Today (10 December 2021) the English High Court handed down judgment in favour of Combe International LLC (owner of the VAGISIL trade mark) against Dr August Wolff (owner of the VAGISAN trade mark) for trade mark infringement under Section 10(2) TMA 1994. Johnson J’s judgment contains an important development in the defence of statutory acquiescence, and an interesting analysis of some significant evidence of actual confusion.
The Claimant has sold non-prescription female intimate healthcare products under the VAGISIL mark in the UK since 1984. The Defendant has been selling a similar product in England under the similar name VAGISAN since 2013. The Defendant had made limited sales but in 2016 stepped up its marketing efforts, including in 2018 a television campaign featuring the comedian Jenny Éclair.
After a long history of opposition actions in its key territories (USA & Canada, Australia, Singapore), in September 2019 the Claimant was successful in having the EUIPO declare the VAGISAN mark invalid due to likelihood of confusion with the VAGISIL mark. The Defendant appealed to the General Court of the CJEU – in the meantime Brexit happened and a cloned mark remained on the UKIPO register.
Shortly after the EUIPO declared the VAGISAN mark invalid, the Claimant commenced High Court proceedings in January 2020 for trade mark infringement, which have now proved successful on the following grounds:
Likelihood of confusion
Having swiftly decided that the VAGISAN mark was “very, very similar” to the VAGISIL mark, and used in relation to goods with a high degree of similarity, the main two issues for the Court to resolve became (1) whether there is a likelihood of confusion on the part of the average consumer; and (2) whether the Defendant could avail itself of the defence of statutory acquiescence (s.48 TMA 1994) because VAGISAN had been on the market for five years since 2013 without litigation having been formally threatened or brought by the Claimant.
The Court found that there was a risk of (and actual) confusion for the following reasons:
The Defendant’s statutory acquiescence defence failed for the following reasons:
Stobbs acted for the Claimant/VAGISIL. Lewis Silkin acted for the Defendant/VAGISAN.