Combe International LLC (Combe US) and Combe International Ltd (Combe UK) (together Combe) are respectively the owner and licensee of three UK trade mark registrations for the word VAGISIL in respect of female intimate healthcare products.

Combe issued trade mark infringement proceedings against Dr August Wolff GmbH & Co KG Arzneimittel in relation to Dr Wolff’s use of the signs VAGISAN and DR WOLFF’S VAGISAN (the Signs) in relation to identical goods. Dr Wolff denied infringement and counterclaimed for a declaration of non-infringement in relation to the Sign DR WOLFF’S VAGISAN.

At first instance, the High Court held that Dr Wolff’s use of the Signs infringed Combe’s marks. Dr Wolff appealed on three grounds:

• it claimed a defence to infringement under s 48(1) of the Trade Marks Act 1994 because Combe had acquiesced in the use in the UK of an EU trade mark for VAGISAN registered for intimate personal hygiene goods by Dr Wolff on 4 December 2012 (Wolff EUTM);
• it claimed a defence to infringement under s 11(1) of the 1994 Act by virtue of: (a) Dr Wolff’s ownership first of the Wolff EUTM before 31 December 2020; and (b) of a UK registration deriving from the Wolff EUTM (Wolff UKTM) since 31 December 2020 following Brexit; and
• it said that the judge was wrong to hold that Dr Wolff’s use of the sign DR WOLFF’S VAGISAN gave rise to a likelihood of confusion.

Decision

Section 48(1) — acquiescence

Section 48(1) provides, so far as relevant:

“Where the proprietor of an earlier trade mark … has acquiesced for a continuous period of five years in the use of a registered trade mark in the United Kingdom, being aware of that use, there shall cease to be any entitlement on the basis of that earlier trade mark … –

(a) to apply for a declaration that the registration of the later trade mark is invalid, or

(b) to oppose the use of the later trade mark in relation to the goods or services in relation to which it has been so used…”

In other words, the acquiescing proprietor cannot apply for a declaration that the later mark is invalid, and cannot claim for infringement by use of that later mark.

In December 2017, Combe US had commenced cancellation proceedings in respect of the Wolff EUTM in the EUIPO, claiming that the mark was invalid due to a likelihood of confusion with earlier EU registrations of VAGISIL. Combe US was successful and the Wolff EUTM was declared invalid.

At first instance in these UK proceedings, the judge had found that the initiation of the cancellation proceedings at the EUIPO by Combe US had interrupted the five-year limitation period prescribed by s 48, meaning that Combe had not acquiesced in the use of the Signs. On appeal, Lord Justice Arnold disagreed, finding that bringing cancellation proceedings was not sufficient to preclude acquiescence by the owner of the earlier trade mark in the use of the later trade mark.

Disagreeing with the judge at first instance, Arnold LJ said that under s 48(1), the owner of the earlier trade mark must have acquiesced in the use in the UK of the later mark for a continuous period of five years. Therefore, acquiescence in the registration of a later mark is not a defence under s 48(1). Cancellation proceedings relate to the registration of a mark, not its use. A declaration that the registration of a later mark is invalid has no impact at all on the use of that mark and the owner is free to continue to use it: registration does not confer a positive right to use a mark, but rather an exclusionary right to prevent others from using it. Therefore, if the owner of an earlier mark wants to prevent use of the later mark, they must oppose that use, i.e. take action to enforce the rights conferred by the earlier mark to prevent infringement.

Arnold LJ considered the wording of s48(1), and whether the use in the relevant five-year period had to be continuous and concluded that it did not, saying that such a test would be unworkable. He held instead that there must be continued, but not necessarily continuous, use of the later trade mark throughout the five-year period. and it must be infringing use (rather than genuine use, as Combe argued). In this case, it was clear that the use in question had been both continuous and infringing.

However, Arnold LJ agreed with the judge’s reasoning regarding Combe’s awareness of the use of the later mark for five years, finding that acquiescence requires the awareness of the use to be continued awareness.

That did not mean that the proprietor could say that it had ceased to be aware of the use merely because of the passage of time, or that it could turn a blind eye to the question of whether the use was continuing. But if the proprietor genuinely and reasonably believes that the use had ceased for a significant period of time, then he did not consider that the proprietor could be said to be acquiescing in or tolerating the use during that period.

Therefore, if the owner of the earlier mark genuinely and reasonably believes that the use has ceased for a significant period, then they cannot be said to be acquiescing in the use during that period. In this case, Combe was not aware of the use of VAGISAN for a long period during 2015 and 2016 despite keeping a watch for such use. In those circumstances, Arnold LJ said, it was reasonable for Combe to assume that Dr Wolff had withdrawn from the UK market. Therefore, Combe could not be said to have acquiesced in the use that occurred during that period. Accordingly, the appeal in respect of s 48(1) was dismissed.

Section 11(1) — invalidity of later mark

As originally enacted, s 11(1) of the 1994 Act provided as follows:

“A registered trade mark is not infringed by the use of another registered trade mark in relation to goods or services for which the latter is registered (but see section 47(6) (effect of declaration of invalidity of registration))”.

With effect from 14 January 2019, s 11(1) was amended by regulation 12(2) of the Trade Marks Regulations 2018 to provide:

“A registered trade mark is not infringed by the use of a later registered trade mark where that later registered trade mark would not be declared invalid pursuant to … section 48(1)”.

[Or put the other way round, if there is no acquiescence, the non-acquiescing claimant can invalidate the defendant’s later mark and the defendant can infringe the claimant’s party’s mark.]

The judge had only considered the amended version of s 11(1) because that was all he was asked to consider. He had rejected Dr Wolff’s defence on the ground that because there had been no acquiescence by Combe in the use of the Wolff EUTM in the UK the Wolff EUTM could not be a trade mark that would not be declared invalid pursuant to s 48(1).

Dr Wolff argued that the judge had wrongly pre-judged the validity of the Wolff EUTM, and hence the cloned Wolf UKTM, because he had not considered the consequences should Dr Wolff succeed in an appeal to the General Court against the Cancellation Division’s decision that the Wolff EUTM was invalid.

Arnold LJ said that even if Dr Wolff succeeded on an appeal to the General Court, meaning that the Wolff UKTM would not be declared invalid, that outcome would not be “pursuant to …. Section 48(1)” as required by s 11(1)Therefore, Arnold LJ concluded that it did not matter whether Dr Wolff’s appeal to the General Court was successful and Dr Wolff’s appeal under the amended version of s 11(1) was dismissed.

However, Dr Wolff also argued that it had a defence under the original version of s 11(1) in respect of the period before 14 January 2019. Combe conceded this point, meaning that the appeal on this aspect was allowed.

DR WOLFF’S VAGISAN — likelihood of confusion

Dr Wolff alleged that the judge had been wrong in principle in six respects. Arnold LJ rejected all six arguments, finding that the judge was entitled to have found as he did. For example, Dr Wolff said that the judge had not had proper regard to the DR WOLFF element of the composite Sign. Arnold LJ disagreed, stating that the judge had been entitled to find that the VAGISAN element of the Sign retained an independent distinctive role and that, the DR WOLFF was not a known house mark so that that element did not eliminate the likelihood of confusion arising from the independent distinctive role of the VAGISAN element. The appeal on this aspect was therefore also dismissed. (Combe International LLC v Dr August Wolff GmbH & Co KG Arzneimittel [2022] EWCA Civ 1562 (30 November 2022) — to read the judgment in full, click here).