Dr August Wolff GmbH & Company KG Arzneimittel v Combe International Ltd

JurisdictionNew Zealand
CourtHigh Court
JudgeGault J
Judgment Date14 July 2020
Neutral Citation[2020] NZHC 1679
Date14 July 2020
Docket NumberCIV-2018-485-410

[2020] NZHC 1679

IN THE HIGH COURT OF NEW ZEALAND

AUCKLAND REGISTRY

I TE KŌTI MATUA O AOTEAROA

TĀMAKI MAKAURAU ROHE

Gault J

CIV-2018-485-410

UNDER the Trade Marks Act 2002

IN THE MATTER of an appeal from a decision of the Intellectual Property Office of New Zealand

Between
Dr August Wolff GmbH & Co. KG Arzneimittel
Appellant
and
Combe International Limited
Respondent
Appearances:

R C Watts and R H Lockie for the Appellant

K T Glover and A N Birkinshaw for the Respondent

Intellectual Property — appeal against a decision of Assistant Commissioner of Trade Marks directing that the appellant's trade mark application not proceed — whether the appellant's trade mark would be likely to deceive or cause confusion) — similarity — Trade Marks Act 2002

The issues were: whether the VAGISAN mark, if used in a normal and fair manner, would not be reasonably likely to cause deception and confusion amongst a substantial number of persons under s17(1)(a) TMA and whether the VAGISAN mark was similar to the VAGISIL mark, and its use was likely to deceive or confuse under s25(1)(b) TMA.

The court held that the focus of the threshold enquiry was on the reputation (awareness) of Combe's mark in relation to prospective purchasers of the goods to which its mark attached and individuals and entities involved in that trade. Combe had established a reputation in NZ for its VAGISIL word marks in relation to feminine intimate products. That reputation was not characterised as only just over the threshold. Combe had used the mark in NZ since 1994.

Once the opponent had established reputation, the Commissioner next assessed the likelihood of deception and confusion. The onus reverted to the applicant to establish, on the balance of probabilities, that use of its mark was not likely to deceive or cause confusion. Relevant both to s17(1)(a) TMA and s25(1)(b) TMA, likelihood of deception or confusion were alternatives. Confusion was a lower threshold. VAGISIL was a combined word and device mark, with a stylised V device above the stylised word Vagisil. The mark applied for, if used in a normal and fair manner, would not be reasonably likely to cause deception and confusion amongst a substantial number of persons primarily because of Combe's use of the V device, which materially reduced the risk of confusion in terms of s17(1)(a) TMA.

The parties' goods were similar. Under s25(1)(b) TMA, the comparison was the fair and notional use of both marks (rather than Combe's actual use). Even focusing on the suffixes in an overall assessment and acknowledging a reasonable degree of care by customers, some visual and aural similarity remained. For the purposes of s25(1)(b) TMA, Dr Wolff's proposed VAGISAN mark was similar to Combe's VAGISIL trade marks (for the same or similar goods). Considering the close similarity of the goods and the similarity of the word marks, Dr Wolff had fallen short of establishing that its proposed VAGISAN mark was not likely to deceive or confuse.

The Assistant Commissioner's decision in favour of Combe's opposition was upheld based on s25(1)(b) TMA.

JUDGMENT OF Gault J

This judgment was delivered by me on 14 July 2020 at 4:00 pm pursuant to r 11.5 of the High Court Rules 2016.

Registrar/Deputy Registrar

1

Dr August Wolff GmbH & Co. KG Arzneimittel (Dr Wolff) appeals against a decision of Assistant Commissioner of Trade Marks Aldred dated 27 April 2018, 1 directing that Dr Wolff's trade mark application for VAGISAN not proceed to registration due to the successful opposition by Combe International Ltd (Combe) based on its VAGISIL trade marks.

2

The New Zealand proceedings form part of a global dispute between the parties. In some countries, as in New Zealand, Combe has resisted Dr Wolff's use of the name VAGISAN; in others Dr Wolff has resisted Combe's use of the name VAGISIL.

Factual background
3

Dr Wolff is a German company specialising in dermatological and gynaecological preparations and products, described as feminine intimate products. Dr Wolff was founded in 1905 and began marketing its products outside Germany about 1990 and outside Europe in 2007 under the trade mark VAGISAN. It has not yet sold products in New Zealand but plans to do so.

4

Combe is a company based in the United States of America that has traded since 1949. It first used its VAGISIL mark in the USA in 1973 in connection with medicated creams and has subsequently extended the use of that mark to other personal care products for feminine use, including powders, moisturising lubricants, wipes and cleansers/washes. It has used the VAGISIL mark in New Zealand since 1994 in respect of these goods.

