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VAGISIL and VAGISAN – a tale of deceptive similarity

Malcolm Campbell ||

If you have ever taken steps to create a new brand or protect your own brand, you may have come across the legal tests of substantially identical or deceptively similar which are to be used in assessing whether a trade mark can be registered or on the contrary may infringe existing third party rights.

It has been clear for many years that the analysis of whether two marks are substantially identical is conducted by comparing the two marks side by side. However, the test for deceptive similarity needs more careful consideration given the scope of that test is a little less clear.

The recent dispute between the owners of the registered trade mark VAGISIL and applicant VAGISAN provides guidance on how to assess whether a trade mark is deceptively similar to another.

In short, the court held that each mark must be considered as a whole in conducting the comparison. The following explains why.

VAGISAN was the subject of an application by Dr August Wolff GmbH & Co. KG Arzneimittel in relation to class 3 goods being soaps and cosmetics. Class 5 goods: pharmaceutical products, sanitary products for medical purposes. Both classes not for the application of tired legs and/or arms.

VAGISIL is the registered trade mark of Combe International Ltd that sells a range of personal cleansing, health and grooming products for goods including those in class 3: medicated lotions and medicated creams; non-medicated products for feminine use, and, class 5: medicated products for feminine use; vaginal lubricants; medicated creams, gels, lotions.

A delegate of the Registrar of Trade Marks refused registration of VAGISAN based on Combe’s prior reputation in the [deceptively similar] VAGISIL trade mark. On appeal, to the Federal Court of Australia, the primary judge disagreed with the delegate’s decision.

The primary judge considered (amongst other things) that VAGISAN and VAGISIL are likely to be understood as indicating products to be used in relation to the female genital area and took the view the prefixes VAG and VAGI are descriptive. Accordingly, if the prefixes are ignored for the purposes of the test, the judge found that SIL and SAN do not have a close phonetic resemblance.

The evidence led by Combe did not establish that a significant or substantial number of potential customers might be confused or deceived by the VAGISAN mark such that they may consider whether a connection existed between Combe and the product sold by Dr Wolff.

On appeal to the Full Federal Court, Combe claimed that the primary judge misapplied the test of deceptive similarity between VAGISIL and VAGISAN by:

  • comparing the two words side by side;
  • breaking each word into parts, assessing the descriptive and distinctive qualities of those parts and not considering each mark as a whole;
  • failing to apply the test in light of the consumer’s likely imperfect recollection of VAGISIL;
  • failing to assess the whole of each mark as a word with no actual meaning; and/or
  • not giving proper weight to the VAGISAN products as high-volume and low-value goods.

The Full Court concluded that VAGISAN was deceptively similar to VAGISIL and the VAGISAN trade mark was refused. The court’s reasoning included the following:

  • VAGISAN and VAGISIL marks each have the same first five letters, they both have three syllables, and the VAGIS component is pronounced the same way. The only differences between the marks is the final two letters “AN” and “IL, and the only aural difference, being that between SIL and SAN, may be mispronounced or slurred;
  • the idea of the mark is important in the consideration of deceptive similarity. The court was of the view that consumers are likely to consider VAG or VAGI to be a reference to the vagina and that those prefixes are likely to be remembered;
  • while a similarity in idea may be insufficient for a finding of deceptive similarity if there is an absence of visual or aural similarity, in this case, the VAGISAN and VAGISIL marks also have visual and aural similarity;
  • the primary judge wrongly assumed that the classes 3 and 5 goods of both the VAGISAN and VAGISIL trade marks were confined to goods for vaginal use, due to the descriptive nature of the prefixes VAG and VAGI. When assessing deceptive similarity, the notional use of the respective marks should have been considered, and the range of goods went beyond those for vaginal use.

While this matter has concluded, the dispute between the parties looks set to continue with Combe having opposed the recent application by Dr Wolff for DR WOLFF’S VAGISAN covering similar goods to the VAGISAN application.

If you have any questions about any of the information in the above blog, please do not hesitate to contact a highly skilled member of Coleman Greig’s Intellectual Property Team, who would be more than happy to assist you.

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