of its mark, extensive sales of its products worldwide, and the probability that the Israeli public would encounter Opponent's products;

7.6 The trademark VIRGIN has inherent distinctive character and no evidence were presented regarding use made of this mark not by the Opponent or its affiliated companies.

8. The Registrar also held that the Requested Mark is confusingly similar to Opponent's mark, inter alia, in light of the accumulated following factors:

8.1 The pattern used in the Requested Mark is very similar to the pattern used by the Opponent and its affiliated companies in their marks. Namely, Opponent and its affiliates are using the mark VIRGIN together with an additional word that describes the companies' field of business (e. g. Virgin Atlantic Airways, Virgin Radio, Virgin Films, etc.). Actually, this is a Family of Marks, having a recognizable common characteristic, which the public associates with the Opponent and its affiliates;

8.2 The dominant component in the Requested Mark is identical to the Opponent's well-known mark VIRGIN.

9. The Registrar held that in light of his finding that VIRGIN is a well-known trademark, and the fact that it is registered in Israel, it therefore dominates also goods of other descriptions. The Registrar determined that in this case the fields of cosmetics and of candles are close and related, and that therefore they are of the same description, despite their different classification (the Nice Classification Convention is only for administrative needs and does not determine the description of goods).

10. In conclusion, the Registrar held that there is a real likelihood of confusion and affiliation between the Applicant's goods and the Opponent, due to the pattern used for the names of the Opponent's affiliated companies and the Opponent's expansion strategy to different and remote fields. Therefore, the Registrar has accepted the opposition and instructed that the Requested Mark will not be registered.

Contributor:
Avi Ordo, Adv.
S. Horowitz & Co.
Tel-Aviv, Israel

For further information on this topic or other related topics, please contact Avi Ordo at S. Horowitz & Co.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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