Combe International Ltd v Dr August Wolff: Trademark Opposition & VAGISAN Mark

Combe International Ltd, the plaintiff, appealed against the decision of the IP Adjudicator, Mr. Sheik Umar Bin Mohamed Bagushair, which allowed Dr. August Wolff GmbH & Co. KG Arzneimittel, the defendant, to register the trademark 'Dr. Wolff’s VAGISAN'. The High Court of Singapore, presided over by Lee Seiu Kin J, dismissed the appeal, finding no likelihood of confusion between the defendant's mark and the plaintiff's 'VAGISIL' marks. The plaintiff's opposition was based on ss 8(2)(b) and 8(7)(a) of the Trade Marks Act. The court concluded that the marks were visually, aurally, and conceptually dissimilar.

1. Case Overview

1.1 Court

High Court of the Republic of Singapore

1.2 Outcome

Appeal dismissed with costs to the defendant.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Judgment

1.5 Jurisdiction

Singapore

1.6 Description

Combe International's appeal against Dr. August Wolff's trademark registration for 'Dr. Wolff's VAGISAN' was dismissed. The court found no likelihood of confusion with Combe's 'VAGISIL' marks.

1.7 Decision Date

6 April 2022

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
Combe International Ltd	Plaintiff, Appellant	Corporation	Appeal Dismissed	Lost	Lim Yong Sheng of Allen & Gledhill LLP Goh En-Ci Gloria of Allen & Gledhill LLP Soon Jia Ling Amanda of Allen & Gledhill LLP
Dr. August Wolff GmbH & Co. KG Arzneimittel	Defendant, Respondent	Corporation	Judgment for Defendant	Won	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
Lee Seiu Kin	Judge of the High Court	Yes

4. Counsels

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

4. Facts

The plaintiff opposed the defendant's application to register the trademark 'Dr. Wolff's VAGISAN'.
The plaintiff owns several 'VAGISIL' trademarks for feminine care products.
The defendant's 'VAGISAN' mark is used for intimate care products for women.
The IP Adjudicator allowed the defendant's application to register the 'Dr. Wolff's VAGISAN' mark.
The plaintiff appealed against the IP Adjudicator's decision.
The defendant revised the mark by adding the words “Dr. Wolff’s”, and reapplied to have the marks registered in both Class 3 and Class 5.
The plaintiff filed an opposition to the registration of the Application Mark, in reliance on ss 8(2)(b), 8(4)(b)(i), 8(4)(b)(ii) and 8(7)(a) of the Trade Marks Act.

5. Formal Citations

Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel, , [2022] SGHC 78
Dr August Wolff GmbH & Co KG Arzneimittel v Combe International Ltd, , [2021] 4 SLR 626
Dr August Wolff GmbH & Co KG Arzneimittel v Combe International Ltd, , [2021] SGIPOS 10

6. Timeline

Date	Event
2012-03-19	Defendant registered the mark “VAGISAN” in Class 3 and Class 5.
2018-05-25	Defendant filed application to register the mark “Dr. Wolff’s VAGISAN”.
2018-12-07	IPOS accepted and published defendant's application for opposition purposes.
2019-04-08	Plaintiff filed an opposition to the registration of the Application Mark.
2022-02-04	Hearing date.
2022-04-07	Judgment date.

7. Legal Issues

Trademark Infringement
- Outcome: The court found no likelihood of confusion between the defendant's mark and the plaintiff's mark.
- Category: Substantive
- Sub-Issues:
  - Similarity of marks
  - Likelihood of confusion
Passing Off
- Outcome: The court found that the element of misrepresentation was not established.
- Category: Substantive
- Sub-Issues:
  - Misrepresentation
  - Goodwill

