Facts

Combe International LLC is the owner of three UK registered trade marks for VAGISIL, registered in 1975, 1985 and 2006 respectively, one in Class 3 for “Nonmedicated Toilet preparations; soaps; deodorants for personal use …” etc., and two in Class 5 for “Medicated, deodorising and sanitary preparations and substances all for vaginal use” and “Medicated, pharmaceutical and sanitary preparations and substances …” etc.

Combe has marketed and sold non-prescription female intimate healthcare products around the world since the 1970s under the VAGISIL mark. VAGISIL products were first introduced into the UK in 1984.

Dr August Wolff GmbH & Co KG is a German pharmaceutical company. It launched a cream for vaginal use under the sign “Vagisan” in Germany in the early 2000s, with plans to expand into other markets.

In December 2012, Dr Wolff obtained an international registration for VAGISAN (the IR). Combe opposed the US designation of the mark, which sparked negotiations between the parties on the registration and use of the VAGISAN and VAGISIL marks in different parts of the world, including the UK. Discussions included possible arrangements to permit co-existence of the marks in some territories, although Combe said that its “major markets”, including the UK, were off limits. The negotiations continued until early 2015 but in the end, no settlement was reached.

Wolff introduced VAGISAN to the UK in 2013. Sales were low until 2016 when Wolff relaunched VAGISAN through a major TV ad campaign, which gave sales a material boost. Wolff also obtained an exclusive listing for VAGISAN in 790 Boots stores. VAGISIL was also stocked in Boots at this time.

Following application to EUIPO by Combe in December 2017, Wolff’s IR designating the EU was declared invalid because of the likelihood of confusion between VAGISAN and VAGISIL. Wolff’s appeal was dismissed in September 2020. Wolff has now appealed to the General Court and the Cancellation Division’s decision is suspended. Following the UK’s departure from the EU, a cloned IR for VAGISAN was registered by the IPO in the UK. Because of the introduction of s 21A to the Trade Marks Act 1994, if the General Court appeal is dismissed then the cloned IR UK will automatically be cancelled.

In February 2020, Wolff introduced two more products into its VAGISAN range in the UK.

In September 2020, Wolff decided to rebrand its UK VAGISAN products as “DR WOLFF’s VAGISAN.” The rebranding is still in progress.

Combe issued proceedings against Wolff for trade mark infringement under s 10(2)(b) of the 1994 Act.

Wolff denied infringement and advanced various defences, the main one being that Combe had acquiesced for five years in the use of one of the VAGISAN products, namely the VAGISAN Moist Cream product under Wolff’s UK cloned UK mark, pursuant to s 48 of the 1994 Act. Additionally, Wolff argued that:

1. i) the term VAGI, embedded within the word VAGISAN, was a descriptive indicator of the purpose or characteristics of the goods in question, meaning it had a defence under section 11(2)(b);
2. ii) despite Combe’s application to revoke it, Wolff’s IR is currently registered on the EUTM Register, meaning it had a defence under section 11(1); and
3. iii) there had been honest concurrent use of the VAGISIL marks and the VAGISAN sign for a long period, meaning it had a defence as set out in Budejovický Budvar, národní podnik v Anheuser-Busch Inc [2012] RPC 11.

Wolf also sought a declaration that the rebranded sign “DR WOLFF’S VAGISAN” did not infringe, and revocation of two of Combe’s marks in respect of goods that did not relate to vaginal use on the grounds that there was insufficient evidence of such use.

Decision

Section 10(2)(b)

Johnson J found that VAGISIL and VAGISAN sign were “very, very similar”: there was a high degree of visual and aural similarity between them, and neither had any meaning in English. Further, the VAGISAN goods were clearly within the classes for which the VAGISIL marks were registered.

Johnson J accepted Wolff’s submission that descriptive prefixes are often used as a signpost to tell consumers what the product is used for, and that VAGI or VAGIS were suggestive of the idea of the vagina. However, he said, whatever the evidence of other signposting phrases was (e.g., nic, derm, dent, pedi), the evidence was that there was no common perception of the terms VAGI or VAGIS being used in this way.

