VIRGIN denied protection for condom brand

Entrepreneur Richard Branson’s Virgin Enterprises Limited has won its latest Aussie trade mark stoush preventing registration of a VIRGIN logo trade mark for condoms in Virgin Enterprises Limited v Virgin International Pty Ltd [2010] ATMO 38.

Virgin International Pty Ltd, an Australian company run by a husband and wife team, applied for registration of a trade mark comprising the silhouette of a woman on her back with her legs in the air forming the word VIRGIN on 7 September 2006.

AU Trademark: 1134133
AU Trademark: 1134133

A Delegate of the Registrar of Trade Marks agreed with Virgin Enterprises’ submission that the Applicant’s importation of 20, 000 Chinese-made condoms into Australia bearing the VIRGIN logo trade mark contravened the Therapeutic Goods Act 1989 (Cth) (“TG Act”). Accordingly, the Delegate found use of the trade mark would be contrary to law, which is a basis for refusing registration of a trade mark pursuant to the Trade Marks Act 1995 (Cth).

Condoms are medical devices under the TG Act and must be registered on the Australian Therapeutic Goods Register (“ATGR”) before being imported into Australia.  Failure to register such goods before importation gives rise to civil and criminal liability under the TG Act.

The Delegate found the assessment as to whether use of the mark was contrary to law was to be undertaken as at the priority date but looking forward to prospective conduct after registration was effected.  So whilst there had been no importation of the condoms as at the priority date, it was a relevant consideration that the Applicant had later imported the condoms in breach of the TG Act.

In his decision, the Delegate noted that an applicant for trade mark registration may file an application whilst it is still finalising business arrangements, such as, obtaining the appropriate regulatory approvals.  The Delegate considered a number of earlier decisions where an applicant’s use of a trade mark would have been contrary to law unless the necessary approvals, licences or permissions were obtained.  In those cases, the Delegate found the applicants had been given the ‘benefit of the doubt’ in the sense that it was presumed an applicant would obtain the necessary approvals before actual use of the trade mark commenced.

The present case was distinguished as the importation of the condoms had already occurred and the mark had been used illegally.  The Delegate also accepted Virgin Enterprises’ submissions that the labelling for the imported condoms did not comply with the TG Act’s labelling requirements.  Registration of the trade mark was therefore refused on the basis its use was, on the balance of probabilities, in contravention of the TG Act which was said to have the result of “effectively determin[ing] the hypothetical question of whether use of the mark would be contrary to law as of [the Priority Date]”.

The product itself
The product itself

Virgin Enterprises also attacked the application on the basis that the Applicant had no intention to use the trade mark at the time of filing, which is a ground of opposition pursuant to s.59 of the Trade Marks Act.  Virgin Enterprises had undertaken various investigations which had found inter alia: there was no listing on the ATGR for the condoms; the Applicant’s principal place of business was a residence with no apparent commercial activity taking place; and no contact details or a website could be located for the Chinese manufacturer.

The Delegate accepted the Applicant’s evidence that it intended to sell condoms bearing the trade mark to various hotels and pubs throughout Australia despite the lack of documentary evidence to support this statement.  He also accepted that the Applicant’s relationship with its Chinese manufacturer had broken down so the Applicant was unable to produce invoices or shipping documents to support its statement.  Virgin Enterprises’ evidence of the apparent lack of business activity was not considered sufficient to find the Applicant did not have an intention to use the trade mark at the time of filing of its application.
This decision illustrates the importance of obtaining advice from a lawyer or trade mark attorney who can identify all relevant grounds of opposition, based on the circumstances of use and adoption of a particular trade mark.