Combe International LLC v Dr August Wolff GmbH & Company KG Arzneimittel
| Jurisdiction | England & Wales |
| Judge | Lord Justice Arnold,Lady Justice Simler,Lord Justice Newey |
| Judgment Date | 30 November 2022 |
| Neutral Citation | [2022] EWCA Civ 1562 |
| Docket Number | Case No: CA-2022-000155 |
| Court | Court of Appeal (Civil Division) |
[2022] EWCA Civ 1562
Lord Justice Newey
Lady Justice Simler
and
Lord Justice Arnold
Case No: CA-2022-000155
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE, BUSINESS AND PROPERTY
COURTS OF ENGLAND AND WALES, INTELLECTUAL PROPERTY LIST (ChD)
Mr Justice Adam Johnson
Royal Courts of Justice
Strand, London, WC2A 2LL
Thomas Moody-Stuart KC and Ashton Chantrielle (instructed by Lewis Silkin LP) for the Appellants
Mark Vanhegan KC and Theo Barclay (instructed by Stobbs IP Ltd) for the Respondents
Hearing dates: 9–10 November 2022
Approved Judgment
This judgment was handed down by the Court remotely by circulation to the parties' representatives by email and release to The National Archives. The date and time for hand-down is deemed to be 10:30 on 30 November 2022.
Introduction
In these proceedings the Claimants (“Combe US” and “Combe UK”, collectively “Combe”) are respectively the proprietor and a licensee of three United Kingdom trade mark registrations for the word VAGISIL in respect of female intimate healthcare products (“the Combe Trade Marks”). Combe contend that the Defendants have infringed the Combe Trade Marks by use of the sign VAGISAN in relation to identical goods. The Defendants deny infringement and counterclaim for a declaration of non-infringement in relation to the sign DR WOLFF'S VAGISAN. Adam Johnson J held for the reasons given in his judgment dated 10 December 2021 [2021] EWHC 3347 (Ch) that the Defendants' use of both signs infringed the Combe Trade Marks. By his consequential order dated 20 January 2022 the judge granted Combe relief, including an injunction and an order for delivery up, in respect of both signs; but the injunction and order for delivery up in respect of DR WOLFF'S VAGISAN have been stayed pending the determination of the appeal.
The Defendants appeal on three grounds. First, the Defendants contend that they have a defence to infringement under section 48(1) of the Trade Marks Act 1994 because Combe acquiesced in the use in the UK by the First Defendant (“Dr Wolff”) of a European Union trade mark (“the Wolff EUTM”) owned by Dr Wolff. Secondly, the Defendants contend that they have a defence to infringement under section 11(1) of the 1994 Act by virtue of Dr Wolff's ownership first of the Wolff EUTM prior to 31 December 2020 and secondly of a UK registration deriving from the Wolff EUTM (“the Wolff UKTM”) since 31 December 2020. Thirdly, the Defendants contend that the judge was wrong to hold that their use of the sign DR WOLFF'S VAGISAN gave rise to a likelihood of confusion.
As I will explain, during the hearing of the appeal Combe conceded that the Defendants had a defence under section 11(1) in respect of the period prior to 14 January 2019, but maintained their claim for infringement in respect of the period since then.
The Combe Trade Marks
The Combe Trade Marks are as follows:
i) UK Registered Trade Mark No. 1046858 VAGISIL registered as of 21 May 1975 in respect of “medicated, deodorising and sanitary preparations and substances all for vaginal use” in Class 5.
ii) UK Registered Trade Mark No. 1235127 VAGISIL registered as of 6 February 1985 in respect of “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; all the aforementioned goods for female intimate healthcare” in Class 3.
iii) UK Registered Trade Mark No. 2414935 VAGISIL registered as of 24 February 2006 in respect of “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; all the aforementioned goods for female intimate healthcare” in Class 5.
The underlined words represent a narrowing of the specifications of goods of the second and third registrations as a result of a counterclaim by the Defendants for partial revocation for non-use. This has no bearing on the issues on the appeal, however.
