In a warning to the brand that cried Wolff – Full Federal Court of Australia finds that common descriptive elements can be central to a comparative analysis of trade marks

10th May 2021

In overturning a first instance judgment of the Australian Federal Court to find that VAGISAN is deceptively similar to VAGISIL, the Full Court of the Federal Court of Australia (Full Court) has stressed that the “central idea” of a trade mark – particularly if it is a striking feature – is central to a deceptive similarity analysis, and that descriptive elements shared by two trade marks should not be automatically disregarded when comparing the marks.  

Background

The decision in Combe International Ltd v Dr August Wolff GmbH & Co. KG Arzneimittel [2021] FCAFC 8 is the culmination of an ongoing battle that has taken place in various forums over the past five years – the Australian Trade Marks Office, the Federal Court and – most recently – the Full Court. An application by Dr August Wolff GmbH & Co. KG Arzneimittel (Dr Wolff) for the VAGISAN trade mark in May 2015 was opposed by Combe International Ltd (Combe), a US company that holds a prior registration for VAGISIL for the same or similar goods.  

Given what it knows now and the protracted and expensive nature of the proceedings, Dr Wolff could be forgiven for wishing it had accepted the Australian Trade Marks Office’s initial decision back in 2017, when it refused the application on the basis of Combe’s prior reputation in VAGISIL. However, at that time the law was arguably unclear.

At first instance, the Federal Court disagreed with the Trade Marks Office, finding that VAGISAN was not deceptively similar to VAGISIL, and that Combe had failed to establish any ground of opposition.

A successful appeal by Combe resulted in the ultimate refusal of the application for VAGISAN. The Full Court disagreed with the primary judge’s approach, and has shed light on some of the key factors to consider when assessing deceptive similarity.

The shared presence of descriptive elements and a “commonality of idea”

It was established at first instance that the trade marks claimed the same or similar goods. The appeal therefore turned on an analysis of whether the marks are deceptively similar. 

The Full Court gave the following reasons in its unanimous finding of deceptive similarity:

• Given they share the same first five letters and are each comprised of three syllables with similar suffixes, the two marks are visually and aurally similar;
• The shared presence of the terms “VAG” and “VAGI” represent a “commonality of idea” between the marks – an element which together with visual or aural similarity, forms part of the overall analysis;
• The terms “VAG” and “VAGI” are striking features of the trade marks which, although descriptive, are the dominant aspects of the marks which consumers are most likely to recall – and as a result be caused to wonder whether the goods are associated with the same trader.

Implications for trade mark owners and applicants

• An analysis of deceptive similarity must look at the relevant trade marks in their entirety, including the “idea” of the marks, visual and aural similarity, and the particular facts in each case.
• There is no basis to assume that descriptive elements shared between two marks will be ignored for comparison purposes – particularly if those elements allude to a striking or unusual meaning which consumers are more likely to recall.
• Finally – this case serves as a general reminder to companies considering brand expansion to apply for trade marks internationally at the earliest possible stage. A failure to take this step before expanding into new markets can result in protracted trade mark disputes across a number of jurisdictions.