Dr. August Wolff v. Combe: Trade Mark Invalidity & Likelihood of Confusion

Dr. August Wolff GmbH & Co. KG Arzneimittel (Plaintiff) appealed against the decision of the Principal Assistant Registrar to allow Combe International Ltd (Defendant)'s application for invalidation of the Plaintiff's Singapore Trade Mark Registration No. T1206670G “VAGISAN”. The General Division of the High Court, presided over by Hoo Sheau Peng J, dismissed the appeal, finding that the “VAGISAN” mark was similar to the Defendant's “VAGISIL” mark, creating a likelihood of confusion under the Trade Marks Act. The court also found that the use of the “VAGISAN” mark would amount to a misrepresentation that creates a likelihood of confusion.

1. Case Overview

1.1 Court

General Division of the High Court

1.2 Outcome

Appeal Dismissed

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Dr. August Wolff's appeal against the invalidation of its 'VAGISAN' trade mark was dismissed due to similarity with Combe's 'VAGISIL' mark, creating a likelihood of confusion.

1.7 Decision Date

24 February 2021

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
Combe International Ltd	Defendant, Respondent	Corporation	Application for Invalidity Allowed	Won	Goh En-Ci Gloria of Allen & Gledhill LLP Soon Jia Ling Amanda of Sun Jianing
Dr. August Wolff GmbH & Co. KG Arzneimittel	Plaintiff, Appellant	Corporation	Appeal Dismissed	Lost	Tang Li Ling Yvonne of Drew & Napier LLC Ruby Tham of Drew & Napier LLC Edsmond Cheong Qi Yi of Drew & Napier LLC

3. Judges

Judge Name	Title	Delivered Judgment
Hoo Sheau Peng	Judge of the High Court	Yes

4. Counsels

Counsel Name	Organization
Goh En-Ci Gloria	Allen & Gledhill LLP
Soon Jia Ling Amanda	Sun Jianing
Tang Li Ling Yvonne	Drew & Napier LLC
Ruby Tham	Drew & Napier LLC
Edsmond Cheong Qi Yi	Drew & Napier LLC

4. Facts

Plaintiff is part of the Dr Wolff Group, founded in 1905, researching, manufacturing, and marketing dermatological, medicinal, and cosmetic products.
Plaintiff conceived the name “VAGISAN” in 1994 for intimate care products, a portmanteau of “vagina” and “sanitas” (health).
Plaintiff registered the “VAGISAN” Mark in Singapore on 19 March 2012.
Defendant is a global personal care company founded in 1949, marketing brands like “JUST FOR MEN” and “AQUA VELVA”.
Defendant’s “VAGISIL” products for feminine care are a key brand, first used in Singapore in 1990.
Defendant is the registered owner of several “VAGISIL” trade marks in Singapore.
Defendant applied to declare invalid the registration of the plaintiff’s “VAGISAN” Mark on 14 November 2017.

5. Formal Citations

Dr August Wolff GmbH & Co KG Arzneimittel v Combe International Ltd, Tribunal Appeal No 8 of 2020, [2021] SGHC 49

6. Timeline

Date	Event
1905-01-01	Dr Wolff Group founded
1949-01-01	Combe International Ltd founded
1990-01-01	Defendant first used the “VAGISIL” Mark in Singapore
1998-01-01	Plaintiff’s intimate care products first bore the “VAGISAN” Mark
1998-05-20	Defendant applied for VAGISIL trade mark registration
2008-09-29	Defendant applied for VAGISIL trade mark registration
2011-09-19	Defendant applied for VAGISIL trade mark registration
2012-03-19	Plaintiff registered the “VAGISAN” Mark in Singapore
2014-12-05	Defendant applied for VAGISIL trade mark registration
2017-11-14	Defendant applied to declare invalid the registration of the plaintiff’s “VAGISAN” Mark
2020-07-22	Hearing date
2021-02-10	Judgment date
2021-02-25	Reasons for decision issued

7. Legal Issues

Trade Mark Invalidity
- Outcome: The court found that the plaintiff’s mark was similar to the defendant’s mark and that there was a likelihood of confusion, thus the ground for invalidity was established.
- Category: Substantive
- Sub-Issues:
  - Similarity of marks
  - Likelihood of confusion
  - Distinctiveness of marks
- Related Cases:
  - [2014] 1 SLR 911
  - [2013] 2 SLR 941
Passing Off
- Outcome: The court found that the plaintiff’s use of the mark amounted to a misrepresentation that creates a likelihood of confusion and that there was a real likelihood of damage to the defendant’s goodwill.
- Category: Substantive
- Sub-Issues:
  - Goodwill
  - Misrepresentation
  - Damage to goodwill
- Related Cases:
  - [2009] 3 SLR(R) 216
  - [2016] 4 SLR 86

