Dr August Wolff GmbH & Co. KG Arzneimittel v Combe International Ltd [2020] FCA 39

Dr August Wolff GmbH & Co. KG Arzneimittel v Combe International Ltd [2020] FCA 39

Combe failed to establish that VAGISAN is deceptively similar to the VAGISIL marks, as the distinguishing suffixes and overall impression are sufficiently different and the shared prefix is descriptive. Although VAGISIL had a reputation in Australia as at the priority date, that reputation did not make it likely that use of VAGISAN would deceive or cause confusion among a significant number of consumers. Combe also failed to show that Dr Wolff lacked intention to use or authorise use of the mark in Australia at the priority date. Accordingly, none of the three grounds of opposition under ss 44, 59, or 60 were made out.

Parties
Appellant/cross Respondent: Dr August Wolff GmbH & Co. KG Arzneimittel; Respondent/cross Appellant: Combe International Ltd
Jurisdiction
Australia
Judgment Date
03 February 2020
Procedural Posture
Trade Mark Opposition Appeal / First Instance, Appeal From a Delegate of Registrar of Trade Marks Under S 56 of the Trade Marks Act 1995 (cth)
Outcome
Appeal allowed; opposition to registration failed.
Legal Topics
Trade Marks, Deceptive Similarity, Grounds of Opposition to Registration, Reputation Under S 60, Intention to Use (s 59), Business Records and Hearsay Exceptions, Survey Evidence Admissibility
Intellectual Property Evidence Trade Marks Deceptive Similarity Grounds of Opposition to Registration Reputation Under S 60 Intention to Use (s 59) Business Records and Hearsay Exceptions +1 more

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Parties

Dr August Wolff GmbH & Co. KG Arzneimittel

Appellant/cross Respondent

Combe International Ltd

Respondent/cross Appellant

Procedural Posture

Trade Mark Opposition Appeal / First Instance, Appeal From a Delegate of Registrar of Trade Marks Under S 56 of the Trade Marks Act 1995 (cth)

Legal Issues

  1. 1 Whether goods designated in the VAGISAN application are similar to those of the VAGISIL marks for the purposes of s 44 of the Trade Marks Act 1995 (Cth)
  2. 2 Whether the VAGISAN mark is deceptively similar to the VAGISIL marks under s 44
  3. 3 Whether the reputation of VAGISIL marks in Australia makes use of VAGISAN likely to deceive or cause confusion (s 60)

Ratio Decidendi

Combe failed to establish that VAGISAN is deceptively similar to the VAGISIL marks, as the distinguishing suffixes and overall impression are sufficiently different and the shared prefix is descriptive. Although VAGISIL had a reputation in Australia as at the priority date, that reputation did not make it likely that use of VAGISAN would deceive or cause confusion among a significant number of consumers. Combe also failed to show that Dr Wolff lacked intention to use or authorise use of the mark in Australia at the priority date. Accordingly, none of the three grounds of opposition under ss 44, 59, or 60 were made out.

Court Disposition

Appeal allowed; opposition to registration failed.

Orders

  • The parties are directed to bring in agreed or competing orders that reflect the conclusions recorded in the Court's reasons and any other outstanding matters including costs within two weeks of these orders.
  • In the event of any disagreement on the orders, including with regard to costs, the parties are to liaise with the Associate to Stewart J to arrange a short hearing to determine final orders.