A recent case concerning two conflicting trademarks illustrates the importance of conducting pre-filing searches for existing and similar marks.
Dr. August Wolff GmbH & Co. KG Arzneimittel (the proprietor) owned the VAGISAN trademark (the subject mark) registered in Singapore under registration No. T1206670G in Classes 3 and 5. On November 14, 2017, Combe International Ltd (the opponent) applied for a declaration of invalidity of the subject mark on various grounds, including: (1) on the basis of similarity with its earlier registered marks and resulting likelihood of confusion; (2) that its earlier registered marks are well-known; and (3) passing off.
In a decision issued on February 21, 2020, the Principal Assistant Registrar (PAR) allowed the application for invalidity on two of the three aforementioned grounds and declared the subject mark invalid. This case illustrates the importance of conducting pre-filing searches for existing and similar marks.
The opponent, a company founded in the United States in 1949, owns a wide variety of brands, including the VAGISIL mark (the opponent’s mark). The opponent’s mark was first used in Singapore in 1989. The proprietor, a medical division of a cosmetics and pharmaceutical products company based in Germany, founded in 1905, first used the subject mark in Singapore in 1998.
The opponent had successfully opposed and canceled the proprietor’s trademark applications and registration in Australia, the European Union, New Zealand, and the United States. Decisions in Australia and New Zealand are pending appeal.
Similarity and Likelihood of Confusion
The PAR found that both marks had the same common prefix, Vagi, which referred to the intended area of treatment; had a coined term starting with the same letter s; and had the same number of letters. She also found an overlap between some of the conflicting goods. The PAR considered the marks to be to an above-average degree more similar, visually and aurally.
Despite consumers paying a fairly high degree of attention to purchase the relevant goods, on balance, the PAR held that there was a likelihood of confusion in this case.
Accordingly, the application for a declaration of invalidity succeeded on this ground.
Earlier Well-Known Mark
While the PAR found similarity between the marks, she was not convinced that the evidence submitted by the opponent demonstrated the extent or established how the opponent’s mark was well known in Singapore.
Therefore, the application for a declaration of invalidity on this ground failed.
It was not disputed that the opponent had acquired goodwill in Singapore.
Having found a likelihood of confusion on the first ground, the PAR concluded that misrepresentation was established. Given this, and the fact that the parties traded in similar goods, the PAR further concluded that there was a real likelihood of damage caused by the diversion of sales and allowed the claim of passing off to succeed on this ground.
Given the litigious background of the parties, a pre-filing search would have been helpful in devising a different filing strategy and averting the above outcome.
By: Gladys Mirandah
A version of this article first appeared in the INTA Bulletin Vol. 75, No. 8. For more information, please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx