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

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

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

[2020] NZHC 1679

Gault J

CIV-2018-485-410

IN THE HIGH COURT OF NEW ZEALAND

AUCKLAND REGISTRY

I TE KŌTI MATUA O AOTEAROA

TĀMAKI MAKAURAU ROHE

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

Appearances:

R C Watts and R H Lockie for the Appellant

K T Glover and A N Birkinshaw for the Respondent

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 reasoning of the Assistant Commissioner's decision remains a matter for the appellate court's assessment. I consider it appropriate though to take into account the point made about the technical appreciation of the trade mark Register in my assessment.

Grounds of appeal
14

In short, Dr Wolff says that the Assistant Commissioner erred in fact and law by finding that the VAGISAN and VAGISIL marks were similar, such that deception or confusion was likely to arise from use of Dr Wolff's mark in terms of ss 17(1)(a) and 25(1)(b) of the Act.

15

The appeal concerns the Assistant Commissioner's application of the relevant legal tests to the facts rather than real debate about the legal tests. In particular, Dr Wolff submits that the Assistant Commissioner:

  • (a) placed undue weight on the commonality of the “VAGI-” element of the respective marks, notwithstanding that this was acknowledged to be descriptive of the relevant goods;

  • (b) gave insufficient weight to the distinctive (non-descriptive) elements of the marks (-SAN and -SIL), which are dissimilar;

  • (c) failed to take proper account of the nature of the goods and the likely behaviour of the purchasing public of such goods and, as a result, incorrectly found that relevant consumers would, in the relevant circumstances, be more likely than not to be deceived or confused as to origin between the VAGISAN and VAGISIL marks; and

  • (d) incorrectly assessed confusion by disregarding the evidence of absence of confusion in overseas markets where VAGISAN and VAGISIL co-exist and relying on an inadmissible opinion by Combe's in-house counsel as to risk of confusion.

Issues
16

The two key issues to be determined on the appeal are whether:

  • (a) having regard to the reputation acquired by Combe, the VAGISAN mark, if used in a normal and fair manner, will not be reasonably likely to cause deception and confusion amongst a substantial number of persons (the s 17(1)(a) issue); and

  • (b) the VAGISAN mark is similar to the VAGISIL mark, and its use is likely to deceive or confuse (the s 25(1)(b) issues). Dr Wolff accepts that the parties' goods are similar.

17

There is a degree of overlap between the issues under s 17(1)(a) and s 25(1)(b) but it is common ground that they have a different frame of reference. Section 17(1)(a) requires an assessment of 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. KG AR......

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