Vagisil versus Vagisan and prefixes: takeaways for healthcare brand owners

The UK High Court recently handed down its judgment in Combe International v Dr August Wolff, finding that the Vagisan sign infringed the earlier Vagisil trade mark in relation to feminine healthcare products.

The decision raises a number of important points for healthcare brand owners:

• A prefix can have trade mark significance if it is not perceived as descriptive or a signposting term.
• Adding a house brand is not necessarily an easy get-out, particularly where that house brand comprises of "DR" plus a name. In the context of pharmaceutical or cosmetic brands, this is likely to indicate authenticity or likely effectiveness and not trade origin.
• Initiating trade mark invalidity proceedings against the registration of a mark effectively constitutes objecting to the use of the mark and enough reject a claim of acquiescence if filed within 5 years.

Background and key issues 

The claimants, Combe International, produce female healthcare products under the long-established Vagisil mark. The defendant, Dr August Wolff, initially launched Vagisan cream in the UK in 2013, but ramped up marketing in 2016 with a series of national TV ads. Both Vagisil and Vagisan products were stocked in Boots.

The case turned on:

• Whether the term "Vagi"  was a descriptive or signposting term of vaginal healthcare products. 
• Whether Combe acquiesced to Dr Wolff's use of Vagisan for a period of five years.

The High Court decision

Mr Justice Adam Johnson concluded that the average consumer would not have been accustomed to seeing Vagi as a signposting device in the female intimate health sector in 2013, in the same way as Opti, Pedi or Nico are in their respective sectors. The defendants' own trade witness could only identify one other product with the same prefix (Vagifem) being sold in the UK at that time, but this was a prescription only product.

Overall, the judge held that there was a likelihood of confusion, owing to: (i) the low attentiveness of the average consumer and (ii) the marks being "very, very similar". The judge also separately found that there was evidence of actual confusion.

With regard to acquiescence, the judge held that it was artificial to stress the word "use" in section 48 Trade Marks Act, which instead requires "some step which is directed toward preventing use per se".

He explained that seeking to invalidate a later mark (as Combe did at the EU Intellectual Property Office) is "objecting to the very existence of the mark on which the section 48 defence is based" as, if successful and the later mark is declared void, "then there never will have been any later mark at all for any other person to have made use of".

Rebranding rejected

The defendants' rebranding proposal ("Dr Wolff's Vagisan") was not held to alter the likelihood of confusion – the most distinctive element of the brand (Vagisan) would have remained and the brand Dr Wolff is not well known in the UK. The judge refused to give a declaration of non-infringement on this basis.

Osborne Clarke comment

The finding that trade mark invalidity proceedings constitute an objection to the use of the same mark and stop the clock on acquiescence provides welcome clarity for brand owners.  Invalidity proceedings should certainly be considered if trade mark infringement proceedings are not yet palatable.

The rejection of Dr Wolff's rebranding proposal is a somewhat surprising outcome, particularly given that the judge acknowledged that the addition of Dr Wolff's added both a degree of phonetic distinction and surnominal and possessive significance.

It does, however, underscore the weight given to words found to have an independent distinctive role in a composite mark. Here, the judge had found that the addition of Dr Wolff's was not enough to prevent the word Vagisan from having its own independent distinctive role, which gave it natural emphasis and distinction in the mark.

In light of this, Vagisan was held to be similar to Vagisil and that similarity suggested that the products came from the same or a commercially linked origin. The fact that Dr Wolff is not a well-known brand in the UK emphasised this finding. Brand owners looking to expand into the UK market should be aware of this finding.

Moreover, healthcare brand owners should be wary when seeking to add "Dr" followed by a name as a signifier of trade origin. Here, the judge found that the addition of "Dr" was likely to be understood as an indicator of authenticity and likely effectiveness of the product rather than its commercial origin.

Trainee Solicitor Anna Baines contributed as a co-author to this article.