COMBE INTERNATIONAL LLC v DR AUGUST WOLFF GMBH & CO. KG ARZNEIMITTEL

Infringement under section 10(2)(b) of the Trade Marks Act 1994 requires a likelihood that the average consumer will believe that the goods originate from the same or economically linked undertakings. The assessment is global and must reflect the real purchasing context, including the consumer’s likely degree of attentiveness. An invented sign may retain distinctive character as a whole even where part of it suggests the goods’ purpose. A statutory acquiescence period is interrupted by invalidity proceedings directed at the later registration. Honest concurrent use requires sufficiently long, honest coexistence without exacerbating confusion. Adding a house or personal name to a similar sign does not remove confusion where the earlier mark retains an independent distinctive role.

Combe alleged that Wolff and Acdoco infringed its registered VAGISIL marks by marketing intimate healthcare products under VAGISAN and later DR WOLFF’S VAGISAN. The principal claim was under section 10(2)(b) of the Trade Marks Act 1994. The defendants relied on statutory acquiescence, the descriptive-use defence, the later-registration defence and honest concurrent use. They also sought declarations concerning the rebranded sign and partial revocation of two VAGISIL registrations. The central issues were likelihood of confusion, the effect of actual confusion, whether the acquiescence period had run, and whether the composite rebranded sign avoided infringement.

1. Infringement. The claim under section 10(2)(b) of the Trade Marks Act 1994 succeeded. The six conditions identified in Comic Enterprises v 20th Century Fox [2016] FSR 30 were relevant, and the real dispute concerned likelihood of confusion. The VAGISIL marks and VAGISAN were highly visually and aurally similar, and the goods fell within the registered specifications.
2. Average consumer and global assessment. The average consumer was a woman over 18 seeking treatment for an intimate condition. She was likely to feel embarrassed, make a speedy purchase, conduct only limited internet research and display attentiveness towards the lower end of the spectrum. The assessment had to consider all relevant circumstances and the sign in its context, consistently with Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] FSR 19 and Interflora Inc v Marks & Spencer PLC [2015] ETMR 5.
3. Distinctiveness and confusion. Although VAGI or VAGIS suggested vaginal products, consumers were not shown to have encountered those elements as common signposting terms. By 2013 the VAGISIL marks had acquired enhanced distinctiveness through longstanding use, sales and marketing. The overall similarity, the goods, the consumer context and the evidence of actual confusion established a likelihood that the goods came from the same or linked undertakings.
4. Acquiescence. The section 48 defence failed. Combe’s EUIPO invalidity proceedings interrupted the limitation period because they challenged the existence of the later registration and were inconsistent with the passivity required for acquiescence. In any event, the surrounding correspondence showed a continuing objection to coexistence in the United Kingdom. Wolff also failed to prove five years of continuous commercial use of VAGISAN, or Combe’s relevant awareness of such use.
5. Other defences. Section 11(2)(b) did not apply to the overall invented sign VAGISAN merely because VAGI could be said to suggest the goods’ purpose. The use was also not in accordance with honest practices. The section 11(1) defence stood or fell with the rejected acquiescence defence. Honest concurrent use was not established because coexistence was neither sufficiently long nor honest, and Wolff’s conduct exacerbated confusion.
6. DR WOLFF’S VAGISAN and counterclaims. The addition of DR WOLFF’S did not eliminate confusion. VAGISAN retained an independent distinctive role and remained the product-focused element of the composite sign. The declarations of non-infringement were refused. The counterclaims were dismissed except that the specifications of the 127 and 935 marks were amended to add that the goods were for female intimate healthcare.