The Wolff EUTM and UKTM
The Wolff EUTM is International Trade Mark Registration (EU) No. 0985168 VAGISAN registered on 4 December 2012 in respect of “soaps, perfumery, essential oils, cosmetics, hair lotions; all the aforementioned goods for personal hygiene in the intimate area, for vaginal dryness and to support the vaginal flora” in Class 3 and “pharmaceutical products, sanitary products for medical purposes; dietetic substances for medical purposes; all the aforementioned goods for personal hygiene in the intimate area, for vaginal dryness and to support the vaginal flora” in Class 5. The underlined words represent a narrowing of the specifications of goods made by Dr Wolff during the course of the cancellation action discussed below. Again, this has no bearing on the issues on the appeal,
The Wolff UKTM (No. 810985168) is a clone of the Wolff EUTM that came into existence automatically on 31 December 2020 as a consequence of Brexit. The Wolff UKTM is deemed to have been registered under the 1994 Act as of the filing date of the Wolff EUTM: see Schedule 2A paragraph 1(1) and (4) of the 1994 Act as applied by Schedule 2B paragraph 1(5) in respect of international trade mark registrations.
As explained in more detail below, Combe US has applied to the European Union Intellectual Property Office for a declaration of invalidity of the Wolff EUTM. If that application is ultimately successful, the Wolff UKTM will also be invalidated: see Schedule 2A paragraph 21A(2) of the 1994 Act. The validity of the Wolff UKTM has not been directly attacked by Combe in these proceedings, however. (On 27 January 2022, the day after the judge's order was sealed, Combe applied to the United Kingdom Intellectual Property Office for a declaration of invalidity of the Wolff UKTM on ( inter alia) the ground of likelihood of confusion with the Combe Trade Marks, but that application has been stayed until 31 January 2023. Dr Wolff contends ( inter alia) that the application is an abuse of process on Henderson v Henderson grounds.)
The facts
There is no challenge by either side to the judge's findings of fact, which can be summarised as follows.
Combe US is an American corporation which has marketed non-prescription female intimate healthcare products in various parts of the world under the trade mark VAGISIL since the early 1970s. Combe UK is a wholly-owned subsidiary of Combe US and its distributor in the UK.
Combe first introduced VAGISIL products into the UK market in 1984. The first product to be launched was VAGISIL Medicated Crème, which provides relief from itching, burning and irritation. Subsequently other products were introduced, such as VAGISIL ProHydrate. In the period from 2008 to 2019 Combe spent between £531,060 and £1,233,418 marketing VAGISIL in the UK, and sales grew in value from over £2.3 million to over £5.3 million.
Dr Wolff is a German company that in the early 2000s developed VAGISAN Moist Cream, whose purpose is to relieve the symptoms of vaginal dryness (feelings of dryness, stinging, itching, minor lesions and pain during intercourse), which is particularly prevalent during the menopause. VAGISAN Moist Cream was first launched in Germany, but subsequently Dr Wolff sought to expand into other markets.
On 10 October 2008 Dr Wolff applied to register the word VAGISAN as an international trade mark in Classes 3 and 5, relying upon an earlier basic registration in Germany. On 18 November 2011 Dr Wolff designated ( inter alia) the EU and the USA as countries in which it wished to protect its international trade mark. Notice of the designation was received by the EUIPO on 2 February 2012, and the Wolff EUTM was granted protection on 4 December 2012.
In February 2013 Dr Wolff launched VAGISAN Moist Cream in the UK using M&A Pharmachem Ltd as its distributor. Dr Wolff spent money advertising the product from May 2013 until about May 2014. Sales were relatively low: 9,838 units of VAGISAN were sold in 2013 and 7,439 units in 2014. From at least 9 July 2014 onwards, Dr Wolff's website located at www.vagisan.com (“the Wolff Website”) advertised VAGISAN to consumers in the UK.
After learning of Dr Wolff's US designation of its international trade mark, Combe US opposed the protection of the international registration in the USA in March 2013.
In late January 2014 Combe discovered that VAGISAN Moist Cream was being offered for sale in some small pharmacies in the UK. Notwithstanding that VAGISAN's presence was so small, Combe UK alerted Combe US's legal team and kept a watching brief on VAGISAN in the UK.
The US opposition proceedings led to negotiations between Combe and Dr Wolff concerning the VAGISIL and VAGISAN trade marks worldwide. In summary:
i) On 29 January 2014 Combe's German attorneys, Prinz & Partner, wrote to Dr Wolff's German attorneys, Loesenbeck, Speck, Dantz, making “basic proposals for a global settlement agreement”. This included a term that Dr Wolff would “refrain from using” VAGISAN in countries including the UK.
ii) On 25 February 2014 Loesenbeck, Speck, Dantz replied expressing the hope that Combe would agree to continue the coexistence of the trade marks which prevailed.
iii) On 10 June 2014 Prinz & Partner responded stating that, while Combe were prepared to negotiate coexistence of the trade marks on specific markets, Combe were not willing to “tolerate the use of” VAGISAN “on their major markets”. The judge held...
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