A surprisingly regular case that arises in trade mark disputes is where competing marks share the same prefix or suffix.  Think SONOVUE v SONOVIST, MOO v MOOVE, TIVO v Vivo. The recent Federal Court decision Dr August Wolff GMBH & Co. KG Arzneimittel (Dr Wolff) v Combe International Ltd (Combe) is one of these classic cases. The matter involved the competing marks VAGISAN and VAGISIL, with the common prefix “VAG-” referred to by the Court as a “slang word used as a noun meaning vagina or vulva”.

The Court found that the two marks are not deceptively similar, in circumstances where the common element is descriptive (VAG-) and the balance of the marks (-SAN and -SIL) are distinctive. The case highlights the difficulty in challenging a trade mark application on the grounds the marks are similar, where the competing marks share a descriptive element and that it is a high hurdle to overcome in order to evidence likely confusion on the part of consumers in these circumstances.

Thomson Geer acted for Dr Wolff in these proceedings.

Background

VAGISAN is a trade mark owned by Dr Wolff in relation to medicated creams used as “feminine hygiene products for the intimate area.” The application covered goods specifying, broadly: Soaps, cosmetics, pharmaceutical products, sanitary products and dietetic substances.

On 27 May 2015, Dr Wolff’s application for registration of the VAGISAN mark in Australia was opposed by Combe, who cited several of its own registered marks involving a combination of the word VAGISIL and a stylised ‘V’ device, similarly covering goods such as “medicated products for feminine use including feminine anti-itch creams and premoistened feminine wipes…”

On 29 September 2017, registration of the VAGISAN mark was refused by the Delegate of the Registrar of Trade Marks under s 60 of the Trade Marks Act 1995 (Cth), on the basis that Combe’s VAGISIL had acquired a reputation in Australia and registration of the VAGISAN mark would deceive or likely cause confusion because of this reputation.

Dr Wolff appealed this decision to the Federal Court of Australia.

Deceptive Similarity

Combe’s initial argument was that registration of VAGISAN should be rejected under s 44(1)(a)(i) of the Trade Marks Act because the VAGISAN mark was deceptively similar to the VAGISIL marks.

The court framed the issue as whether a number of Australian consumers who see or hear the VAGISAN marks used in relation to the VAGISAN goods and who have an imperfect recollection of the VAGISIL marks, and do not have an opportunity to compare the respective marks side-by-side, are at a real risk of being confused. This involves a consideration of whether the consumers are left in doubt as to whether the respective products come from the same source.

His Honour Justice Stewart rejected Combe’s arguments, reasoning that the prefix VAG was a descriptive reference to the vagina (to which the products are intended for) and that the distinctive element of each mark is the following suffix (i.e. the –SAN in VAGISAN and the –SIL in VAGISIL). His Honour noted that –SAN is to be understood as a reference to the concept of sanitariness and therefore implies a connotation of health and cleanliness. On the other hand,–SIL in VAGISIL does not have any particular meaning, and can therefore can be distinguished from the –SAN suffix.

Importantly, his Honour held that:

… where the common element of two marks is descriptive or of limited distinctiveness or in common use in the trade, it should be paid less attention, and greater weight must be given to the additional features of the marks in question …

It is worth noting that evidence of the registration of other marks with the same prefix VAG- and the sales of products with these registrations was accepted as evidence to show that consumers are likely to understand this common prefix is a reference to a part of the body and therefore descriptive.

Reputation and Deceptive Similarity

Combe also asserted under s 60 of the Trade Marks Act that the VAGISIL products:

  • had acquired a reputation in Australia; and
  • the VAGISAN mark would likely deceive/cause confusion as a result of VAGISIL’s reputation.

In other words, s 60 could operate so that opposition to the VAGISAN mark might nonetheless succeed on the grounds of ‘deceptive similarity’ if the reputation of the VAGISIL mark was such that it would likely result in deception/confusion even if the VAGISAN mark was not found to have satisfied the threshold for ‘deceptive similarity’ under s 44(1)(a)(i).

Although the reputation of the VAGISIL products in the non-prescription feminine health care or hygiene market was small in relation to the market size, the Court acknowledged that VAGISIL did indeed have a reputation in Australia after considering the evidence put before it. However, his Honour rejected the notion that this reputation would significantly alter the analysis of deceptive similarity above – in other words, the insufficiency of VAGISIL’s reputation combined with the inherent lack of deceptive similarity between the marks could not likely cause deception/confusion under s 60.

In supporting this reasoning, his Honour noted that the VAGISIL mark is generally always used with the ‘V’ device – as a result, it is the VAGISIL mark in conjunction with the ‘V’ device that has acquired a reputation in Australia, and the combination’s distinctiveness therefore diminishes the likely confusion with the VAGISAN word mark.

Takeaways

It is important to bear in mind that unless a business has a well-established reputation for its mark, descriptive brands carry the risk of limited protection against the registration of competing marks that use similar wording. Using an original mark has far greater prospects of resisting the registration of similar competing marks.

If a company is forced to resort to litigation, section 60 only offers additional and separate protection in limited circumstances where a mark has a significant reputation. Cases will generally turn on whether there is likely confusion on the part of consumers in the marketplace. It will be an uphill battle to demonstrate confusion if a mark is partially descriptive in its origins.

If you wish to discuss any aspect of this article, please contact a member of Thomson Geer’s Intellectual Property team.

Dianne Beer | Special Counsel | +61 2 8248 5816 | [email protected]

Ross Garland | Special Counsel | +61 2 8248 3461 | [email protected]

[1] [2020] FCA 39.