Combe International LLC (A company incorporated under the laws of the State of Delaware, USA) v Dr August Wolff GmbH & Company KG Arzneimittel (A company incorporated under the laws of Germany)
| Jurisdiction | England & Wales |
| Judge | Mr Justice Adam Johnson |
| Judgment Date | 10 December 2021 |
| Neutral Citation | [2021] EWHC 3347 (Ch) |
| Docket Number | Case No: IL-2019-000117 |
| Court | Chancery Division |
[2021] EWHC 3347 (Ch)
Mr Justice Adam Johnson
Case No: IL-2019-000117
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND & WALES
INTELLECTUAL PROPERTY LIST (Ch D)
7 Rolls Buildings
Fetter lane, London
EC 4A 1NL
Mark Vanhegan QC and Theo Barclay (instructed by STOBBS IP LIMITED) for the Claimants
Simon Malynicz QC and Ashton Chantrielle (instructed by LEWIS SILKIN LLP) for the Defendants
Hearing dates: 12, 13, 14, 15 and 19 July 2021
Approved Judgment
I direct that no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
CONTENTS
| Paragraph | |
| Introduction | 1 |
| The Witnesses | 5 |
| The Claimants' Witnesses | 5 |
| The Defendants' Witnesses | 9 |
| Overview and Background | 14 |
| The Issues | 34 |
| The Claim and the Defences | 34 |
| The Defendants' Counterclaims | 40 |
| Section 10(2)(b) TMA 1994 | 42 |
| Relevant Principles | 43 |
| Date of Assessment | 48 |
| Risk of Confusion and Actual Confusion | 52 |
| Risk of Confusion | 57 |
| The Average Consumer | 57 |
| Similarity of Marks and Sign | 81 |
| Are the VAGISAN goods within the classes for which the VAGISIL marks are registered? | 82 |
| Distinctiveness | 86 |
| Risk of Confusion: Summary | 106 |
| Actual Confusion | 112 |
| Overview | 112 |
| Instances of Alleged Confusion relied on | 118 |
| Actual Confusion: Discussion and Conclusion | 144 |
| The Defences | 170 |
| Acquiescence | 170 |
| The Issue | 170 |
| Some Key Facts | 176 |
| Acquiescence: Discussion and Conclusions | 184 |
| TMA section 11(2)(b) | 255 |
| Section 11(1) | 265 |
| Honest Concurrent Use | 270 |
| The Counterclaims | 273 |
| Declarations: Dr Wolff's VAGISAN | 273 |
| The Claims | 273 |
| Discussion and Analysis | 280 |
| Partial Revocation of the 127 and 935 Marks | 293 |
| Overall Conclusions | 298 |
Introduction
The Claimants rely on the following UK registered trademarks for the word mark “VAGISIL”, which are registered in the name of the First Claimant and used by the Second Claimant under licence:
| Number | Word | Date of entry in register | Class of goods |
| UK 1046858 (“ the 858 mark”) | VAGISIL | 21 May 1975 | Class 5: “ Medicated, deodorising and sanitary preparations and substances all for vaginal use”. |
| UK 1235127 (“ the 127 mark”) | VAGISIL | 6 February 1985 | Class 3: “ Nonmedicated Toilet preparations; soaps; deodorants for personal use; anti-perspirants; non-medicated preparations for the care of the skin and body; talcum powder for toilet use and cosmetic powders for the body” |
| UK 2414935 (“ the 935 mark”) | VAGISIL | 25 August 2006 | Class 5 “ Medicated, pharmaceutical and sanitary preparations and substances; sanitary napkins, towels, towelletes, pads, tampons, panties and panty-liners, all for hygienic purposes; wipes, tissues and towelletes impregnated with pharmaceutical lotions; medicated feminine hygiene wipes”. |
The Claimants complain about the Defendants' placing on the market and sale in the UK of the following goods under the sign “VAGISAN”:
| Product name | Packaging | Date of introduction to the market |
| Vagisan Moist Cream |  | c. February 2013 |
| Vagisan Intimate Wash Lotion |  | c. January 2019 |
| Vagisan MoistCream Cremolum |  | c. February 2020 |
| Vagisan Protective Ointment |  | c. February 2020 |
The Claimants allege infringement under section 10(2)(b) Trade Marks Act 1994 (“ TMA”). The Defendants deny any infringement, and in any event say they are entitled to rely on various defences. They also advance Counterclaims, including a claim for a declaration that their re-branded sign, “DR WOLFF's VAGISAN” does not infringe the Claimants' marks.
I will say more about the resultant issues at [34]–[41] below. First, however, I will say something about the parties' evidence at trial, and will set the scene with some brief background.
