Dr August Wolff GmbH & Company KG Arzneimittel v Combe International Ltd
| Judge | Hoo Sheau Peng J |
| Judgment Date | 25 February 2021 |
| Docket Number | Tribunal Appeal No 8 of 2020 |
| Court | High Court (Singapore) |
[2021] SGHC 49
Hoo Sheau Peng J
Tribunal Appeal No 8 of 2020
General Division of the High Court
Intellectual Property — Trade marks and trade names — Invalidity — “VAGISIL” marks and “VAGISAN” mark for intimate care products — Whether registration of “VAGISAN” mark should be declared invalid on grounds of confusing similarity — Sections 8(2)(b) and 23(3)(a)(i) Trade Marks Act (Cap 332, 2005 Rev Ed)
Intellectual Property — Trade marks and trade names — Invalidity — “VAGISIL” marks and “VAGISAN” mark for intimate care products — Whether registration of “VAGISAN” mark should be declared invalid on grounds of passing off — Sections 8(7)(a) and 23(3)(b) Trade Marks Act (Cap 332, 2005 Rev Ed)
Intellectual Property — Trade marks and trade names — Invalidity — “VAGISIL” marks and “VAGISAN” mark for intimate care products — Whether registration of “VAGISAN” mark should be declared invalid under protection accorded to well-known trade marks — Sections 8(4)(b)(i) and 23(3)(a)(iii) Trade Marks Act (Cap 332, 2005 Rev Ed)
Held, dismissing the appeal:
(1) The analysis under s 8(2)(b) of the Act comprised a “step-by-step” approach. This involved systematically assessing the similarity of the marks, the similarity of the goods or services, and then the likelihood of confusion arising from the two similarities. Only after the court had determined the presence of the first two elements individually could it then ascertain the likelihood of confusion: at [16].
(2) The mark-similarity inquiry was directed at assessing substantive similarity of the contesting marks as a whole. It was a mark-for-mark comparison without consideration of any external matter. While it was not a mechanistic approach, it required consideration of the three aspects of visual, aural and conceptual similarity. The viewpoint was that of the average consumer who exercised some care and a measure of good sense in making purchases but who also had imperfect recollection: at [17].
(3) Integrated into the analysis of visual, aural and conceptual similarity was a consideration of whether the earlier mark was distinctive. The prefix “VAGI” had weak distinctive character and the suffix “SIL” had greater distinctive character. When taken as a whole, the “VAGISIL” marks possessed a normal degree of distinctiveness. A corollary of the finding that the “VAGISIL” marks possessed an overall normal degree of distinctiveness was that the threshold to surmount before the “VAGISAN” mark would be regarded as being dissimilar was a moderate one: at [18], [24] and [25].
(4) The marks were visually similar to an average degree. Due weight had to be accorded to the similarities and differences in the distinctive component(s) of the marks. Here, two out of three letters in the marks' distinctive components – the “SIL” and “SAN” suffixes – were different. However, this was outweighed by the coincidence of five letters in marks that comprised only seven letters. The first letter of the suffixes – the letter “S” – was also the same. When assessed in terms of the overall visual impression and as a whole, the marks were visually similar. But taking into account the different letters in the “SIL” and the “SAN” components, this visual similarity was only to an average degree: at [29] and [30].
(5) The marks were aurally similar to an average degree. In deciding whether to apply the “Quantitative” or the “Dominant” approach, the “Dominant” approach would be more appropriate where the marks comprised of multiple components. Under the “Dominant Approach”, the “VAGI” prefix of both marks possessed weak distinctive character while the respective suffixes possessed strong distinctive character. The “SAN” and “SIL” sounds were striking and simple to pronounce for the relevant public in Singapore. Although the “ih” vowel sound in “SIL” and the “ah” vowel sound in “SAN” were acoustically and phonetically distinct, this could not overcome the fact that: (a) two out of three syllables were aurally identical; and (b) even within the respective third syllables, the sibilant “s” sound was the same. Taking the effects of slurring, careless pronunciation and imperfect recollection in the round, the marks were aurally similar but to an average degree: at [39] to [41].
(6) Given that the marks were visually and aurally similar to an average degree and conceptually neutral, it followed, on balance, that the marks were overall similar to an average degree. It was also not disputed that the goods claimed under the competing marks were similar: at [44] and [45].
(7) There were two aspects to “likelihood of confusion”. The first was where the relevant segment of the public mistook one mark for the other. The second was where the relevant segment of the public perceived that the competing marks were different but nevertheless remained confused as to the origin of the goods: at [47].
(8) There was, on balance, a likelihood of confusion. There were two factors operating against a finding of a likelihood of confusion: (a) the nature of the goods tended to command a greater degree of fastidiousness on the part of prospective purchasers; and (b) decisions to buy intimate care products were often made with the assistance of specialists. However, there were six factors operating in favour of a finding of a likelihood of confusion. First, the marks were similar. Second, the “VAGISIL” marks had a respectable degree of reputation in Singapore. Third, the goods claimed under the marks were similar. Fourth, the relevant segment of the public would carry in their minds an imperfect recollection of the overall impression of the marks. Fifth, the competing products targeted the same segment of the market, namely females in Singapore. Sixth, the products in question were relatively inexpensive and did not invite significant prior due diligence on the part of the relevant segment of the public: at [53] to [55].
(9) With regard to s 8(7)(a) of the Act, the plaintiff's use of the “VAGISAN” mark amounted to a misrepresentation creating a likelihood of confusion. The “V” device did not detract from the distinctiveness of the defendant's “VAGISIL” word marks. It was not complicated and would more likely be perceived as a decorative element rather than an element indicating the source of the goods. For the same reasons relied on to establish a likelihood of confusion in the similarity inquiry, there was a misrepresentation giving rise to a likelihood of confusion: at [68] and [69].
(10) There was a likelihood of damage. Given the parties' direct competition in the market for intimate care products, the similarity of the marks, and the existence of a likelihood of confusion, there was a real likelihood of damage to the defendant's goodwill arising from the diversion of custom if consumers from the relevant segment of the public were led to believe that goods bearing the “VAGISIL” marks were the goods of or were connected or associated with the plaintiff. The registration of the plaintiff's “VAGISAN” mark was therefore contrary to the law of passing off: at [71] to [73].
(11) A finding of mark similarity under s 8(2)(b) of the Act would naturally lead to a finding of mark similarity under s 8(4)(b)(i) of the Act. Consistent with earlier findings on mark similarity, the marks were also similar under the provisions governing the protection of well known trade marks: at [76].
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