What makes a trade mark deceptively similar when the words are similar?

The Full Court of the Federal Court recently handed down a decision which gave significant guidance in relation to what needs to be considered when a claim is made objecting to a trade mark where it is alleged the word/s are deceptively similar.

In the judgment the Full Court rejected an argument that the word VAGISAN was not similar to the word VAGISIL.

The case Combe International Ltd v Dr August Wolff GmbH & Co. KG Arzneimittel [2021] FCAFC 8 involved an application by Dr August Wolff GmbH & Co. KG Arzneimittel (Wolff) a German pharmaceutical company to register the name VAGISAN.

Combe International Ltd (Combe) is a US company that markets and sells a range of personal cleansing, health and grooming products and is the owner of prior registrations for or incorporating the word VAGISIL.

Combe had registrations in the following classes:

• 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.

Wolff filed an application for the word in two classes of goods:

• Class 3 – soaps and cosmetics all aforementioned goods not for the indication and application of tired legs and/or arms; and

• Class 5 – Pharmaceutical products, sanitary products for medical purposes; dietetic substances for medical purposes, all aforementioned goods not for the indication and application of tired legs and/or arms.

The application by Wolff was originally refused by the Register of Trade Marks on the basis of Combes prior use and reputation to VAGISIL.

Combe then appealed to the Federal Court and the Judge found that Combe:

• had failed to establish any ground for the objection on the basis that VAGISAN and VAGISIL could likely indicate products used in relation to the female genital area. The judge stated that the prefixes VAG and VAGI are descriptive, and that, as a consequence, the words VAGISAN and VAGISIL do not have a close phonetic resemblance and do not lend the words to mispronunciation. Further the Judge found the suffixes SIL and SAN are quite distinct; and
• had not been able to establish that a significant or substantial numbers of consumers might be conceived or deceived.

Combe appealed the decision to the Full Court of the Federal Court (Court) where it was successful. 

The Court outlined three important issues that need to be considered when a trade mark with a similar name is registered:

1. Firstly, the Court observed that the words have the same first five letters. VAGIS is followed by only two letters, AN, which come at the tail of the word. Combe’s prior marks are VAGIS followed by the two letters IL. VAGISAN has three syllables as does VAGISIL with VAGIS in both pronounced in the same way. Both marks look very similar, with only the final letters, AN or IL, to distinguish the two. An ordinary consumer, imperfectly recalling the VAGISIL mark and encountering VAGISAN is likely to remember some, but not all aspects of the former. A distinctive component of VAGISIL is the first two syllables. These are likely to be remembered. In speech the marks sound very similar. The first two syllables are the same. The final syllables SIL and SAN are both sibilant. The only difference in sound lies at the end of the word, which may be mispronounced or slurred or less readily recalled as the first parts of the word.
2. Secondly, to the extent that consumers consider the meaning of the made up word, they may, depending on the context and the goods to which it is applied, consider VAG or VAGI to be a reference to the vagina. That is a potent “idea” that sits in common for both VAGISAN and VAGISIL. The idea of a mark has a role to play in the analysis of deceptive similarity, although, as with many such tests, it forms only part of the overall analysis required to satisfy the statutory requirements of s 10 of the Trade Marks Act 1995 (Act). An absence of visual or aural similarity is likely to lead to a conclusion that the two marks are not deceptively similar, despite similarity of idea. in this case, the VAGISAN and VAGISIL marks also have visual and aural similarity.
3. Thirdly, similarity for the purposes of s 44(1) of the Act is not to be considered having regard to actual use, but rather to the extent of the monopoly sought.  the primary judge appeared to wrongly assume 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. However, 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.

Conclusion

The Court has provided valuable guidance on what should be considered when assessing whether a trade mark is deceptively similar.

It is important when considering a trade mark, the actual mark should be considered in its entirety.

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