8. Remedies Sought

Declaration of Invalidity of Trade Mark

9. Cause of Actions

Trade Mark Invalidity
Passing Off

10. Practice Areas

Trade Mark Litigation
Intellectual Property Litigation

11. Industries

Pharmaceuticals
Cosmetics
Personal Care

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
Combe International Ltd v Dr. August Wolff GmbH & Co. KG Arzneimittel	Intellectual Property Office of Singapore	Yes	[2020] SGIPOS 3	Singapore	The Principal Assistant Registrar's decision, which is the subject of this appeal, is cited.
Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appeal	Court of Appeal	Yes	[2014] 1 SLR 911	Singapore	Cited for the step-by-step approach in assessing the similarity of marks and the likelihood of confusion.
Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another and another appeal	Court of Appeal	Yes	[2013] 2 SLR 941	Singapore	Cited for the principles regarding the assessment of substantive similarity of contesting marks and the viewpoint of the average consumer.
Harrods’ Application	N/A	Yes	(1935) 52 RPC 65	N/A	Cited for the principle that common elements in multiple marks cause purchasers to pay more attention to other features.
Sarika Connoisseur Cafe Pte Ltd v Ferrero SpA	Court of Appeal	Yes	[2013] 1 SLR 531	Singapore	Cited for the visual similarity of marks with the same length, structure, and most of the same letters.
Hyundai Mobis v Mobil Petroleum Company, Inc	Intellectual Property Office of Singapore	Yes	[2007] SGIPOS 12	Singapore	Cited for the similarity of marks where a large part of the marks are similar and only the last letters are different.
Johnson & Johnson v Uni-Charm Kabushiki Kaisha (Uni-Charm Corp)	High Court	Yes	[2007] 1 SLR(R) 1082	Singapore	Cited for finding “CAREFREE” and “CAREREE” visually similar.
Future Enterprises Pte Ltd v McDonald’s Corp	High Court	Yes	[2006] 4 SLR(R) 629	Singapore	Cited for holding “McCAFÉ” and “MacCoffee” visually similar.
Ceramiche Caesar SpA v Caesarstone Sdot-Yam Ltd	High Court	Yes	[2017] 2 SLR 308	Singapore	Cited for the principle that a descriptive element of a complex mark is not likely to be perceived as the distinctive and dominant element.
Bridgestone Corporation and Bridgestone Licensing Services, Inc. v Deestone Limited	Intellectual Property Office of Singapore	Yes	[2018] SGIPOS 5	Singapore	Cited for the principle that an overall impression may be dominated by one or more of its components.
Apple Inc. v Xiaomi Singapore Pte Ltd	Intellectual Property Office of Singapore	Yes	[2017] SGIPOS 10	Singapore	Cited for the Registrar finding the “PAD” in the “IPAD” mark to be descriptive.
ACCUTRON Trade Mark	N/A	Yes	[1966] RPC 152	N/A	Cited for the principle that trade marks must be compared as wholes without giving special regard to particular elements.
Dr. August Wolff GmbH & Co. KG Arzneimittel v Combe International Ltd	Federal Court	Yes	[2020] FCA 39	Australia	Cited as a similar dispute in another jurisdiction where the court held that the marks are not deceptively similar because the common element is descriptive.
Dr. August Wolff GmbH & Co. KG Arzneimittel v Combe International Ltd	New Zealand Intellectual Property Office	Yes	[2018] NZIPOTM 10	New Zealand	Cited as a similar dispute in another jurisdiction where the defendant successfully opposed the registration of the mark.
Dr. August Wolff GmbH & Co. KG Arzneimittel v Combe International Limited	New Zealand High Court	Yes	[2020] NZHC 1679	New Zealand	Cited as a similar dispute in another jurisdiction where the plaintiff’s appeal was dismissed.
Combe Inc v Dr. Aug Wolff GMBH & Co.	US District Court	Yes	382 F. Supp. 3d 429 (E.D. Va. 2019)	United States	Cited as a similar dispute in another jurisdiction where the court ruled in favor of the defendant.
