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

Author:Mr Avi Ordo
Profession:S Horowitz & Co
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...

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