Combe International Ltd v Dr August Wolff GmbH & Company KG Arzneimittel

• Jurisdiction: Singapore
• Judge: Lee Seiu Kin J
• Judgment Date: 07 April 2022
• Docket Number: Tribunal Appeal No 22 of 2021
• Court: High Court (Singapore)

Combe International Ltd

and

Dr August Wolff GmbH & Co KG Arzneimittel

[2022] SGHC 78

Lee Seiu Kin J

Tribunal Appeal No 22 of 2021

General Division of the High Court

Intellectual Property — Trade marks and trade names — Registration criteria — Conflicts with earlier marks — Applicant seeking registration of trade mark in respect of intimate care products — Whether there were grounds for opposition under s 8(2)(b) Trade Marks Act (Cap 332, 2005 Rev Ed) — Section 8(2)(b) Trade Marks Act (Cap 332, 2005 Rev Ed)

Intellectual Property — Trade marks and trade names — Registration criteria — Conflicts with earlier marks — Applicant seeking registration of trade mark in respect of intimate care products — Whether there were grounds for opposition under s 8(7)(a) Trade Marks Act (Cap 332, 2005 Rev Ed) — Section 8(7)(a) Trade Marks Act (Cap 332, 2005 Rev Ed)

Held, dismissing the appeal:

(1) In ascertaining whether the marks were similar, the court looked at three aspects: visual, aural and conceptual similarities. While the assessment of distinctiveness was not a separate step in assessing mark similarity, the court first considered whether “Dr Wolff's” could be considered a distinctive component of the Application Mark for two reasons. First, this was because the main contention between parties was whether the addition of “Dr Wolff's” by Dr August Wolff rendered the Application Mark sufficiently dissimilar from Combe's VAGISIL mark such that there was no likelihood of confusion. Second, the question of distinctiveness was a common thread in assessing the visual, aural and conceptual similarities of the marks: at [17] and [22].

(2) Where distinctiveness in the non-technical sense was concerned (ie, what was outstanding and memorable about the mark), “Dr Wolff's” was as distinctive as “VAGISAN” as both would capture and draw the consumer's attention. Where distinctiveness in the technical sense was concerned (ie, the ability of a trade mark to function as a badge of origin), “Dr Wolff's” was as distinctive as “VAGISAN”. While “Dr Wolff's” might have alluded to the fact that the products were endorsed by a medical professional, on its own, it carried no meaning: at [27] to [30] and [42].

(3) The marks were visually dissimilar because of the added distinctive component, “Dr Wolff's” as well as the length and structure of the marks. The marks were aurally dissimilar as the average consumer would likely pronounce the Application Mark as “Dr Wolff's VAGISAN”. Further, both marks did not have many syllables in common due to the addition of “Dr Wolff's”. The marks were also conceptually dissimilar. The idea behind the Application Mark was that there was a medical professional, specifically a Dr Wolff, who either created, owned or endorsed the product named “VAGISAN”. Combe's VAGISIL mark was therefore dissimilar to the Application Mark: at [50], [53] to [56], [61] and [63].

(4) In ascertaining whether there was a likelihood of confusion, it was important to take into account who the actual or potential purchasers of the goods were. Given that the products in question were intimate feminine care products, the average consumer would be women. Absent any evidence demonstrating consumer habits when it came to purchasing intimate care products, it was common sensical that women would pay more attention when purchasing such products. Consequently, there was no likelihood of confusion: at [66], [68], [78] and [79].

(5) Section 8(7)(a) of the TMA provided that a trade mark should not be registered if, or to the extent that, its use in Singapore was liable to be prevented by any rule of law, which in this case, was the law of passing off. To establish an action in passing off, it had to be shown that there was goodwill, misrepresentation and damage to goodwill. The test for misrepresentation under passing off was largely similar to the likelihood of confusion inquiry under s 8(2)(b) of the TMA. There was, however, a difference in the sort of factors that the court could take into account when considering whether there has been misrepresentation under passing off, and whether there was a likelihood of confusion – the rationale for this difference was apparent when one looked at the respective interests protected by the tort of passing off and trade marks. In the present case, given that there was no likelihood of confusion, the element of misrepresentation was not established. Consequently, the ground of opposition under s 8(7)(a) failed: at [80] and [82] to [86].

Case(s) referred to

Beats Electronics, LLC v LG Electronics Inc [2016] SGIPOS 8 (refd)

Ceramiche Caesar SpA v Caesarstone Sdot-Yam Ltd [2017] 2 SLR 308 (folld)

Combe International LLC v Dr August Wolff GmbH & Co KG Arzneimittel [2021] EWHC 3347 (Ch) (refd)

Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] SGIPOS 10 (refd)

Courts (Singapore) Pte Ltd v Big Box Corp Pte Ltd [2018] 5 SLR 312 (refd)

Digi International Inc v Teraoka Seiko Co, Ltd [2021] SGHC 165 (folld)

Dr August Wolff GmbH & Co KG Arzneimittel v Combe International Ltd [2021] 4 SLR 626 (refd)

Dr Grandel GmbH v SA SPA Monopole Case No R 91/2003-4 (refd)

Dr Grandel GmbH v Gowoonsesang Cosmetics Co Ltd Opposition No B 3 051 772 (refd)

