Singapore High Court finds visual and aural similarity in trade marks that contain identical but weak distinctive element

28 May 2021

Dr August Wolff GmbH & Co KG Arzneimittel v Combe International Ltd [2021] SGHC 49

The case of Dr August Wolff GmbH & Co KG Arzneimittel v Combe International Ltd (“Combe HC”) was an appeal to the General Division of the Singapore High Court from the Principal Assistant Registrar’s (“PAR”) decision in Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2020] SGIPOS 3 (“Combe IPOS”).

In Combe IPOS, the PAR granted Combe International Ltd’s (“Combe”) application for a declaration of invalidity of Dr August Wolff GmbH & Co KG Arzneimittel’s (“Dr Wolff”) registration for the mark “VAGISAN”, on the basis that Combe’s earlier mark “VAGISIL” was (a) similar to “VAGISAN” to an above average degree and there was a likelihood of confusion (it was undisputed that the respective marks covered similar goods, i.e. feminine care products), and (b) the use of “VAGISAN” would amount to a misrepresentation and there was a real likelihood of damage to Combe’s goodwill, notwithstanding that the PAR considered that the element “VAGI” was of weak distinctive character in relation to the goods in question.

Dr Wolff appealed the PAR’s decision. In Combe HC, the court dismissed Dr Wolff’s appeal. The court found that the marks were similar to an average degree and that there was a likelihood of confusion. The court also found that use of the VAGISAN mark would amount to misrepresentation that creates a likelihood of confusion and that there was a real likelihood of damage to Combe’s goodwill.

Allen & Gledhill Counsel Gloria Goh and team successfully acted for Combe in both sets of proceedings.

Background

Combe is a global personal care company and its “VAGISIL” brand of feminine care products is one of its key brands. Combe first used the “VAGISIL” mark in Singapore in 1990, and is the registered proprietor of several Singapore trade mark registrations for “VAGISIL” in Classes 3, 5 and 10.

Dr Wolff researches, manufactures and markets dermatological, medicinal and cosmetic products. Dr Wolff conceptualised the “VAGISAN” name to be a portmanteau of the English word “vagina” and the Latin word “sanitas”, which means “health”. Dr Wolff registered the “VAGISAN” mark in Singapore on 19 March 2012.

The parties have been embroiled in trade mark disputes over the registration of “VAGISAN” in several jurisdictions around the world, including Australia, New Zealand, the United States and the European Union.

The court agreed with the PAR’s finding that the prefix “VAGI” was of weak distinctive character, that “VAGISIL” would be understood to denote the intended treatment area of the goods, and that “VAGISIL” as a whole possesses a normal degree of distinctiveness. The court also agreed with the PAR that the prefix “VAGI” was not likely to be perceived as the distinctive and dominant element of the overall impressions conveyed by the marks, and that the respective suffixes of both marks (“SAN” and “SIL”) constituted their distinctive components. In the court’s view, the fact that two out of three letters in the “SIL” and “SAN” components were different did not overshadow the coincidence of five letters (“V”, “A”, “G”, “I” and “S”) in the two marks that comprised only seven letters each. Assessing the marks in terms of their overall visual impressions and as wholes, the court found the marks to be visually similar but only to an average degree, owing to the differences in the distinctive components SAN and SIL.

In relation to aural similarity, the court noted that the “SAN” and “SIL” sounds are striking and simple to pronounce for the relevant public in Singapore, and the “ih” vowel sound in “SIL” and the “ah” vowel sound in “SAN” were acoustically and phonetically distinct. However, the court was equally of the view that the foregoing analysis could not overcome the fact that (a) two out of three syllables were aurally identical, and (b) even within the respective third syllables, the sibilant “s” sound is the same. Taking the effects of slurring, careless pronunciation and imperfect recollection into account, the court was of the view that the marks were aurally similar to an average degree.

The court found six factors supported a finding of a likelihood of confusion:

  1. The marks were similar to an average degree; 
  2. “VAGISIL” had a respectable degree of reputation in Singapore; 
  3. The respective goods were similar; 
  4. Both the “VAGISIL” and “VAGISAN” products targeted the same segment of the market (i.e. females in Singapore); 
  5. The relevant segment of the public would carry in their minds an imperfect recollection of the overall impression of the marks; and 
  6. The products in question were relatively inexpensive.

The court considered two factors which militated against a finding of a likelihood of confusion. First, that the nature of the goods would tend to command a greater degree of fastidiousness and attention on the part of prospective purchasers and second, notwithstanding that intimate care products may be self-service items, when purchased from shops, decisions to buy these items were likely to be made with the assistance of specialists.

On balance, the court found that there existed a likelihood of confusion on the part of the public. Even if some consumers would not regard the marks to be the same, consumers would likely assume the existence of an economic link or connection between the goods bearing the two marks.

In relation to misrepresentation and damage, the court also found that use of the “VAGISAN” mark would amount to a misrepresentation that creates a likelihood of confusion for the same reasons that the court found that there was a likelihood of confusion. Given the parties’ direct competition in the same lines of products, the similarity of the marks, and the existence of a likelihood of confusion, the court found that there was a real likelihood of damage to Combe’s goodwill arising from the diversion of custom if consumers from the relevant segment of the public were led to believe that goods bearing the “VAGISIL” mark were the goods of or were connected or associated with Dr Wolff.

Practical implications

This case underscores the importance of the legal principle that marks must always be assessed as wholes, and descriptive or weakly distinctive or non-dominant elements in a mark may not necessarily be disregarded or discounted in significance in an assessment of marks similarity and the resulting likelihood of confusion. Notwithstanding that the court considered “VAGI” to be of weak distinctive character, the court still arrived at an overall finding of similarity as there was a coincidence of five letters in the two marks that comprised only seven letters each. This case also illustrates that the outcome of a marks similarity (and likelihood of confusion) analysis is largely dependent on the facts of each particular case.