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

Acquiescence under section 48(1) of the Trade Marks Act 1994 concerns use, rather than registration, of the later mark. A cancellation action does not interrupt acquiescence because it cannot restrain use. The earlier proprietor must pursue infringement proceedings or another measure capable of producing an equally binding result.

The later mark must have continued, though not necessarily continuous, infringing use throughout five years. The scale required depends on the goods, consumers and whether a vigilant proprietor could be expected to object. The earlier proprietor must remain aware of that use. Genuine and reasonable belief that use has ceased for a significant period prevents acquiescence.

Likelihood of confusion involving a composite sign is assessed globally. An element resembling the earlier mark may retain an independent distinctive role, but that fact does not automatically establish confusion.

Combe owned and licensed UK registrations for VAGISIL covering female intimate healthcare products. The defendants marketed identical goods under VAGISAN and later DR WOLFF’S VAGISAN. Adam Johnson J held in [2021] EWHC 3347 (Ch) that both signs infringed because of a likelihood of confusion.

The defendants appealed, relying on acquiescence under section 48(1) of the Trade Marks Act 1994, the registered-mark defence under section 11(1), and alleged errors in the assessment of DR WOLFF’S VAGISAN. During the appeal Combe conceded that the original section 11(1) protected acts before 14 January 2019. The remaining questions concerned what action interrupts acquiescence, the nature and degree of use and awareness required, the amended section 11(1), and the likelihood of confusion arising from the composite sign.

1. Disposition. The appeal was allowed to the extent of Combe’s concession that the defendants had a section 11(1) defence for acts before 14 January 2019. Subject to that concession, the appeal was dismissed.

2. Section 48(1) distinguishes registration from use. Acquiescence is acquiescence in use of the later registered mark. An invalidity application attacks registration but neither prevents nor remedies infringing use. It therefore does not interrupt acquiescence. The proprietor must bring infringement proceedings or take administrative or other action capable of producing an equally binding restraint on use. A warning or credible threat is insufficient unless followed within a reasonable time by such action: Heitec [EU:C:2022:400] applied. The contrary conclusion in W3 Ltd v easyGroup Ltd [2018] EWHC 7 (Ch) could no longer stand.

3. Section 48(1) requires continued, but not literally continuous, use throughout five successive years. The inquiry is fact-sensitive and takes account of the goods or services and their average consumers. Seasonal or periodic use may suffice. The use need not satisfy the separate genuine-use standard for resisting revocation. It need only be infringing use which a vigilant trade mark proprietor could be expected to oppose. The website use and sales in this case met that standard.

4. Acquiescence nevertheless failed because the earlier proprietor must have continued awareness of the use for five years. Mere passage of time cannot end awareness, and a proprietor cannot turn a blind eye. However, Combe genuinely and reasonably believed for a significant period in 2015 and 2016 that the defendants had withdrawn from the UK market, despite keeping a watching brief. It therefore did not knowingly tolerate the use throughout five years.

5. The original section 11(1) supplied a defence for acts before 14 January 2019, as Combe conceded. The amended provision did not protect later acts. Its wording confines the defence to a later registered mark which would not be declared invalid pursuant to the specified statutory grounds. Treating it as applying whenever the later mark happened not to be invalid would impermissibly rewrite the subsection.

6. The assessment of confusion was a multi-factorial evaluation with which an appellate court could interfere only for legal or principled error. The judge considered DR WOLFF’S VAGISAN as a whole. He was entitled to find that VAGISAN retained an independent distinctive role and remained sufficiently similar to VAGISIL to suggest a common or commercially linked origin. None of the alleged errors justified appellate intervention.

1. Court of Appeal (Civil Division): In [2022] EWCA Civ 1562, allowed the appeal to the extent of the respondents’ concession concerning acts before 14 January 2019, but otherwise dismissed it.
2. High Court, Intellectual Property List: Adam Johnson J held in [2021] EWHC 3347 (Ch) that use of VAGISAN and DR WOLFF’S VAGISAN infringed the respondents’ trade marks and rejected the statutory defences.