Virgin Group Defends Its Trademark Against Potential Heineken Brand Launch

Virgin Group is trying to defend its brand against international brewer Heineken’s attempt to invalidate its trademark of the “Virgin” name ahead of the release of non-alcoholic beer Desperados Virgin in the U.K. The company has asked the High Court in London to throw out Heineken’s legal motion, according to a report by The Times. The move by Virgin is a preventative one in defense of its brand after Heineken submitted an application for a trademark in the U.K, which it has withdrawn this week. The process of invalidating a trademark occurs when one interested party aims to nullify another company's trademark for its own legal interest. Should the invalidation process succeed then exclusive use of the trademark by the original party is lost. In this case, that would be Virgin Group. The Desperados Virgin 0.0% brand was launched in France and over 50 other countries outside of the U.K. in January 2021. In order to launch the brand extension in Britain, Heineken aims to first invalidate the trademark of Virgin to avoid prosecution under Article 46 of the Trademark Law. The trademark defense The 46-page motion from Virgin’s lawyers from the AA Thornton firm, seen by Adweek, claimed that use of the word by any other brand may cause “confusion” for “a substantial portion of the public.” It also claims that use of the word “virgin” in relation to low or no-alcohol beer “was not understood by beer consumers” due to the use of other marketing terms such as “alcohol free,” “non-alcoholic” or “low alcohol” or the use of the ABV percentage on the packaging. “Such use is liable to dilute and/or tarnish the said marks by altering the meaning of the word 'Virgin' such that the Claimant’s use of that word as a trade mark,” it goes on to claim, adding that should the company wish to develop its own brand extension or license, it will be “hampered” should the term become a more regularly used descriptive word. The Strength of the Virgin Brand Is About to Face a Legal Test Another element of the challenge from Virgin Group highlights that when it was operational, its Virgin Trains franchise sold its own branded beer. However, that franchise ended in the U.K. at the end of 2019 after 22 years in operation. A Virgin Group spokesperson commented: “Virgin is seeking a definitive resolution following Heineken’s challenge to the Virgin brand over the use of the word 'virgin' on Heineken’s non-alcoholic beers. The Virgin brand has stood the test of time and with Virgin Wines as part of the Virgin family today and [having] new possibilities for the future, we have taken action to protect our rights and minimize the risk of confusion in the market and the damage to our brand.” Upon launch, Diederik Vos, brand director for Desperados, described the brand as being defined by its "boundary-pushing spirit” and described the non-alcoholic extension as “a major strategic next step on this exciting journey.” He added: “With a growing number of drinkers seeking alcohol-free alternatives, we are delighted to expand Desperados into the low and no-alcohol drinks category to deliver a refreshing, new taste experience.” Heineken has not yet commented on the legal motion.