Combe International LLC has marketed and sold non-prescription female intimate healthcare products under the VAGISIL brand in the United Kingdom (via its subsidiary, Combe International Limited) since 1984. Combe also owns various UK trade mark registrations for VAGISIL in Classes 3 and 5 for medicated and non-medicated sanitary preparations.
The defendant, Dr August Wolff Gmbh & Co Kg Arzneimittel a German pharmaceutical company, launched its range of female intimate healthcare products under the name VAGISAN in Germany in the early 2000s, and in the United Kingdom from February 2013. In 2012 the parties entered into coexistence negotiations relating to the registration and use of the VAGISAN and VAGISIL names in various territories, including the United Kingdom, following Wolff’s application for trade mark protection for the mark VAGISAN. However, they failed to reach an agreement and Combe issued proceedings against Wolff in various jurisdictions. The present action concerns proceedings commenced in the High Court of England & Wales by Combe on the basis of (among others) likelihood of confusion under Section 10(2) of the Trade Marks Act 1994.
Decision
Combe’s claim was upheld in December 2021 by the High Court on the basis that:
- the relevant consumer has a spectrum of attentiveness within the arena of healthcare (or quasi-healthcare) products. In this instance, the consumer was likely to have a low level of attention when purchasing the goods as they were unlikely to linger when making the purchasing decision;
- the marks VAGISIL and VAGISAN were visually and phonetically highly similar; and
- the goods at issue were identical.
Notably, whilst the judge, Mr Justice Johnson, accepted Wolff’s argument that the ‘vagi/vagis’ element of the marks was a descriptive or signposting term, it did not follow that VAGISIL had only a low level of distinctiveness at the date of Wolff’s launch of VAGISAN in the United Kingdom. By that stage, the mark had acquired enhanced distinctiveness as a result of Combe’s use and its position in the UK market. The judge also considered evidence of actual confusion submitted by Combe, which included evidence that Wolff’s advertising campaigns had led to increased sales of Combe’s VAGISIL products via the halo effect and evidence of direct confusion between the brands on Twitter.
Wolff sought to rely on a number of defences, including:
- acquiescence (Section 48 of the Trade Marks Act);
- descriptiveness of the element VAGI (Section 11(2)(b));
- use of a later-filed trade mark (Section 11(1)); and
- honest concurrent use (Section 11(2)(b)).
The judge rejected these defences, as well as Wolff’s request for a declaration that rebranding its products to ‘DR WOLFF’s VAGISAN’ would not infringe Combes rights in VAGISIL on the basis that VAGISAN remained the most distinctive element of the proposed rebrand. Consequently, Wolff was found to have infringed Combe’s rights in VAGISIL and was required to cease marketing and sales of all feminine hygiene products under the VAGISAN mark in the United Kingdom.
Stay request
The present action concerns an application by Wolff for a stay pending the Court of Appeal’s consideration of permission to appeal the first instance decision. In the alternative, Wolff also requested a 21-week stay or suspension of the injunction to allow it to rebrand its products for the UK market.
Wolff’s request was given short shrift on the premise that this would amount to authorising its continued infringement of the VAGISIL trade mark. The judge was not persuaded that the commercial disadvantage that Wolff claimed it would suffer as the result of the injunction (namely, damage to market reputation and inability to sell-off remaining stock) were sufficient justification for suspending the injunction.
Wolff was entitled to apply for permission to appeal to the Court of Appeal and communicated its intention to do so. This, the judge acknowledged, created the possibility that the finding of infringement – and thus requirement to rebrand – could be overturned. A balance therefore needed to be struck between the potential for injustice to Wolff (if its appeal ultimately succeeded but in the meantime it had been required to rebrand) and the potential injustice to Combe (if the appeal failed and, as a result of the stay, Wolff was permitted to continue selling the infringing products pending the conclusion of the appeal).
The judge ultimately considered the determination of this point to be a question for the Court of Appeal, granting a three-week stay to 'hold the ring', within which Wolff was expected to file its application for permission to appeal to the Court of Appeal with 'suitable alacrity'. Any further stay would be at the discretion of the Court of Appeal.
Comment
The interim period between judgment and appeal is always one of uncertainty, particularly for a losing party who has been ordered to effect a change to its branding. While Wolff may not have been granted the 21-week stay it was looking for, in applying for permission to appeal it has ultimately bought itself further time to commence its rebranding exercise. It remains to be seen whether permission to appeal will be granted and whether the first-instance decision will be upheld.
This article was written by Emily Roberts and Chloe Perea Poole and first appeared on WTR Weekly, part of World Trademark Review, in February 2022.
For more information or if you have any questions, please contact Chloe Perea Poole or Emily Roberts, or your usual IP team contact.
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