Further by the relevant date, which was 2013, the VAGISIL marks had been in widespread and longstanding use in the UK market, awareness of the mark having been promoted through material investments made by Combe, resulting in a high degree of brand awareness.

Therefore, Johnson J concluded that the average consumer in 2013 would have regarded the entire word VAGISIL as an identifier of trade origin and would not have discounted the embedded elements VAGI or VAGIS as serving only a signposting function.

In Johnson J’s view, this showed that there was a risk of confusion and that the average consumer was likely to think that the products came from the same or linked economic undertakings.

Combe also relied on evidence of actual confusion, which came from Wolff’s disclosure. Wolff said that if there had been actual confusion, one would have expected to see a clear and consistent track-record of complaints from consumers, and there were none.

The evidence Combe relied on showed that, following Wolff’s 2016 advertising campaign, Combe had noticed a spike in sales of VAGISIL products. This “halo effect” was also noticed by Wolff and it was remarked on in consumer research. Survey evidence from 2017 commissioned by Wolff also showed brand confusion between VAGISAN and VAGISIL, as did social media responses to an advertising campaign for VAGISAN fronted by Jenny Éclair. Further Wolff research from 2019, commissioned to understand why sales of VAGISAN were slow, showed that a contributing factor to lack of sales was brand confusion.

Johnson J found that the lack of complaints from customers and the fact that there was no witness claiming to have been confused did not alter his overall conclusion. Given that the products were aimed at treating the same symptoms, the lack of complaints was not at all incompatible with the idea that there was brand confusion. On the contrary, it was entirely consistent with it.

Johnson J also found that much of the social media evidence responding to the Jenny Éclair ad reflected the same basic misapprehension that the product being advertised was VAGISIL not VAGISAN. This accumulation of evidence, sitting beside the halo effect and research evidence, was persuasive.

Accordingly, Johnson J held that Combe’s case on actual confusion was made out. This bolstered the overall conclusion that there was a likelihood of confusion under s 10(2)(b).

Acquiescence – s 48(1)

Wolff argued that, from February 2014, by which time its IR for VAGISAN had gained protection in the EU, Combe had acquiesced, i.e., knowingly tolerated, the use of Wolff’s later mark for at least five years.

One of the questions was whether Combe’s invalidity action at EUIPO in 2017/2018 had stopped the clock ticking in the five-year period concerned.

Johnson J found that stressing only the word “use” in s 48(1), as Wolff did, and arguing that the only way to stop the clock ticking was some step that was directed towards preventing “use” in itself, was artificial. The phrase taken as a whole is “… the use of a registered trade mark”, he said. The proprietor of an earlier mark who seeks to invalidate a later one is objecting to the very existence of the mark on which the s 48 defence is based. Accordingly, the s 48 defence failed. Combe’s initiation of cancellation proceedings before EUIPO in December 2017 had interrupted the five-year limitation period prescribed by s 48.

In any event, if that were wrong and “use” was the operative provision in s 48, it was clear that Combe did not tolerate coexistence with VAGISAN and, in considering a global settlement agreement with Wolff, had essentially sought a commitment from Wolff that it would refrain from “using” VAGISAN in various countries, including the UK. In other words, Combe’s objection had also been in relation to “use” of the mark.

Accordingly, Combe had not, on any view, acquiesced in the use of the VAGISAN mark in the UK.

