Case Analysis: Combe International v Dr Wolff

• Published date: 28 December 2022
• Subject Matter: Consumer Protection, Intellectual Property, Consumer Law, Trademark
• Law Firm: Dehns
• Author: Lauren Palmer

Can adding the company name to a mark avoid infringement?

Summary

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 [2022] EWCA Civ 1562

Case background

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...