Festina Lotus SA v Romanson Co Ltd [2010] 4 SLR 552 (refd)

Future Enterprises Pte Ltd v McDonald's Corp [2007] 2 SLR(R) 845; [2007] 2 SLR 845 (refd)

Guccio Gucci SpA v Guccitech Industries (Pte Ltd) [2018] SGIPOS 1 (refd)

Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd [2013] 2 SLR 941 (folld)

Ho Soo Fong v Standard Chartered Bank [2007] 2 SLR(R) 181; [2007] 2 SLR 181 (refd)

Louis Vuitton Malletier v Human Horizons Holding (Shanghai) Co, Ltd [2021] SGIPOS 13 (refd)

MediaCorp News Pte Ltd v Astro All Asia Networks plc [2009] 4 SLR(R) 496; [2009] 4 SLR 496 (refd)

Miragan [2001] UKIPO O/414/01 (refd)

Novelty Pte Ltd v Amanresorts Ltd [2009] 3 SLR(R) 216; [2009] 3 SLR 216 (refd)

Polo/Lauren Co, LP, The v Shop In Department Store Pte Ltd [2005] 4 SLR(R) 816; [2005] 4 SLR 816, HC (refd)

Polo/Lauren Co, LP, The v Shop In Department Store Pte Ltd [2006] 2 SLR(R) 690; [2006] 2 SLR 690, CA (folld)

Polo/Lauren Co LP v United States Polo Association [2016] 2 SLR 667 (refd)

Richemont International SA v Goldlion Enterprise (Singapore) Pte Ltd [2006] 1 SLR(R) 401; [2006] 1 SLR 401 (folld)

Sarika Connoisseur Cafe Pte Ltd v Ferrero SpA [2013] 1 SLR 531 (refd)

Scandecor Developments AB v Scandecor Marketing AV [2001] 2 CMLR 30 (refd)

Slazenger & Sons v Feltham & Co (1889) 6 RPC 531 (refd)

Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc [2014] 1 SLR 911 (folld)

Weir Warman Ltd v Research & Development Pty Ltd [2007] 2 SLR(R) 1073; [2007] 2 SLR 1073 (refd)

Facts

This was a continuation of the dispute between Dr August Wolff GmbH & Co KG Arzneimittel (“Dr August Wolff”) and Combe International Ltd (“Combe”) over the use of the VAGISAN and VAGISIL marks. In an earlier decision: Dr August Wolff GmbH & Co KG Arzneimittel v Combe International Ltd[2021] 4 SLR 626, Justice Hoo Sheau Peng had allowed Combe's application to invalidate Dr August Wolff's VAGISAN mark. Subsequently, Dr August Wolff amended their mark to “Dr Wolff's VAGISAN” (“Application Mark”) and applied to register it in respect of Class 3 and Class 5 goods. Combe's opposition of the registration of the new mark on four grounds was dismissed by the IP Adjudicator (“IPA”) for the following reasons. For the first ground of opposition under s 8(2)(b) of the Trade Marks Act (“TMA”), the IPA found that the Application Mark was dissimilar to Combe's VAGISAN mark. For the second and third grounds of opposition under ss 8(4)(b)(i) and 8(4)(b)(ii) of the TMA, the IPA found that Combe's VAGISIL marks were not well known to a relevant sector of the public and that evidence, in the form of inconsistent sales figures showed that the VAGISIL mark had not become well known since the time Dr August Wolff had first attempted to register their VAGISAN mark on 19 March 2012. As for the last ground of opposition under s 8(7)(a) of the TMA, the IPA found that there was unlikely to be passing off as misrepresentation was not established. Combe appealed against the IPA's decision on the first and fourth grounds of opposition.

Legislation referred to

Rules of Court (2006 Rev Ed) O 87 r 4(2)

Rules of Court 2021 O 70 r 4(2)

Trade Marks Act (Cap 332, 2005 Rev Ed) ss 8(2)(b), 8(4)(b)(i), 8(4)(b)(ii), 8(7)(a)

Goh En-Ci Gloria, Soon Jia Ling Amanda, Lim Yong Sheng (Allen & Gledhill LLP) for the plaintiff;

Tang Li Ling Yvonne, Ruby Tham, Edsmond Cheong Qi Yi (Drew & Napier LLC) for the defendant.

7 April 2022

Lee Seiu Kin J:

Introduction

1 When you try your best, but you don't succeed, try, and try again. This was what the defendant in the present case did (the plaintiff is the appellant before me. To avoid confusion in the judgment, I shall continue to refer to the appellant as plaintiff and the respondent as defendant). They first registered the mark “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”) on 19 March 2012. At that time, the plaintiff was the registered owner of four “VAGISIL” marks, T9804752H, T9804751Z, T0813410H, and T1112897J (the “VAGISIL Marks”), three of which claimed goods in either Class 3 or Class 5. The plaintiff successfully applied to the Principal Assistant Registrar (“PAR”) to invalidate the defendant's “VAGISAN” mark. The defendant's appeal against the PAR's decision was dismissed by Hoo Sheau Peng J (“Hoo J”) in Dr August Wolff GmbH & Co KG Arzneimittel v Combe International Ltd[2021] 4 SLR 626 (“Combe International Ltd”).

2 After their initial unsuccessful attempt to keep their “VAGISAN” mark on the register, the defendant revised the mark by adding the...