8. Remedies Sought

Prevention of trademark registration

9. Cause of Actions

Trademark Opposition

10. Practice Areas

Trademark Opposition
Intellectual Property Litigation

11. Industries

Pharmaceuticals
Cosmetics

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
Dr August Wolff GmbH & Co KG Arzneimittel v Combe International Ltd	General Division of the High Court	Yes	[2021] 4 SLR 626	Singapore	Cited for background information on the dispute between the parties.
Dr August Wolff GmbH & Co KG Arzneimittel v Combe International Ltd	Intellectual Property Office of Singapore	Yes	[2021] SGIPOS 10	Singapore	Cited as the IPOS Decision being appealed against.
Ceramiche Caesar SpA v Caesarstone Sdot-Yam Ltd	Court of Appeal	Yes	[2017] 2 SLR 308	Singapore	Cited for the principle that appeals from the Registrar shall be by way of rehearing.
Future Enterprises Pte Ltd v McDonald’s Corp	High Court	Yes	[2007] 2 SLR(R) 845	Singapore	Cited as a prior decision that raised doubts about the appellate intervention threshold.
Ho Soo Fong v Standard Chartered Bank	High Court	Yes	[2007] 2 SLR(R) 181	Singapore	Cited for the principle that the appellate court is in as good a position as the trial court in evaluating the facts.
Courts (Singapore) Pte Ltd v Big Box Corp Pte Ltd	High Court	Yes	[2018] 5 SLR 312	Singapore	Cited for the principle that there is no threshold requirement that there be a “material error of fact or law” before appellate intervention is warranted in appeals from the Trade Marks Registry.
The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd	Court of Appeal	Yes	[2006] 2 SLR(R) 690	Singapore	Cited for the step-by-step approach in applying s 8(2)(b) of the TMA.
Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc	High Court	Yes	[2014] 1 SLR 911	Singapore	Cited for the principle that the court first considers the threshold question of whether the marks, as well as the goods and services in question are similar before proceeding to consider whether there is a likelihood of confusion on the part of the public.
Richemont International SA v Goldlion Enterprise (Singapore) Pte Ltd	High Court	Yes	[2006] 1 SLR(R) 401	Singapore	Cited for the principle that the court first considers the threshold question of whether the marks, as well as the goods and services in question are similar before proceeding to consider whether there is a likelihood of confusion on the part of the public.
Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd	High Court	Yes	[2013] 2 SLR 941	Singapore	Cited for the principle that the court’s assessment of marks is directed towards substantive similarity, and comprises of three aspects – visual, aural and conceptual similarities.
Digi International v Teraoka Seiko Co, Ltd	High Court	Yes	[2021] SGHC 165	Singapore	Cited for the principle that the court’s assessment of marks is directed towards substantive similarity, and comprises of three aspects – visual, aural and conceptual similarities.
The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd	High Court	Yes	[2005] 4 SLR(R) 816	Singapore	Cited for the principle that where the marks have a common denominator, the question is whether the common element of both competing marks were so dominant such that it rendered the different elements ineffective in obscuring the similarity between the marks.
Combe International LLC and Others v Dr August Wolff GmbH & Co KG Arzneimittel and others	High Court of Justice	Yes	[2021] EWHC 3347 (Ch)	England and Wales	Cited for the proposition that “Dr – Formative” marks had lower distinctiveness.
Dr. Grandel GmbH v S.A. SPA Monopole	Fourth Board of Appeal	Yes	Case No. R 91/2003-4	European Union	Cited for the argument that the IPA, in holding that “Dr. Wolff’s” was as distinctive as “VAGISAN” overlooked the fact that “Dr. Wolff’s” was likely to be perceived as the name of an otherwise unknown doctor.
Dr. Grandel GmbH v Gowoonsesang Cosmetics Co. Ltd.	Opposition Division	Yes	Opposition No B 3 051 772	European Union	Cited for the argument that the IPA, in holding that “Dr. Wolff’s” was as distinctive as “VAGISAN” overlooked the fact that “Dr. Wolff’s” was likely to be perceived as the name of an otherwise unknown doctor.
