COMBE INTERNATIONAL LLC v DR AUGUST WOLFF GMBH & CO KG ARZNEIMITTEL

COMBE INTERNATIONAL LLC v DR AUGUST WOLFF GMBH & CO KG ARZNEIMITTEL

The appeal was dismissed because Combe had not acquiesced in the use of the Wolff EUTM for a continuous period of five years while being aware of such use, as required by section 48(1). The judge was correct to find that the defendants' use of DR WOLFF’S VAGISAN gave rise to a likelihood of confusion with VAGISIL. The section 11(1) defence only applied to acts prior to 14 January 2019, as conceded by Combe.

Parties
Claimant/respondent: Combe International LLC; Claimant/respondent: Combe International Limited; Defendant/appellant: Dr August Wolff GmbH & Co KG Arzneimittel; Defendant/appellant: ACDOCO Limited
Jurisdiction
England and Wales
Judgment Date
30 November 2022
Procedural Posture
Civil Appeal / Court of Appeal Judgment on Appeal From High Court
Outcome
Appeal dismissed (except as conceded for acts prior to 14 January 2019)
Legal Topics
Trade Mark Infringement, Acquiescence, Likelihood of Confusion, Defences to Infringement, Registered Trade Mark Rights
Intellectual Property Trade Marks Trade Mark Infringement Acquiescence Likelihood of Confusion Defences to Infringement Registered Trade Mark Rights

Case Brief

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Parties

Combe International LLC

Claimant/respondent

Combe International Limited

Claimant/respondent

Dr August Wolff GmbH & Co KG Arzneimittel

Defendant/appellant

ACDOCO Limited

Defendant/appellant

Procedural Posture

Civil Appeal / Court of Appeal Judgment on Appeal From High Court

Legal Issues

  1. 1 Whether the claimants acquiesced in the use of the defendants' trade mark under section 48(1) of the Trade Marks Act 1994
  2. 2 Whether the defendants have a defence under section 11(1) of the Trade Marks Act 1994
  3. 3 Whether use of 'DR WOLFF’S VAGISAN' gives rise to a likelihood of confusion with 'VAGISIL'

Ratio Decidendi

The appeal was dismissed because Combe had not acquiesced in the use of the Wolff EUTM for a continuous period of five years while being aware of such use, as required by section 48(1). The judge was correct to find that the defendants' use of DR WOLFF’S VAGISAN gave rise to a likelihood of confusion with VAGISIL. The section 11(1) defence only applied to acts prior to 14 January 2019, as conceded by Combe.

Court Disposition

Appeal dismissed (except as conceded for acts prior to 14 January 2019)

Orders

  • Defendants have a defence under section 11(1) for acts prior to 14 January 2019
  • Subject to that, appeal dismissed and High Court orders (injunction, delivery up) stand