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SINGAPORE: Distinctive Elements Play Key Role in Distinguishing Marks

The recent case involving “Dr. Wolff’s Vagisan” illustrates the importance of distinguishing a mark from similar, existing marks by adding distinctive elements in the mark applied for. The parties, Dr. August Wolff GmbH & Co. KG Arzneimittel (the applicant) and Combe International Ltd (the opponent) had been engaged in a prior invalidation proceeding.

The opponent owns multiple VAGISIL marks in Classes 3, 5, and 10 (collectively, the opponent’s marks). Meanwhile, on May 25, 2018, the applicant applied to register a mark covering goods for personal care under Classes 3 and 5 (the application) bearing application number 40201816895W.

The opponent opposed the application based on its VAGISIL marks, arguing that, per Section 8(2)(b) of the Trade Marks Act (the Act), the mark under the application was similar to the opponent’s marks, as the dominant portion of the “Vagisan” application was very similar to VAGISIL.

In his decision dated June 17, 2021, the Registrar found that the “Dr. Wolff’s” and “Vagisan” elements in the application were distinctive and, therefore, the parties’ marks were dissimilar. Further, he found that “Vagisan” was not the dominant element of the application for several reasons. Most importantly, he opined that the “Dr. Wolff’s” element in the application was at least of “equal distinctiveness” with its “Vagisan” element. Accordingly, the opposition failed on this ground.

Further, the opponent argued that the mark under the application was similar to the opponent’s marks, which were well-known marks, as per Section 8(4) of the Act. However, as the Registrar had found that the marks were dissimilar, the opposition also failed on this ground.

Finally, the opponent argued that the application should not be registered on the basis of passing off as per Section 8(7)(a) of the Act. For a passing-off claim to succeed, three elements must be established: (1) goodwill; (2) misrepresentation; and (3) damages. Even though the Registrar accepted that the opponent had goodwill in its business in Singapore, he found no misrepresentation after due consideration of the relevant factors: the extent of the similarity of the application and opponent’s marks; the overall impression of the marks; and the target audience(s). The Registrar held that consumers were not likely to be misled into believing that the applicant’s goods were the goods of the opponent or came from a source associated with the latter.

The opposition failed on all grounds and the application was allowed to proceed to registration. At the time of writing, an appeal from this decision to the High Court is pending.

This article was first published by the International Trademark Association on inta.org.