Combe International Ltd v Dr August Wolff GmbH & Co. KG Arzneimittel  FCAFC 8 (11 February 2021)
Successful appeal by Combe from the judgement of Stewart J finding VAGISAN was deceptively similar to VAGISIL and resulting in refusal of Wolff’s VAGISAN trade mark application.
The VAGISAN trade mark application was filed on 27 May 2015 for various personal care products in classes 3 and 5. The Registrar upheld Combe’s opposition under s60 based on the reputation of its VAGISIL trade mark which was also the subject of trade mark registrations with an earlier priority date.
Wolf successfully appealed to a single judge of the Federal Court with Stewart J overturning the Registrar’s decision.
Both parties are in the feminine hygiene products market and it was accepted that Vag is a slang word meaning vagina or vulva and other traders use the prefix “vag-“ in the names of feminine hygiene products.
Stewart J found that Combe had not established any ground of opposition under ss 44, 59 or 60 of the Trade Marks Act.
Under s44, Wolff admitted its class 3 goods were similar to those covered by the prior VAGISIL registrations, but argued its class 5 goods were highly specialised and not similar to those of the VAGISIL registrations. Wolff’s class 5 goods were “Pharmaceutical products, sanitary products for medical purposes; dietetic substances for medical purposes, all aforementioned goods not for the indication and application of tired legs and/or arms”. Combe’s VAGISIL registrations covered “medicated lotions and medicated creams”, “medicated products for feminine use”.
Stewart J had no hesitation in finding that Wolff’s “Pharmaceutical products, sanitary products for medical purposes” were similar to the VAGISIL registered goods. His Honour found it unnecessary to decide whether Wolff’s remaining claim to “dietetic substances for medical purposes” were also similar to the VAGISIL registered goods because his earlier finding meant that it would be incorrect to carve out the remaining more limited category of dietetic substances. The reason for this is that there is no separate application for registration of the VAGISAN mark for this category of goods as a separate category. There is one application covering registration of the mark for all the goods that have been specified. His Honour referred to Apple v Registrar of Trade Marks  FCA 1304; 109 IPR 187 at  per Yates J.
However, Stewart J found that VAGISAN was not deceptively similar to the registered VAGISIL mark and so the s44 ground failed. Both are single words with the same prefix, but they do not have a close phonetic resemblance and neither of the words lends itself to mispronunciation. Moreover, whilst the words only differ in the last letters, both words are invented words and the suffixes SIL and SAN are quite distinct.
His Honour noted the comparison between the respective marks needs to be made in the context of all the goods for which registration is being sought and should not be confined to those of immediate commercial interest. In any event, even allowing for the high volume – low value nature of feminine hygiene products, his Honour was dismissive of Combe’s contention that many women seek to purchase such products discreetly and quickly, without intervention from sales staff. His Honour considered “the proposition that a woman is likely to pay little attention to the particulars of any product that she might put in her vagina or on her vaginal area inherently lacks credibility.”
His Honour accepted Wolff’s evidence as to the state of the Trade Marks Register and sales of small quantities of feminine hygiene products by others under the names VAGICARE, VAGITEST and ECOVAG to be in support of the word or prefix VAG or the prefix VAGI- being likely to be understood by the ordinary consumer to be references to the vagina and descriptive.
Under s60, his Honour observed that reputation needs to be amongst a significant or substantial number of people or potential consumers, and an evaluation of the sufficiency of the reputation necessarily calls for consideration of the nature of the goods which the marks distinguish. Whether the reputation is significant or substantial will depend on the nature of the goods that are the subject of the VAGISAN application and the class of consumers of those goods. The relevant market is the potential customers of the VAGISAN goods.
Stewart J admitted evidence from Combe with schedules containing spreadsheets of total sales of VAGISIL products and consumption data for feminine hygiene products for the period 2013-2017. These spreadsheets were compiled from data provided by IRi Australia as part of a subscription service. The underlying data was accepted as a business record, but Wolf objected as to the admissibility of the schedules because they involved a compilation of this data. His Honour was satisfied the schedules were documents produced by use of software to access the data provided by IRi Australia under s48 of the Evidence Act and admissible as business records under the hearsay exception.
