WA Olive Oil Company vs Richard Branson In Fight For “Virgin” Trade Mark
Monday 4 May 2015 @ 11.08 a.m. | IP & Media
A small Western Australian olive oil company named “Vasse Virgin” is currently engaged in a trade mark battle with Richard Branson’s multinational conglomerate Virgin Group. Vasse Virgin’s co-owner, Edwina Scherini, told The West Australian that they recently attempted to register a logo incorporating their “Vasse Virgin” name, which they have been using since 2009. However, the Virgin Group has objected to the application.
Ms Scherini says she does not believe that the use of the term is misleading, saying:
“The use of a distinctive name like Vasse with the word Virgin, and the connection with a business based on olive oil, could do nothing but conjure up, in the minds of the consumers, a connection with olive oil.”
However, Virgin Group Asia Pacific brand public relations and digital communications manager Elizabeth Gain, told The West Australian that Vasse’s application:
“covers a very broad range of goods and services, some of which fall squarely into the core activities of the Virgin Group, in particular transportation services. Our concerns do not relate to use of the name in connection with olive oil products.”
Ms Scherini says her company has ceded to a number of demands by the Virgin Group, “apart from one that we felt may have the capacity to cause serious damage to our business in the future”. She also says the process is both emotionally and financially draining:
“Being a small, family-run olive oil business centred in Margaret River, we clearly do not have the deep pockets or strategic legal teams available to the Virgin Group.”
Vasse Virgin has until 10 June 2015 to respond to a submission by the Virgin Group that has been lodged with Intellectual Property Australia.
The Virgin Group’s Trade Mark Strategy
The Virgin Group has historically taken a notably tough stance towards trade mark opposition. Bloomberg Business wrote an article last year in which they noted that:
“[s]ince 2012, Branson’s company has opposed or delayed at least 64 trademark registrations in the U.S., taking on craft breweries, romance novelists. and a host of companies and nonprofits whose products and services don’t obviously overlap with those of the multinational giant. The company has also sued small businesses in federal court and threatened businesses with cease-and-desist orders that aren't always a part of the public record.”
The article also listed some specific examples, including “a trademark registration for Virgin Valley Cab, a taxi company in an area of Northwest Arizona and Southeast Nevada called the Virgin Valley” and “a registration by Las Virgenes Educational Foundation, a nonprofit serving the Las Virgenes United School District in Southern California.”
Last year in Australia, the Virgin Group successfully prevented a company called Sugar Virgin Pty Ltd from registering the trade mark “Virgin” for sugar products and sugar confectionary (Virgin Enterprises Limited v Sugar Virgin Pty Ltd [2014] ATMO 39 (7 May 2014)). In the case, Hearings Officer Bianca Irgang said [at 50]:
“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.”
Nick Fox, the Virgin Group’s director of external relations, told Bloomberg that:
“[t]he company does take legal action in accordance with trademark laws around the world to protect and preserve the value of the Virgin brand where necessary… We assess each case on its merits and our goal is always to resolve disputes amicably, without the need for litigation.”
Randy Lipsitz, an intellectual property lawyer from Kramer, Levin, Naftalis & Frankel, told Bloomberg that Virgin may be pursuing such an aggressive strategy for a number of reasons. They may be concerned about the dilution of their brand, and “every new trademark that uses the word "virgin" makes it harder to prevent other registrations in the future”. Fewer competing registrations would also make it easier for the Virgin Group to convince trade marks offices to rule out new registrations. Finally, Mr Lipsitz suggested that the more well-known this strategy is, the less likely new businesses are going to want to fight about it:
“If a client came and said 'we want to use virgin for a brand of staplers,' we would do a search. We would say: 'Branson seems to be very aggressive, and while we think you would win this, are you sure you want to invest the capital in packaging and process to face a lawsuit later on?”
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