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High Court finds likelihood of confusion between VAGISIL and VAGISAN brands

Posted on 27 January 2022

The High Court has delivered its ruling in respect of a trade mark dispute (Combe International v Dr Wolff) relating to feminine hygiene products. The Court concluded that Dr Wolff's use of the sign VAGISAN was an infringement of the Claimants' trade mark VAGISIL on the grounds of likelihood of confusion. Dr Wolff had already decided to re-brand to DR WOLFF's VAGISAN but the Court held that would also infringe the Claimants' mark.

Whilst the High Court has refused permission to appeal to the Court of Appeal, the order which would require Dr Wolff to re-brand has been stayed pending the outcome of its intended application to the Court of Appeal for permission.

Notably, considerable evidence of actual consumer confusion between the competing signs was before the Court, which enabled it to come to a decision in favour of the Claimants.

The Court also did not give weight to the Defendants' argument that the term VAGI- was a largely descriptive term that would obviously relate to feminine healthcare products, and instead gave priority to the distinctiveness acquired by the VAGISIL mark through decades of use in the UK. Although the Defendants' products had been on the market in the UK since 2013, the Court also determined that the Claimant having filed an opposition at the EUIPO against the Defendants' trade mark application was sufficient to reject the argument that the Claimants had acquiesced to the use of the VAGISAN sign.

Background

The Claimant group (Combe International) is a major retailer of non-prescription female intimate healthcare products in the UK and worldwide, which are marketed and sold under the brand VAGISIL. The Claimants first registered VAGISIL as a trade mark in the UK in 1975 and Vagisil products have been available on the UK market since 1984.

Dr Wolff is a German pharmaceutical company – well known in particular for its Alpecin and Plantur caffeinated shampoos. In 2012, it applied for an international trade mark designating the EU and US for the word mark VAGISAN. Following an opposition by Combe International, the parties entered into co-existence negotiations. However, they failed to come to a settlement and proceedings were commenced in a number of jurisdictions.

In 2016, Dr Wolff sought to increase its UK presence and Vagisan products began to be sold in Boots stores. It also invested in a television advertising campaign, which (unfortunately for the Defendants) saw an increase in sales of both Vagisan and Vagisil products (described in Court as the 'halo effect').

Although the proceedings relating to the EU designation remain ongoing (with the Defendants currently appealing the cancellation of their VAGISAN EU registration to the EU General Court), the Claimants claimed for infringement in the UK.

Decision

The Defendants conceded that the VAGISIL mark and VAGISAN sign were, visually and aurally, "very, very similar", and the Court also found that they were used in relation to identical goods.

The key issue for the Court to decide was then relatively straightforward; namely, whether the use of VAGISAN gave rise to a likelihood of confusion on the part of the average consumer.

A particular factor for the assessment of a risk of confusion was the characteristics and behaviour of the average consumer. The Claimants argued that the average consumer of female hygiene products (being a woman over 18 seeking to treat her condition) was likely to be both rushed and embarrassed when making a purchase in-store, and therefore prone to brand confusion.

The Defendants argued that, given the nature of the products, the average consumer would likely have undertaken research in advance of entering the store, and could therefore properly be characterised as careful and not prone to confusion. They sought to differentiate between a speedy purchase (in terms of time spent in the store) and a rushed one.

The Court came to a middle-ground on this issue concluding that the average consumer (i) was likely to feel a sense of embarrassment and therefore unlikely to linger longer than necessary; (ii) was unlikely to have consulted a GP beforehand; (iii) was likely to have conducted some internet research in advance; but (iv) overall, the level of attentiveness for such products was likely to be at the lower end of the spectrum within the arena of healthcare products.

The Defendants also argued that the prefix VAGI- was descriptive or a signposting term as to the nature of the product, but the Court dismissed this argument. Irrespective of the possibly indicative nature of VAGI, it was the VAGISIL sign that had to be assessed, and this was not descriptive of the intended purpose or characteristics of the goods.

Following its views on similarity and distinctiveness, and given the evidence available on actual confusion (including evidence on social media and broadcast media such as Gogglebox), the Court concluded that there was a risk of confusion between VAGISIL and VAGISAN.

Comment

Interestingly, the Singaporean Intellectual Property Office came to a different conclusion in relation to the Defendant's rebrand, but this decision was of course not binding on the High Court.

Subject to the outcome of the application for permission to appeal to the Court of Appeal, the Defendants will be required to cease marketing and sales in the UK of all feminine hygiene products under the VAGISAN sign. The Court refused the Defendants' application for a 21-week stay of the injunction to give time to rebrand their goods. This would amount to authorising the Defendants' continued infringement and, on the facts, there was no justification for doing this.

Whilst the choice of the brand VAGISAN was made in Germany in the 1990s, without knowledge of the Claimant and its brand, by the time VAGISAN products were launched in the UK the Defendants were well aware of the VAGISIL mark. The judge suggested they had adopted a 'blinkered unwillingness' after their 2016 re-launch to acknowledge the clear signals as to both the likelihood of confusion, but also in relation to actual ongoing confusion.

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