This appeal focused on two commonly used defences to a claim of trade mark infringement: adding of the company name, and acquiescence. In the case of the former, adding the alleged infringing company’s name is frequently deployed as a means to distinguish the two marks. However, does this, in fact, mean there is now no likelihood of confusion or even the marks are dissimilar?
As for acquiescence, this is invariably fact sensitive, and relies on the proprietor being aware of the alleged infringing mark’s existence and use. If the proprietor does not act promptly in bringing their claim, the defendant may argue that they have acquiesced and therefore can no longer oppose the defendant’s use of the later mark. The issues frequently faced by a court are: the extent of the evidence the defendant needs to establish the proprietor has acquiesced; and what steps the proprietor needs to have taken to avoid a successful defence of acquiescence.
Written by Lauren Palmer, Legal Assistant at Dehns.
Combe International LLC and anor v Dr August Wolff GmbH & Co. KG Arzneimittel and anor  EWCA Civ 1562
The Claimants (‘Combe’) sold, on a global scale, female intimate hygiene products under the mark VAGISIL. In the UK, goods under that mark were first sold in 1984. Registrations in either classes 5 or 3 were obtained in 1975, 1985 and 2006. The Defendants (‘Dr Wolff’) also sold female hygiene products, under the mark VAGISAN, first in Germany from the early 2000s and thereafter in other markets. In October 2008, Dr Wolff applied for an International Registration (including US and EU designations) for VAGISAN in classes 3 and 5, relying on an earlier German registration. VAGISAN was registered as a EUTM in December 2012. Dr Wolff launched a cream under that mark in the UK in February 2013.
Combe opposed the US VAGISAN designation in 2013. Separately, Dr Wolff stopped advertising its VAGISAN creams in the UK from June 2014, and these were subsequently delisted. Between September 2015 and August 2016 only 498 VAGISAN creams were sold in the UK, and no Google search interest was observed. Combe therefore believed Dr Wolff no longer sold VAGISAN branded products in the UK.
In December 2016, Dr Wolff spent £600,000 on a TV campaign to relaunch VAGISAN in the UK. Sales of both VAGISIL and relaunched VAGISAN products increased, demonstrating genuine confusion amongst consumers.
In 2017, Combe sought cancellation of the VAGISAN EUTM. The Cancellation Division invalidated the mark in 2019, which decision was upheld by the Board of Appeal in 2020. An appeal decision from that is currently outstanding.
On 31 January 2020, Combe served infringement proceedings of its three marks against Dr Wolff in the UK High Court, pursuant to s10(2)(b) Trade Marks Act 1994 (similar marks/identical goods), relying on four instances from Dr Wolff’s website from July 2014 to January 2020. Rebranding commenced from September 2020 to DR WOLFF’S VAGISAN, and Dr Wolff counterclaimed seeking a declaration of non-infringement. At first instance, it was held VAGISAN branded goods had infringed, Combe did not acquiesce despite being aware of the VAGISAN registration and use in the UK from January 2014, and the counterclaim failed as there remained a risk of confusion by use of DR WOLFF’S VAGISAN.
Dr Wolff appealed on three grounds: (a) the s48(1) acquiescence defence; (b) a defence under s11(1) (use of later registered mark does not infringe earlier one); and (c) no risk of confusion by use of DR WOLFF’S VAGISAN.
The defence under s48(1) failed at trial because the first instance judge considered: (1) the EUIPO cancellation action interrupted any period of acquiescence; (2) that action, combined with the earlier correspondence, interrupted the period; (3) the defence was unavailable as Dr Wolff had not continually used the mark for five years; and (4) Combe was unaware of the use between 2015 and 2016.
Having considered carefully and fully the CJEU case law on acquiescence, Arnold LJ disagreed with the first three reasons given by the judge for rejecting this defence. In essence, this was because the proprietor must oppose the use of the mark: opposing the registration is not opposing the use. However, he agreed that Combe did not have the requisite awareness of Dr Wolff’s use during the relevant period, as they had reasonably believed for the period between 2015 to 2016 that Dr Wolff were no longer selling VAGISAN branded goods in the UK. The appeal on acquiescence was dismissed.
A complicating factor relevant to the defence under s11(1) was that the mark relied on was Dr Wolff’s EUTM, which (potentially) might survive the opposition and appeal procedure. However, this was only relevant if Combe had acquiesced, and so Arnold LJ dismissed the appeal.
Finally, Arnold LJ upheld the trial judge’s finding that the DR WOLFF’S VAGISAN mark would give rise to a likelihood of confusion when considered alongside Combe’s VAGISIL mark. Of importance to his decision were his conclusions that: (1) the average consumer may perceive a composite mark as consisting of multiple signs, one or more of which has a distinctive significance independently of the whole; and (2) DR WOLFF, as a house mark, was not well known to the average consumer, but even if it had been, this would not necessarily have avoided the risk of confusion.
There are two important lessons to take away from this appeal. First, writing letters and/or bringing a cancellation action alone will not avoid a proprietor being considered to have acquiesced to the use of the later mark. To be able to ‘stop the clock’ on the five years passing, an action for infringement is required. This follows on from the CJEU decision in Case C-466/20 Heitec AG v Heitech Promotion GmbH making the same point.
The second lesson is that infringement may not be avoided even when the alleged infringing mark is used with a ‘house’ mark.
Arnold LJ did not say that this would never be sufficient, nor did he say that an independently distinctive component would inevitably lead to a likelihood of confusion. What was made clear, however, was that an assessment of all relevant factors will always be required.
All good reasons to ask Dehns for help!