Beats Electronics, LLC v LG Electronics Inc.	Intellectual Property Office of Singapore	Yes	[2016] SGIPOS 8	Singapore	Cited to draw a distinction between the meaning a word carries, and what it may allude to.
Sarika Connoisseur Cafe Pte Ltd v Ferrero SpA	Court of Appeal	Yes	[2013] 1 SLR 531	Singapore	Cited for the principle that the marks should not be examined side by side in close proximity so as to account for the “imperfect recollection” of the consumer.
MediaCorp News Pte Ltd v Astro All Asia Networks plc	High Court	Yes	[2009] 4 SLR(R) 496	Singapore	Cited for the principle that the marks should not be examined side by side in close proximity so as to account for the “imperfect recollection” of the consumer.
Louis Vuitton Malletier v Human Horizons Holding (Shanghai) Co., Ltd	Intellectual Property Office of Singapore	Yes	[2021] SGIPOS 13	Singapore	Cited for the proposition that word marks with a common component can be visually similar.
Polo/Lauren Co LP v United States Polo Association	High Court	Yes	[2016] 2 SLR 667	Singapore	Cited for the principle that visual similarity is assessed by reference to the overall impressions created by the mark or signs, bearing in mind their distinctive and dominant components.
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 doubt has been raised as to the applicability of this approach in cases involving composite marks with different elements of widely varying degrees of distinctiveness.
Festina Lotus SA v Romanson Co Ltd	High Court	Yes	[2010] 4 SLR 552	Singapore	Cited for the principle that where conceptual similarity is concerned, the inquiry is directed at the idea behind, or informing the understanding of, the mark.
Scandecor Developments AB v Scandecor Marketing AV	High Court of Justice	Yes	[2001] 2 CMLR 30	England and Wales	Cited for the principle that the trade mark register should not contain similar trade marks as that might confuse the average consumer as to either the origin or quality of the goods.
Weir Warman Ltd v Research & Development Pty Ltd	High Court	Yes	[2007] 2 SLR(R) 1073	Singapore	Cited for the principle that the trade mark register should not contain similar trade marks as that might confuse the average consumer as to either the origin or quality of the goods.
Miragan	United Kingdom Intellectual Property Office	Yes	[2001] UKIPO O/414/01	United Kingdom	Cited for the principle that the average consumer in the present case would obviously be women given that the products in question are intimate feminine care products.
Consolidated Artists BV v THEFACESHOP Co Ltd	Intellectual Property Office of Singapore	Yes	[2017] SGIPOS 7	Singapore	Cited for the principle that the nature of the goods would tend to command a greater degree of fastidiousness and attention on the part of prospective purchasers.
Novelty Pte Ltd v Amanresorts Ltd and another	High Court	Yes	[2009] 3 SLR(R) 216	Singapore	Cited for the three elements of passing off: goodwill, misrepresentation and damage to goodwill.
Slazenger & Sons v Feltham & Co	High Court of Justice	Yes	[1889] 6 RPC 531	England and Wales	Cited for the principle that evidence of a dishonest or deliberate attempt to misappropriate another’s goodwill is always relevant.

13. Applicable Rules

Rule Name
Rules of Court (Cap 322, 2006 Rev Ed) O 87 r 4(2)
Rules of Court 2021 O 70 r 4(2)

14. Applicable Statutes

Statute Name	Jurisdiction
Trade Marks Act (Cap 332, 2005 Rev Ed)	Singapore
Trade Marks Act Section 8(2)(b)	Singapore
Trade Marks Act Section 8(4)(b)(i)	Singapore
Trade Marks Act Section 8(4)(b)(ii)	Singapore
Trade Marks Act Section 8(7)(a)	Singapore

15. Key Terms and Keywords

15.1 Key Terms

VAGISIL
VAGISAN
Dr. Wolff’s
Trademark
Opposition
Likelihood of confusion
Distinctiveness
Passing off
Misrepresentation

15.2 Keywords

trademark
opposition
VAGISIL
VAGISAN
Dr. Wolff
intellectual property
Singapore

17. Areas of Law

Area Name	Relevance Score
Trademarks	95
Intellectual Property Law	75
Litigation	50
Arbitration	30
Commercial Law	25
Contract Law	20

16. Subjects

Intellectual Property
Trademark Law
Litigation