When choosing a brand for a new product or business, it is important to take into account the risk of both direct and indirect confusion with earlier trade marks. Examples of indirect confusion tend to arise in three main scenarios:
- Where the two marks share a common element that is so strikingly distinctive that the average consumer would assume that no one other than the original brand owner is using it in a trade mark at all, e.g., "26 RED TESCO".
- Where the later mark simply adds a non-distinctive element to the earlier mark, in the way that might be found in a sub-brand or brand extension e.g., terms such as "LITE", "EXPRESS", "WORLDWIDE" and "MINI".
- Where the earlier mark comprises a number of elements, and a change of one element appears entirely logical and consistent with a brand extension e.g., "FAT FACE" to "BRAT FACE" (the examples are taken from the decision in L.A. Sugar Limited v Back Beat Inc).
The recent case of Virgin Enterprises Limited v Virginic, LLC is an example of the second type of indirect confusion. Virginic, a US cosmetics company promoting natural ingredients, applied for VIRGINIC in class 3 relating to cosmetic products. Virgin opposed the application under the fast track opposition regime (i.e., with no evidence or hearing), relying on its earlier mark for VIRGIN, in class 3. After the UKIPO rejected the opposition, Virgin appealed and successfully identified a material error of principle by the Hearing Officer. Applying the level of confusion assessment afresh, the High Court ruled in Virgin's favour, holding that indirect confusion was likely to arise.
The High Court concluded there was a risk that the average consumer would perceive adding –IC made VIRGINIC a 'newly-minted adjective "of or pertaining to VIRGIN"'. Accordingly, there was a fairly high degree of conceptual similarity between the trade marks. Further, the average consumer would be likely to think that VIRGINIC was a brand extension of VIRGIN, and therefore indirect confusion was established.
Adding –IC as a suffix to a well-known brand is not an unusual form of brand extension, albeit here Virginic argued the more obvious adjectival form would have been 'Virginal'. The Court noted that owners of well-known brands such as NIKON have deliberately adopted adjectival versions of their brands using –IC (NIKONIC) and that the public also regularly use –IC when referring to well-known brands e.g., ROLEXIC. Evidence such as this is crucial when making a brand extension argument. However, it is worth noting that the UKIPO heard this case under the 'fast track opposition' regime, with no evidence and no hearing. Whilst this procedure is attractive as a faster, cheaper and less complex regime, it may not be suitable in all cases.