Section 11(2)(b)

Johnson J also rejected Wolff’s argument that the term VAGI was a sign or (more likely) an indication concerning the intended purpose or characteristics of the goods in question, i.e., treatment of conditions affecting the vagina, and consequently the use of VAGI “as part of the mark” was not an infringement under s 11(2)(b):

1. he had already determined that the average consumer in 2013 would not have been accustomed to seeing the embedded elements VAGI or VAGIS as signposting or descriptive devices in common usage; the terms were not sufficiently clear in their meaning to amount to an indication of either the purpose or characteristics of the goods in question;
2. Combe was not trying to prevent the use of the embedded element VAGI, and neither was that what Wolff wanted to be able to use;
3. s 11(2)(b) was not apposite to cover Wolff’s approach, which in Johnson J’s view was “artificial”; the correct starting point was the word sign VAGISAN and the questions to be asked under s 11(2)(b) related to the whole sign.

In any event, Wolff’s use of the VAGISAN sign was not in accordance with honest practices in industrial and commercial matters:

1. by the time the VAGISAN products were launched in the UK in 2013, Wolff was well aware of the VAGISIL marks and the goods to which the mark related because it wrote seeking permission to use the sign VAGISAN, which Combe had refused;
2. Wolff had shown blinkered unwillingness, after the relaunch in late 2016, to acknowledge the clear signals it was receiving about the likelihood of confusion between the brands and the ongoing actual confusion; and
3. Wolff had carried on regardless without any real justification for doing so, even in the face of continued objections from Combe, which did not constitute acting fairly in relation to the legitimate interests of the trade mark proprietor.

Accordingly, the s 11(2)(b) defence failed.

Section 11(1)

Wolff argued that because its later IR was still on the EUTM register, it had a defence under s 11(1), because Combe had acquiesced to the use of the VAGISAN mark for five years.

Johnson J said that this argument was artificial as:

1. he had already found that there was no acquiescence; and
2. Combe had applied for a declaration of invalidity that had been successful, albeit that the operation of the declaration was suspended pending Wolff’s further appeal; therefore, Wolff could not say that “as things currently stand”, its later mark “would not be declared invalid”.

Honest concurrent use

Johnson J found that Wolff had not shown that it had co-existed for a long period with Combe in the UK market, honestly using the same or similar names, and without exacerbation of confusion:

1. the length of time of continuous existence was not sufficient;
2. such co-existence as there had been had not in any event been honest and it was impossible to say that the guarantee of the origin of Combe’s marks had not been impaired by Wolff’s use; and

• Wolff had exacerbated the level of confusion by continually discounting the accumulating evidence of confusion and pressing on with its marketing and advertising strategy.

Counterclaim

The question was whether the addition of the words “DR WOLFF’s” before “VAGISAN” altered the conclusion that there was a risk of confusion by the average consumer as between VAGISAN and VAGISIL, and whether a composite mark made a difference.

Johnson J found that there was still a risk of confusion because:

1. the addition of DR WOLFF to the VAGISAN mark did not prevent the word VAGISAN having its own independent, distinctive role; VAGISAN was the product being sold and was what the average consumer was interested in; it had a natural emphasis and distinction within the composite phrase;
2. the evidence showed that it was common for pharmaceutical and cosmetic brands to use “Dr” followed by a name as the “house” brand for a range of sub-products to enhance the credibility of the product; therefore it was not likely to be understood as a signifier of trade origin, but rather an indicator of the authenticity and likely effectiveness of the product described;
3. he had already found that VAGISAN was likely to be confused with VAGISIL; and
4. DR WOLFF was not and never had been a well-known brand name in the UK.

Accordingly, Johnson J rejected Wolff’s application for a declaration.

Revocation of two of Combe’s marks

In response to Wolff’s application to revoke two of Combe’s marks in respect of goods that did not relate to vaginal use, Johnson J held that a fair description of the products on which VAGISIL had been used would be “women’s intimate health care.” Accordingly, he limited the existing classes of goods by adding at the end of the specifications, “all the aforementioned goods for female intimate healthcare.”

Conclusion

Combe’s infringement case under section 10(2)(b) succeeded and Wolff’s counterclaims were dismissed, save as to the specification amendment to Combe’s marks. (Combe International LLC v Dr August Wolff GmbH & Co KG [2021] EWHC 3347 (Ch) (10 December 2021) — to read the judgment in full, click here).