In Combe International Ltd v Dr August Wolff GmbH & Co. KG Arzneimittel [2021] FCAFC 8, the Federal Court of Australia (Full Court) overturned the decision of the primary judge in Dr August Wolff GmbH & Co. KG Arzneimittel v Combe International Ltd [2020] FCA 39 and refused registration of “VAGISAN” in respect to goods in class 3 and 5. The Full Court held that the mark “VAGISAN” is deceptively similar to the prior registered mark “VAGISIL”.

Federal Court of Australia (Full Court)

Judges: MCKERRACHER, GLEESON AND BURLEY JJ

Date of Judgment: 11 February 2021

Appeal from: Dr August Wolff GmbH & Co. KG Arzneimittel v Combe International Ltd [2020] FCA 39
Dr August Wolff GmbH & Co. KG Arzneimittel v Combe International Ltd (No 2) [2020] FCA 730

Background Information

Dr August Wolff GmbH & Co. KG Arzneimittel (“Dr Wolff”/”respondent”) sought trade mark registration for word mark “VAGISAN” in respect to goods in class 3 including including soaps, cosmetics in class 3 and goods in class 5 including pharmaceutical products, sanitary products, products for medical purposes, dietic substances for medical purposes on the 27 May 2015 (“priority date”). The application was opposed by Combe International Ltd (“Combe”/”appellant”) and the matter was heard before the delegate of the Registrar on the 29 September 2017. The hearing officer upheld Combe’s ground of opposition on the basis of s 60 but dismissed the grounds pursuant to ss 44, 42(b) and 62A of the Trade Marks Act 1995 (Cth)(“TMA”). 

Court of first instance

Dr Wolff appealed against the decision of the delegate of the Registrar to the Federal Court of Australia in relation to s 60 ground of opposition. Also by cross appeal, Combe contended that the opposition under the grounds of ss 44 and 59 ought to be upheld. The primary judge dismissed the grounds of opposition under ss 44, 59 and 60 and ordered Combe to pay the costs of the proceedings and the proceedings before the delegate of the Registrar. 

Combe sought leave to appeal before the Full Court on grounds that the primary judge had erred his assessment of marks similarity in relation to ss 44 and 60. By holding that the marks were not deceptively similar, substantial injustice would result if leave were refused and the primary judge’s decision would run against public interest and compromise the integrity and purity of the Register. Combe further contended that should primary judge’s decision hold, it would affect Combe’s business interests adversely. Combe further claimed that the primary judge had erred in ordering Combe to pay Dr Wolff’s proceedings. 

Issue Central to Dispute

The issue central to the dispute is whether “VAGISAN” is deceptively similar to “VAGISIL”. The primary judge had earlier held that goods applied for in class 5 are goods of the same description as goods covered for the prior registered “VAGISIL” marks. This issue was not subject of the appeal.

Marks Similarity Assessment by Primary Judge

In his assessment, the primary judge took the view that the prefix VAG or VAGI is descriptive common to VAGISAN and VAGISIL. The prefix alluded to products making reference to the female anatomy vagina which is central to the idea of the marks. Each mark has 3 syllables and the first two VA and GI being common and the third syllable beginning with “S”. The descriptive component should be afforded less emphasis or significance in the marks similarity assessment. The primary judge viewed the distinctive components as “SIL” and “SAN”. VAGISIL and VAGISAN do not have close phonetic resemblance and neither of the words tend to be mispronounced. Both words differ in the last 2 letters and the suffixes SIL and SAN are quite distinct. The primary judge did not think the competing marks are close enough in such a way that they would lead to confusion. Taking surrounding circumstances into account including circumstances in which the mark will be used, his Honour noted that the goods that VAGISAN had applied for appeared to be broader than just intimate feminine care products and that females would pay more attention when purchasing products for their intimate areas. Although his Honour noted that the products are high volume-low priced products, on balance, his Honour took the view this factor did not override all the other considerations. His Honour noted the co-existence of marks such as “VAGICARE”, “VAGITEST” and “ECOVAG” at priority date and inferred that consumers understood them as products associated with feminine care. His Honour concluded that “VAGISIL” and “VAGISAN” were not deceptively similar. 

Decision of the Full Court

The Full Court took the view the common element in VAGISIL and VAGISAN, “VAGI” was the distinctive component, and the prefix is likely to be remembered by consumers who came across both marks. The final syllable SIL and SAN are both sibilant and difference lies in the end of the sound who may be slurred by careless pronunciation. The Full Court took the view the idea conveyed by both marks alluded to the products associated with or to be applied to the vagina. The idea was significant in the assessment of deceptive similarity pursuant to s 10 of the TMA. The Full Court disagreed with primary judge that the marks were descriptive in respect to goods such as soaps and cosmetics. There is a real likelihood that anyone encountering VAGISAN would cause to wonder if it’s associated or linked to VAGISIL resulting in confusion. That the marks are to be compared in their entirety instead of placing strong emphasis on the last syllable, the Full Court on balance; departed from the primary judge’s finding and held that the marks were deceptively similar. 

The appeals pursuant to ss 44 and 60 grounds were allowed and registration for “VAGISAN” refused. Dr Wolff was directed to pay Combe’s costs of the appeal and hearing before the primary judge.

Disclaimer: The above is provided to assist in the understanding of the decision by the Federal Court of Australia (Full Court). 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.