Stewart J also admitted survey evidence from both parties as business records despite objection. His honour concluded: “They were commissioned for the purpose of the business of the owner of the brand in each case, with the intention that they would be relied on in various ways including in devising advertising campaigns and, possibly, in developing and marketing products. Whilst they do not record the activities of the business, they are records produced for the purpose of those activities. They were intended to be relied upon by the business, and there is no reason to suppose that the hearsay statements recorded in the report are other than accurate.”
The VAGISIL brand had been used by Combe in Australia since 1968 with its feminine hygiene products being sold through many supermarkets and pharmacies. Although the market share was small, Stewart J was satisfied Combe had established an Australian reputation as at the 27 May 2015 priority date. However, this reputation was attributable to use of Vagisil with a stylised V Design as shown below:
His Honour considered the V Design in this composite mark to be a particularly distinctive element which clearly distinguished this composite mark from the VAGISAN mark.
Consequently, Stewart J found that Combe had not established that because of the reputation of its VAGISIL marks a significant or substantial number of potential consumers might be confused or deceived by the VAGISAN mark such as to wonder whether there is any connection between it and VAGISIL. Hence, the s60 ground of opposition also failed.
Finally, the s59 intention to use ground failed as well. Stewart J found that Combe failed to establish that Wolff did not, as at the 27 May 2015 filing date, have the requisite intention to use the VAGISAN mark for the claimed goods in classes 3 and 5. Combe argued that Wolff’s products were directed to a particular part of the body, but his Honour observed that is not necessary for Wolff to have the intention to use this mark in respect of every type of product which might come within the particular terms or descriptions of goods.
Full Federal Court appeal
Mckerracher, Gleeson and Burley JJ granted leave for Combe to appeal and allowed the appeal under s44 of the Trade Marks Act resulting in refusal of Wolff’s VAGISAN trade mark application.
On the issue of deceptive similarity of VAGISAN to VAGISIL, the Full Court disagreed with the approach of the primary judge in discounting the presence of VAGI- in each mark based on descriptiveness of this element. The authorities do not say that where there is a common descriptive element in marks that component is to be ignored for the purposes of comparison. It was noted that consumers may consider VAG or VAGI to be a reference to the vagina and that is a potent “idea” that sits in common for both VAGISAN and VAGISIL. Where there are visual or other features in common, commonality of idea might then tip the balance in favour of a finding that the likeness is deceptive and the primary judge ought to have considered the common idea to be a factor in favour of a finding of deceptive similarity, particularly as the respective goods were not confined to those for use on the vagina. Further, even if the goods in respect of which registration is sought were to be confined to feminine hygiene products, the conclusion as to deceptive similarity reached by the primary judge was not correct as a matter of evaluation.
The Full Court observed, at paragraph 76,
“While it was not impermissible to consider the different elements of the VAGISAN and VAGISIL marks, including whether those elements were descriptive, his Honour’s analysis appears to have led the primary judge to assign less significance to the common VAG, VAGI or VAGIS element of the two marks than was appropriate having regard to the association with the word “vagina”. Where, as here, the dominant aspect of the VAGISIL mark is the first five letters, in our view that is also the part of the mark that the consumer is likely to recall. Indeed, the consumer is more likely to recall the VAG or VAGI component because it carries connotations as a reference to the vagina or the vulva and is a word that represents a topic regarded with some awkwardness amongst consumers. Having noted the central idea conveyed by VAG or VAGI, the primary judge did not consider whether that part of the mark was more likely to be fixed in the consumer’s mind than the whole of the VAGISIL mark. In our assessment, that was an important consideration because, to the extent that VAG or VAGI is associated with vaginas, this is likely to be a striking feature of the trade marks for consumers who are relatively unused to the mention of that intimate and internal female body part in public discourse.”
Further, at paragraph 77:
Widespread discomfort around the discussion of female genitalia is reflected in the euphemistic description of the relevant products as “feminine healthcare” and “feminine hygiene”. It is most likely that the consumer would take away a recollection that there is a trade mark for “VAG, VAGI or VAGIS something” and not have a clear recollection of the final letters in the word. In so doing, in our view when they come across VAGISAN, they are less likely to recall the final two letters of VAGISIL, and will be caused to wonder whether they are goods produced by or associated with the same trader.
Given the finding on s44, it was unnecessary for the Full Court to consider the s60 ground of appeal.