Combe International Ltd. V Dr. August Wolff GmbH & Co. KG Arneimittel	Cancellation Division	Yes	Cancellation No 18 101 C	EU	Cited as a similar dispute in another jurisdiction where the defendant’s application was allowed and the plaintiff’s mark was cancelled.
Dr. August Wolff GmbH & Co. KG Arzneimittel v Combe International Ltd	Board of Appeal	Yes	R2459/2019-4	EU	Cited as a similar dispute in another jurisdiction where the plaintiff’s appeal was dismissed.
Ferrero SPA v Sarika Connoisseur Cafe Pte Ltd	High Court	Yes	[2011] SGHC 176	Singapore	Cited for the principle that the first syllable of a word is the most important for the purpose of distinction.
Guccio Gucci S.p.A. v Guccitech Industries (Private Ltd)	Intellectual Property Office of Singapore	Yes	[2018] SGIPOS 1	Singapore	Cited for the principle that the Dominant Approach would be more suitable for marks containing multiple components.
Formula One Licensing BV v Idea Marketing SA	High Court	Yes	[2015] 5 SLR 1349	Singapore	Cited for the principle that where the first portion of a trade mark is used in a descriptive sense, its significance is lessened.
In the Matter of Application No. 2273267 by Pilkington Plc	N/A	Yes	O-116-04	N/A	Cited for guidance on marks that have the same lengths of prefixes and suffixes.
Novelty Pte Ltd v Amanresorts Ltd and another	N/A	Yes	[2009] 3 SLR(R) 216	N/A	Cited for the three elements of passing off: goodwill, misrepresentation, and damage to goodwill.
Singsung Pte Ltd v LG Electronics Pte Ltd (trading as L S Electrical Trading)	High Court	Yes	[2016] 4 SLR 86	Singapore	Cited for the elements of passing off and the threshold inquiry of distinctiveness.
Allergan, Inc and another v Ferlandz Nutra Pte Ltd	High Court	Yes	[2016] 4 SLR 919	Singapore	Cited for the definition of goodwill.
Rovio Entertainment Ltd v Kimanis Food Industries Sdn Bhd	High Court	Yes	[2015] 5 SLR 618	Singapore	Cited for the principle that the court ought not to engage in a “reputation-therefore-confusion” analysis.
Virgin Enterprises Ltd v Virginic LLC	High Court of Justice	Yes	[2019] EWHC 672 (Ch)	England and Wales	Cited for examples of indirect confusion.
Consolidated Artists B.V. v THEFACESHOP Co., Ltd.	Intellectual Property Office of Singapore	Yes	[2017] SGIPOS 7	Singapore	Cited for the principle that consumers will be cautious about what they are purchasing when it comes to personal care products.
Digipos Store Solutions Group Ltd v Digi International Inc	High Court of Justice	Yes	[2008] EWHC 3371 (Ch)	England and Wales	Cited for the principle that co-existence of marks with a similar prefix on a register does not necessarily negate the possibility of confusion.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute Name	Jurisdiction
Trade Marks Act (Cap 332, 2005 Rev Ed) s 8(2)(b)	Singapore
Trade Marks Act (Cap 332, 2005 Rev Ed) s 23(3)(a)(i)	Singapore
Trade Marks Act (Cap 332, 2005 Rev Ed) s 8(7)(a)	Singapore
Trade Marks Act (Cap 332, 2005 Rev Ed) s 23(3)(b)	Singapore
Trade Marks Act (Cap 332, 2005 Rev Ed) s 8(4)(b)(i)	Singapore
Trade Marks Act (Cap 332, 2005 Rev Ed) s 23(3)(a)(iii)	Singapore

15. Key Terms and Keywords

15.1 Key Terms

Trade mark
Invalidity
Passing off
Likelihood of confusion
Distinctiveness
Visual similarity
Aural similarity
Conceptual similarity
Goodwill
Misrepresentation
Damage
VAGISAN
VAGISIL

15.2 Keywords

Trade mark
Invalidity
Passing off
Likelihood of confusion
VAGISAN
VAGISIL

17. Areas of Law

Area Name	Relevance Score
Trademark Infringement	90
Trademark Law	90
Trademarks	90
Passing Off	70
Intellectual Property	60
Commercial Law	30
Civil Litigation	20

16. Subjects

Trade Mark Law
Intellectual Property Law
Trade Mark Infringement
Passing Off