High Court of Singapore Decision Date: 7 April 2022 Judge: Lee Seiu Kin J Appeal from: Dr August Wolff GmbH & Co. KG Arzneimittel v Combe International Ltd [2021] SGIPOS 10
In Combe International Ltd v Dr August Wolff GmbH & Co. KG Arzneimittel [2022] SGHC 78, the case before the Singapore High Court is one of the many disputes (in various juridictions) between the Combe International Ltd (“Combe/plaintiff”) owner of “VAGISIL” and its variant marks and Dr August Wolff GmbH & Co. KG Arzneimittel (“Dr August Wolff/defendant”), applicant for “
” mark (“Application Mark”) and “VAGISAN” marks in multiple jurisdictions, some of which have been invalidated by Combe.
One such case happened in Singapore when Dr August Wolff’s “VAGISAN” (registration no. TT1206670G) for goods in classes 3 and 5 was declared invalid by Hoo Sheau Peng J in Dr August Wolff GmbH & Co. KG Arzneimittel v Combe International Ltd [2021] SGHC 49.
On the 25 May 2018, the Applicant filed trade mark application no. 40201816895W for “” in respect of products including non-medicated cleansers for intimate personal hygiene care purposes in class 3 and for products including medical preparations for vaginal application in class 5. The Application mark was accepted on 7 December 2018. The Opponent filed opposition, nominating grounds of ss 8(2)(b), 8(4) and 8(7) of the Trade Marks Act (Cap. 332, 2005 Rev Ed)(“TMA”), relying on a number of earlier registered “VAGISIL” marks for goods registered in classes 3 and 5. The IP Adjudicator (“IPA”) held none of the grounds of opposition were established.
The present case is an appeal against the decision of the IPA on grounds under ss 8(2)(b) and 8(7)(a) of the TMA.
Significantly, under s 8(2)(b) of the TMA, the plaintiff contended that the IPA had erred, inter alia by holding that the element “Dr Wolff’s” in the Applicant Mark was distinctive and was at least of equal distinctiveness with the element “Vagisan” and that the dominant element in the Applicant Mark should have been “Vagisan” instead of “Dr Wolff’s Vagisan”. The plaintiff contended that the IPA also erred in finding the Applicant Mark and “VAGISIL” marks were dissimilar visually, aurally and conceptually.
The issue to be determined was if the addition of “Dr Wolff’s” in the Application Mark was sufficient to set it apart from the “VAGISIL” marks such that the Application Mark would be considered dissimilar to the “VAGISIL” marks, with no likelihood of confusion among consumers.
For distinctiveness in the ordinary and non-technical sense(memorable part of the mark), Justice Lee Seiu Kin held that the difference in font size between “Dr Wolff’s” and “Vagisan” was “not sufficient to render VAGISAN the distinctive component of the Application Mark” and that the what would be memorable to the consumers would be “Dr Wolff’s Vagisan” instead of just “Vagisan” as contended by the plaintiff. As for distinctiveness in the technical sense (inherent distinctiveness), the element “Dr Wolff’s” alluded to endorsement by medical professional and on its own, had no meaning. Lee Seiu Kin J concluded that “Dr Wolff’s” was as distinctive in the technical sense as “Vagisan”(a coined word) for the Application Mark.
Turning to the assessment of the visual, aural similarity of the marks, Lee Seiu Kin J reasoned that because of the “equal” distinctiveness of the elements “Dr Wolff’s” and “Vagisan” that made up the dominant components, the Application Mark was taken to be dissimilar to the “VAGISIL” marks. The marks were held to be conceptually dissimilar as the addition of “Dr Wolff’s” suggested that a medical professional by the name of Dr Wolff “created, owned, endorsed the product named Vagisan”.
As for the likelihood of confusion, the issue to be determined was whether a substantive portion of the relevant public which consists of actual and potential customers would be confused. The court reasoned that female consumers are likely to pay careful attention when purchasing products meant for the intimate areas of the body. For avoidance of doubt, female consumers are likely to seek guidance/assistance from a specialist at a bricks/mortar store before making such a purchase. The court also found that VAGISIL mark did not cross the requisite threshold to be considered to enjoy a strong reputation in Singapore after 2010. On balance, the High Court held that there would be no likelihood of confusion and the appeal against the decision of the IPA under s 8(2)(b) was dismissed.
For ground under s 8(7)(a) of TMA to succeed, the plaintiff must establish the elements of goodwill, misrepresentation and damages. The High Court found goodwill had acquired goodwill in its business in Singapore under the “VAGISIL” marks in respect of the goods concerned. The inquiry under the element of misrepresentation is substantially the same as the likelihood of confusion under s 8(2)(b) of the TMA. As the element of misrepresentation was not made out, the appeal against the IPA’s decision under s 8(7)(a) was accordingly dismissed.
Conclusion
Undeterred by the earlier invalidation action against the “VAGISAN” mark in respect of goods in classes 3 and 5, the defendant added the element “Dr Wolff’s” to its “Vagisan” mark to further distinguish its goods and services from those of the plaintiff’s. “Dr Wolff’s” was held to have no meaning in respect of the goods concerned, nor does it make reference to the quality or character of the goods concerned and hence was held to be inherently as distinctive as the portmeantu word “Vagisan”.
Disclaimer: The above is provided to assist in the understanding of the decision by the High Court of Singapore. It should not be relied upon as legal advice. Any errors or omissions are the author’s. For queries related to the article, please contact the author here.
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