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Trade marks: The High Court rules VAGISAN is confusingly similar to VAGISIL and the rights holder of VAGISIL did not acquiesce in its use of its mark.

May 16, 2022
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In the case of Combe International and anor v Dr Wolff and anor the High Court held, amongst other things, that the Defendants’ UK registered trade mark VAGISAN infringed the Claimants’ earlier registered trade mark VAGISIL on the grounds of likelihood of confusion and that the issuing of proceedings in the EUIPO is sufficient to interrupt the five-year period required to prove a rights holder has acquiesced.

Background

The First Claimant markets and sells non-prescription female intimate healthcare products across many parts of the world and has done so since the early 1970s under the mark VAGISIL. The Second Claimant is a subsidiary of the First Claimant and is its distributor in the UK. VAGISIL was first introduced to the UK market in the mid 1980s.

The First Defendant is a German pharmaceutical company. One of its main offerings is Alpecin shampoo and in the early 2000s it added VAGISAN Moist Cream to its offering. In 2012, the First Defendant applied for an international trade mark designating the US and EU. The mark was granted protection on 4 December 2012.

The Claimants became aware of the registration and the parties entered negotiations, which eventually broke down. The Claimants then issued proceedings at the EUIPO on the basis that there is a likelihood of confusion between the marks. The EUIPO found in favour of the Claimants and the EU VAGISAN registration was cancelled. However, during proceedings, a clone UK mark was created as a result of Brexit, and it entered the UK Register of Trade Marks. The Claimants then issued trade mark infringement proceedings in the UK.

Decision

As with the EUIPO proceedings, the Claimants issued proceedings in the UK mainly on the basis that there is a likelihood of confusion between the marks. The Defendants advanced a number of defences, including acquiescence and honest and concurrent use. It also sought a declaration of non-infringement.

One of the key issues in this case, and which we are focusing on for the purposes of this article, related to the Defendants’ main defence: acquiescence. This is where the proprietor of an earlier trade mark becomes aware of the use of a later registered trade mark, which was registered in good faith in the relevant jurisdiction, and does nothing for a period of five years to prevent its use.

The Defendants argued that, even if its VAGISAN trade mark did infringe the Claimants’ earlier VAGISIL trade mark, the Claimants had acquiesced in the Defendants’ use of VAGISAN for a period of over five years.

In response, the Claimants argued that the five-year period had been interrupted due to EUIPO proceedings being issued, in which they objected, amongst other things, to the use of the VAGISAN mark in the UK. The Claimants also argued that, even if the chain had not been broken by issuing EUIPO proceedings, the Defendants’ sales of the product bearing the mark VAGISAN were so low during a significant period of the five years that it could not be said that VAGISAN had been used in any meaningful way for five consecutive years.

The Court found that there was a likelihood of confusion between the marks and that the Defendants’ defence of acquiescence failed as the Claimants’ initiation of their cancellation action before the EUIPO in December 2017 interrupted the five-year limitation period.  The Defendants’ other defences were also unsuccessful, as was the request for a declaration of non-infringement.

Commentary

Brexit muddied the waters in many respects, and the law on trade marks did not escape this. This case brings clarity to the issue of whether EUIPO trade mark proceedings commenced before Brexit results in the five-year limitation period being interrupted in relation to a clone UK registered mark and the defence of acquiescence.

This case serves as a reminder that, if you see a third party register a trade mark confusingly similar to yours, you should make sure you act as soon as possible and do not fall into the trap of acquiescence.

The team at iLaw offers a full range of intellectual property services ranging from registering trade marks and negotiating licences through to obtaining emergency injunctions against infringers when the situation requires. For help and advice, please get in touch with our expert team.

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