The Witnesses
The Claimants' Witnesses
The Claimants relied on evidence from Ms Clare Want and Mr Anthony Santini.
Ms Want is the managing director of the Second Claimant, responsible for the VAGISIL brand.
Mr Santini has been the General Counsel of the First Claimant since 2012, and gave evidence about Combe's relationship over time with Wolff and the issues that has given rise to.
I am satisfied that both Ms Want and Mr Santini were honest witnesses who gave their evidence straightforwardly to the Court.
The Defendants' Witnesses
The Defendants relied on evidence from Ms Angela Theveβen, Mr Mohammed Safi Ghauri, Mr Stuart Bowman and Mr Antony Craggs.
Ms Theveβen was the Defendants' main witness. Ms Theveβen has been responsible for marketing VAGISAN products in the UK since late 2016. She was an experienced witness, who has given evidence in related proceedings in other jurisdictions, including the United States. Perhaps because of this, and because of a concern that she might give away points which would count against the Defendants, she was rather guarded in her evidence. Most critically, it became apparent during her oral evidence that she had a very narrow view of what might qualify as evidence of confusion as between VAGISAN and VAGISIL, which for her meant only evidence of “ a real customer going into a shop and buying the wrong product.”
As I will explain further below at [154]–[159], that seems to me to be altogether too narrow a view of what legitimately amounts to confusion for the purposes of this case. Unfortunately, that view led to Ms Theveβen adopting an entirely blinkered attitude to the accumulating evidence of confusion which she was presented with during the period 2017 to 2019. In her oral evidence, she was quite unwilling to attach any weight at all to such materials and effectively dismissed them. It seems to me that I therefore need to treat Ms Theveβen's evidence on the topic of confusion with some caution.
Mr Ghauri and Mr Bowman were trade witnesses. Mr Ghauri is a category manager at LloydsPharmacy. Mr Bowman is a pharmacist in a small chain of independent pharmacies in the North East of England. They both gave their evidence straightforwardly and honestly.
Mr Craggs is the Defendants' solicitor. He gave evidence principally as to the results of researches conducted by members of his firm into the use of the phrases VAG or VAGI as signposting devices (see below at [88]–[100]). Mr Cragg's evidence was admitted without him being called for cross-examination.
Overview and Background
The First Claimant (“ Combe US”) has marketed and sold non-prescription female intimate healthcare products in various parts of the world since the early 1970s under the VAGISIL mark. The Second Claimant (“ Combe UK”) is a wholly owned subsidiary of Combe and is its distributor in the UK. Where appropriate I will refer to the Claimants collectively as “ Combe”.
VAGISIL was first introduced into the UK market in 1984. The first product introduced into the market was VAGISIL Medicated Crème, which provides fast relief from itching, burning and irritation.
The First Defendant (“ Wolff”) is a German pharmaceutical company. Among other products, two of its main offerings are Alpecin and Plantur caffeinated shampoos. By the early 2000s, it had another product in its stable, namely VAGISAN Moist Cream, whose purpose is to relieve “ the symptoms of vaginal dryness (feeing of dryness, stinging, itching, minor lesions and pain during intercourse)”.
VAGISAN was originally launched in Germany, but Wolff was keen to expand into other markets. In February 2012, Wolff applied for an international trade mark designating the EU and US for the word mark VAGISAN in classes 3 and 5. Of course, by then, the Claimants already had the benefit of their UK registered marks.
The IREU, No. 0985168, was granted protection on 4 December 2012. When the IR came to the attention of Combe, it opposed the US designation of the IR. That prompted negotiations between the parties relating to the registration and use of the VAGISAN and VAGISIL names in different parts of the world, including the UK. These discussions included correspondence from Combe's German trade mark attorneys, Prinz & Partner, during the period 2014–2015, as to possible arrangements which might permit co-existence of the rival marks in at least some territories, although Combe adopted the position that their “ major markets” were to be off limits.
The negotiations continued until early 2015. I will need to say more about them below. In the end, no settlement was reached, and that has resulted, since 2015, in ongoing proceedings between Combe and Wolff in a number of jurisdictions, including Australia, New Zealand, Singapore and the EU.
Returning to the chronology, Wolff introduced VAGISAN Moist Cream in the UK in February 2013, using a company called M&A Pharmachem Ltd as distributor.
Sales of VAGISAN were relatively low – taking Wolff's own figures, 9,838 units were sold in 2013 and 7,439 units in 2014. Although initially money was spent on advertising, that stopped after about May 2014 and did not resume until December 2016. There is an issue between the parties as to the significance of the limited sales of VAGISAN products in the period 2014–2016, and I will have to come back to that later. At any rate, it is clear that although Combe UK kept an eye on VAGISAN during this...
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