In Dr. August Wolff GMBH & Co. KG Arzneimittel v Combe International Ltd [2021] SGHC 49, the High Court of Singapore handed a decision against Dr. August Wolff GMBH & Co. KG Arzneimittel (“plaintiff”) by allowing the application of Combe International Ltd (“defendant”) for declaration of invalidity against trade mark registration no. T1206670G “VAGISAN” in Class 3 (“Soaps, perfumery, essential oils, cosmetics, hair lotions”) and Class 5 (“Pharmaceutical products, sanitary products for medical purposes; dietetic substances for medical purposes”).

High Court of Singapore 

Judge: Justice Hoo Sheau Peng 

Date of Judgment: 25 February 2021

Appeal from: Combe International Ltd v Dr. August Wolff GmbH & Co. KG Arzneimittel [2020] SGIPOS 3

The present case is one of the many trade mark disputes across different jurisdictions between the two parties. In Combe International Ltd v Dr. August Wolff GmbH & Co. KG Arzneimittel [2020] SGIPOS 3, the learned Principal Assistant Registrar (“PAR”) found the competing marks “VAGISAN” and Combe International Ltd’s “VAGISIL” to be confusingly similar and the use of VAGISAN was likely to cause confusion. The PAR also established elements of misrepresentation and damage to the goodwill of Combe International Ltd in a passing off action and as a result, allowed the application for declaration of invalidity against the “VAGISAN” mark.

On balance, I was persuaded that, having regard to the extraneous factors – even accounting for the two factors discussed at [54] above – as well as the similarity of the marks and goods in question, there exists a likelihood of confusion on the part of the public. In my judgment, even if some consumers would not regard the marks to be the same, a consideration of the factors at [53]–[54] above indicated that those consumers would nevertheless likely assume the existence of an economic link or connection between the goods bearing the two marks.

Dr. August Wolff GMBH & Co. KG Arzneimittel v Combe International Ltd [2021] SGHC 49 at [55]

The plaintiff appealed against the decision of the PAR on grounds that the PAR had erred in finding the competing marks were similar and for establishing the elements of misrepresentation and damage (in the tort of passing off).

The appeal centred very much on whether the PAR had erred in her assessment of the marks similarity.  

Distinctiveness of the “VAGISIL” marks

The learned PAR found the prefix “VAGI” to have weak distinctive character due to its association with the female anatomy and the goods claimed. The suffix “SIL” is distinctive as it does not allude any meaningful connotation. The PAR found “VAGISIL” to possess a normal level of inherent distinctive character. Justice Hoo Sheau Peng upheld the PAR’s findings that “VAGISIL” crossed the threshold to qualify as an invented mark and would be understood to denote the intended treatment area of the goods.

VAGISAN v VAGISIL (Marks Similarity Assessment)

The PAR found the competing marks to be visually and aurally similar but conceptually neutral. The PAR found the marks to be similar to an above average degree. Justice Hoo Sheau Peng in noting that the marks have a common weak distinctive prefix in “VAGI” with the suffixes differing by 2 letters in “SIL” and “SAN”, found that the marks in their entirety are visually similar albeit only to an average degree due to the distinctive components (“SIL” and “SAN”) as opposed to an above average degree held by the PAR. 

The PAR took the view the “Dominant Approach” would be most appropriate in assessing the aural similarity of marks that have multiple components of varying distinction. Justice Hoo Sheau Peng saw no reason to depart from this approach. While the “ih” vowel sound in “SIL” and the “ah” vowel sound in “SAN” are acoustically and phonetically distinct, it doesn’t override the fact the two out of the three syllables are aurally identical and for the third syllable, the sibilant “s” sound is the very much the same. Taking into account the effects of slurring, careless pronunciation and imperfect recollection of consumers with ordinary intelligence, Justice Hoo Sheau Peng took the view that the marks in their entirety were aurally similar to an average degree.

Justice Hoo Sheau Peng found on the whole, the marks are similar to an average degree (agreeing with PAR that the marks are conceptually neutral). 

Goods Similarity Assessment

The parties did not dispute that the goods in classes 3 and 5 of the competing marks were similar.

Likelihood of Confusion

The threshold of confusion required is that within a “substantial portion of the relevant segment of the public” in excess of a “de minimis level”: Hai Tong at [78(e)] and Sarika CA at [57]. The PAR held that consumers who pay careful attention in their purchases would less likely result in direct confusion. However, taking into account the similarity of marks and imperfect recollection of consumers, the learned PAR took the view that the relevant segment of the public might on recognizing the marks are different, thought there could be association of some sort between the parties and concluded that there’s a likelihood of confusion.

The plaintiff contended there was no likelihood of confusion and citing factors inter alia that the marks were dissimilar and the lack of reputation of “VAGISIL” marks. The plaintiff advanced arguments that the distinctive suffixes between the marks and the coexistence of the competing marks in at least 44 other jurisdictions and the goods being highly personal self-care products requiring specialist assistance will further diminish any likelihood of confusion.

Justice Hoo Sheau Peng found that the marks were similar to an average degree. Her Honour found reputation in “VAGISIL” marks subsist at a respectable degree in Singapore. The goods in the competing marks in class 3 and 5 are similar and targets the same relevant segment of the public. The products being relatively inexpensive, would not require extensive research to be conducted prior to the purchase. Justice Hoo Sheau Peng took the view females would normally pay medium level of attention given the products are to be applied on intimate areas but went on to conclude, on balance, a likelihood of confusion between the marks existed. 

The ground of s 23(3)(a)(i) read with s 8(2)(b) of the Act was established.

Tort of Passing Off – Elements of Misrepresentation and Damage

Her Honour took the view the “V” device that existed alongside “VAGISIL” marks was not distinctive [66] and represented a decorative element rather than trade origin and the requisite threshold for marks similarity was crossed and there existed a likelihood of confusion. The element of misrepresentation under s 23(3)(b) read with s 8(7)(a) of the Act was consequently made out. 

With the parties’ products being direct in competition, Justice Hoo Sheau Peng held that damage to the goodwill of VAGISIL as a result of diversion of sales is likely to occur as a result of indirect confusion and concluded the tort of passing off is established within s 8(7)(a) of the Act. The ground of s 23(3)(b) read with s 8(7)(a) of the Act was upheld.

Accordingly, the appeal was dismissed.

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.