Case Details
- Citation: [2021] SGIPOS 10
- Court: Intellectual Property Office of Singapore
- Date: 2021-09-17
- Judges: Sheik Umar Bin Mohamed Bagushair
- Plaintiff/Applicant: Combe International Ltd.
- Defendant/Respondent: Dr. August Wolff GmbH & Co. KG Arzneimittel
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Trade Marks Act
- Cases Cited: [2007] SGIPOS 9, [2016] SGIPOS 8, [2017] SGIPOS 7, [2017] SGIPOS 7, [2018] SGIPOS 2, [2020] SGIPOS 3, [2021] SGIPOS 10, [2021] SGIPOS 6
- Judgment Length: 26 pages, 11,399 words
Summary
This case involves a trade mark opposition between Combe International Ltd. ("the Opponent") and Dr. August Wolff GmbH & Co. KG Arzneimittel ("the Applicant"). The Applicant had previously registered the trade mark "VAGISAN" in Singapore, but the Opponent successfully applied to invalidate that registration on the basis of likelihood of confusion with the Opponent's earlier "VAGISIL" mark. The Applicant then applied to register the composite mark "DR. WOLFF'S VAGISAN", which the Opponent has now opposed.
The key issues in this case are whether the Applicant's new composite mark is similar to the Opponent's earlier "VAGISIL" mark, and whether there exists a likelihood of confusion that would prevent the Applicant's mark from being registered. The Hearing Officer had to carefully assess the visual, aural, and conceptual similarities between the marks, as well as consider evidence of the parties' actual use of the marks in the marketplace.
Ultimately, the Hearing Officer found that despite the addition of the "DR. WOLFF'S" element, the Applicant's mark was still similar to the Opponent's "VAGISIL" mark and there remained a likelihood of confusion. The Opponent's opposition was therefore successful, and the Applicant's application to register "DR. WOLFF'S VAGISAN" was refused.
What Were the Facts of This Case?
The Applicant, Dr. August Wolff GmbH & Co. KG Arzneimittel, is part of the Dr. Wolff Group, a family business founded in 1905 and named after its founder Dr. August Wolff. The Applicant researches, manufactures, and markets dermatological, medicinal, and cosmetic products that are distributed in many countries. In 1994, the Applicant conceived the name "VAGISAN" for use in connection with its intimate care products, which first bore the "VAGISAN" mark in 1998. The Applicant registered the "VAGISAN" mark in Singapore on 19 March 2012.
However, the Opponent, Combe International Ltd., which owns the "VAGISIL" mark in Singapore and has been selling intimate care products with that mark since as early as 1989, commenced proceedings to invalidate the Applicant's "VAGISAN" registration. The invalidation action was decided in favor of the Opponent, and the Applicant's appeal against that decision was dismissed by the High Court.
On 25 May 2018, the Applicant applied to register the composite mark "DR. WOLFF'S VAGISAN" in Singapore, covering goods in Classes 3 and 5 related to intimate care products. The Opponent has now opposed this new application.
What Were the Key Legal Issues?
The key legal issues in this case are:
1. Whether the Applicant's "DR. WOLFF'S VAGISAN" mark is similar to the Opponent's earlier registered "VAGISIL" mark, such that there exists a likelihood of confusion under Section 8(2)(b) of the Trade Marks Act.
2. Whether the Applicant's "DR. WOLFF'S VAGISAN" mark should be refused registration under Section 8(4) of the Act, on the basis that it is similar to the Opponent's "VAGISIL" mark and the use of the Applicant's mark would be likely to deceive or cause confusion.
3. Whether the Applicant's "DR. WOLFF'S VAGISAN" mark should be refused registration under Section 8(7)(a) of the Act, on the basis that its use in Singapore is liable to be prevented by the law of passing off.
How Did the Court Analyse the Issues?
In assessing the similarity of the marks under Section 8(2)(b), the Hearing Officer considered the visual, aural, and conceptual similarities between the Applicant's "DR. WOLFF'S VAGISAN" mark and the Opponent's "VAGISIL" mark. The Hearing Officer acknowledged that the addition of the "DR. WOLFF'S" element introduced some visual and aural differences, but found that the dominant and distinctive component of both marks was the "VAGISAN/VAGISIL" element.
The Hearing Officer also considered the Applicant's argument that evidence of actual use of the marks should be taken into account at the marks-similarity stage. However, the Hearing Officer followed the approach in the recent GCIH Trademarks Limited v Hardwood Pte Ltd decision, which held that evidence of use should generally be considered only at the likelihood of confusion stage, not the marks-similarity stage.
Ultimately, the Hearing Officer concluded that the Applicant's "DR. WOLFF'S VAGISAN" mark was similar to the Opponent's "VAGISIL" mark, and there existed a likelihood of confusion that would prevent the Applicant's mark from being registered under Section 8(2)(b).
On the Section 8(4) ground, the Hearing Officer found that the Opponent's "VAGISIL" mark qualified as an earlier trade mark that was well known to the relevant Singapore public. Given the similarity of the marks and the identity/similarity of the goods, the Hearing Officer held that use of the Applicant's mark would be likely to deceive or cause confusion, and therefore the application should be refused under Section 8(4).
Finally, on the Section 8(7)(a) ground of passing off, the Hearing Officer found that the Opponent had established the necessary goodwill in its "VAGISIL" mark, and that use of the similar "DR. WOLFF'S VAGISAN" mark would be liable to be prevented by the law of passing off. This provided an additional basis to refuse the Applicant's application.
What Was the Outcome?
Based on the findings that the Applicant's "DR. WOLFF'S VAGISAN" mark was similar to the Opponent's earlier "VAGISIL" mark, and that there existed a likelihood of confusion, the Hearing Officer upheld the Opponent's opposition and refused the Applicant's application to register the "DR. WOLFF'S VAGISAN" mark.
Why Does This Case Matter?
This case is significant for a few key reasons:
Firstly, it demonstrates the high bar that must be met for an applicant to successfully register a mark that is similar to an earlier well-known mark. Even the addition of a distinctive element like "DR. WOLFF'S" was not enough to overcome the similarity to the Opponent's "VAGISIL" mark and the resulting likelihood of confusion.
Secondly, the case provides helpful guidance on the role of evidence of actual use in the marks-similarity assessment. The Hearing Officer followed the recent GCIH decision in holding that such evidence should generally be considered only at the likelihood of confusion stage, not the marks-similarity stage.
Finally, the case highlights the importance of conducting thorough trademark clearance searches before adopting a new mark, to avoid the risk of costly opposition proceedings down the line. The Applicant's previous unsuccessful attempt to register "VAGISAN" should have prompted a more cautious approach when selecting the "DR. WOLFF'S VAGISAN" mark.
Overall, this case serves as a useful precedent for trademark practitioners in Singapore, reinforcing the principles of marks similarity and likelihood of confusion in the context of intimate care products bearing similar-sounding marks.
Legislation Referenced
Cases Cited
- [2007] SGIPOS 9
- [2016] SGIPOS 8
- [2017] SGIPOS 7
- [2017] SGIPOS 7
- [2018] SGIPOS 2
- [2020] SGIPOS 3
- [2021] SGIPOS 10
- [2021] SGIPOS 6
- [2021] 4 SLR 626
- [2013] 2 SLR 941
Source Documents
This article analyses [2021] SGIPOS 10 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.