Combe International LLC & Ors v Dr August Wolff GmbH & Co. KG Arzneimittel & Ors

10 December 2021

Ashton Chantrielle appeared as junior counsel for the defendants (“Dr Wolff”) in proceedings brought by the claimants (“Combe”) for trade mark infringement and passing off.

Combe is the registered proprietor of various UK registered trade marks for the word mark VAGISIL registered in Classes 3 and 5 for female intimate healthcare products. Combe alleged trade mark infringement under s.10(2) and s.10(3) of the Trade Marks Act 1994 (“TMA”) and passing off in respect of intimate health products placed on the market in the UK under the brand name VAGISAN by Dr Wolff.   Wolff denied infringement and raised defences under s.11(1), s.11(2)(b) and s.48 of the TMA.  Wolff also counterclaimed for a declaration of non-infringement in relation to its proposed rebrand, DR WOLFF’S VAGISAN. The trial proceeded in respect of infringement under s.10(2) of the TMA only.

Adam Johnson J held that the VAGISIL mark and the VAGISAN sign were highly similar and used in relation to identical goods, giving risk to a risk of consumer confusion. Therefore, the infringement claim under s.10(2) of the TMA was made out. In relation to the defences pleaded by Dr Wolff, the Judge held that Combe had not acquiesced in the use of the VAGISAN sign for a continuous period of 5 years.  The Judge also rejected Dr Wolff’s s.11(1) and s.11(2)(b) defences.  Lastly, he rejected Wolff’s counterclaim for a declaration of non-infringement in relation to the rebrand DR WOLFF’S VAGISAN, finding that it would infringe for the same reasons as the VAGISAN sign.

This matter is the subject of an appeal.

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