5

Combe has various registered trade marks in New Zealand, dating back to 1976. A list of Combe's New Zealand registered trade marks is set out in schedule 1, showing the particular goods specified for each mark within the applicable class of goods. Six of Combe's seven New Zealand registered trade marks are word marks. Mark 959830 is a combined word and device mark, with a stylised V device above the stylised word Vagisil. The goods specified refer variously to female, feminine and/or vaginal use.

6

On 27 May 2015 Dr Wolff requested that its international registration no. 985168 for the trade mark VAGISAN be extended to New Zealand in respect of specified goods in classes 3 and 5 as set out in schedule 2.

7

Combe opposed Dr Wolff's request for extension of protection to New Zealand. Each party filed evidence. At the hearing before the Assistant Commissioner, Combe pursued four grounds of opposition, two of which succeeded: 2

  • (a) Dr Wolff's VAGISAN mark would be likely to deceive or cause confusion pursuant to s 17(1)(a) of the Trade Marks Act 2002 (the Act); and

  • (b) Dr Wolff's VAGISAN mark is similar to Combe's VAGISIL mark that is registered in respect of the same or similar goods, and the use of VAGISAN is likely to deceive or confuse under s 25(1)(b) of the Act.

Approach on appeal
8

This is an appeal under s 170 of the Act. 3 This Court's approach on a general appeal such as this is settled following the Supreme Court's decisions in Austin, Nichols & Co Inc v Stichting Lodestar, 4 which concerned a trade mark appeal, and Kacem v Bashir. 5 The appellate court has the responsibility of considering the merits of the case afresh. 6 The appellate court must be persuaded that the decision is wrong, 7 but the weight it gives to the reasoning of the court below is a matter for the appellate court's assessment. 8 Those exercising general rights of appeal are entitled to judgment in accordance with the opinion of the appellate court, even where that opinion is an

assessment of fact and degree and entails a value judgment. If the appellate court's opinion is different from the conclusion of the tribunal appealed from, then the decision under appeal is wrong in the only sense that matters, even if it was a conclusion on which minds might reasonably differ. 9
9

Although there was common ground as to this approach, including that the weight given to the reasoning of the Assistant Commissioner's decision is a matter for my assessment, counsel differed as to the extent of deference I should choose to give. Mr Glover, for Combe, emphasised that in another, more recent, trade mark case, Crocodile International Pte Ltd v Lacoste, the Supreme Court stated: 10

In this case, the issue for decision is focused on the aural, visual and conceptual qualities of a trade mark containing a device and a stylised word. 11 Given the wide range of trade mark decisions that Commissioners are called upon to make, they may be expected to have a broader and more nuanced appreciation of the trade mark Register than judges, whose experience will generally be limited to the particular contested applications that come before them. This may mean that, where an appeal raises this type of issue, the appellate court should hesitate to depart from the Commissioner's qualitative assessment (although being prepared to do so if ultimately satisfied that the Commissioner's view is erroneous). As this Court said in Austin, Nichols & Co Inc: 12

The tribunal may have had a particular advantage (such as technical expertise or the opportunity to assess the credibility of witnesses, where such assessment is important). In such a case the appeal court may rightly hesitate to conclude that findings of fact or fact and degree are wrong.

This is an issue on which we have not heard argument and which we do not need to resolve in the present case.

10

I was also referred to the recent decision of Comite International Olympique v Tempting Brands Netherlands B V, in which Churchman J referred to Crocodile International Pte Ltd v Lacoste and stated that: 13

…where an appeal in relation to a trade mark raises issues such as the aural, visual and conceptual qualities of a trade mark containing a device and a stylised word, an appellate court should hesitate to depart from the

Commissioner's qualitative assessment unless ultimately satisfied that the Commissioner's view is wrong.
11

Mr Glover submitted that the Assistant Commissioner's technical appreciation of the trade mark Register was a factor I should take into account.

12

On the other hand, Mr Watts, for Dr Wolff, submitted that where the determination of likelihood of confusion rests upon a comparison of the marks themselves, the appellate court is in as good a position as the trial tribunal to come to a conclusion, 14 and that where goods are sold or may be sold to the general public for consumption or general use, the judge or officer making the decision is entitled to take into account his or her experiences, to the extent relevant, and reactions as a member of the public when considering whether deception or confusion is likely. 15

13

I consider the Supreme Court in Crocodile International has not changed the test in Austin, Nichols. The weight given to the...

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  • Dr August Wolff Gmbh & Co. Kg Arzneimittel v Combe International Ltd
    • New Zealand
    • High Court
    • 14 July 2020
    ...HIGH COURT OF NEW ZEALAND AUCKLAND REGISTRY I TE KŌTI MATUA O AOTEAROA TĀMAKI MAKAURAU ROHE CIV-2018-485-410 [2020] NZHC 1679 UNDER the Trade Marks Act 2002 IN THE MATTER of an appeal from a decision of the Intellectual Property Office of New Zealand BETWEEN DR AUGUST WOLFF GMBH & CO. K......

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