Singapore Trade Marks - Combe International Ltd v Dr. August Wolff GmbH & Co. KG Arzneimittel [2021] SGIPOS 10

Tribunal/Court:

IPOS

 

Type:

Opposition

 

Applicant’s Mark (Application Mark):

Singapore Trade Mark Application No. 40201816895W in the following classes:

• Class 3 [Toiletries, namely non-medicated cleansers for intimate personal hygiene purposes, vaginal moist crèmes and vaginal salves (not for medical purposes)]; and
• Class 5 [Medical preparations, namely, medicates ointments for vaginal application, vaginal anti-dermoinfectives suppositories and vaginal anti-dermoinfectives capsules; dietetic preparations and dietary supplements for preserving health of the vaginal mucosa; sanitary preparations and articles for vaginal application.]

 

Opponent’s Registered Marks:

1. 

Singapore Trade Mark No. T9804751Z in Class 3 [Cosmetics and toiletries for feminine use, lotions, powders, sprays, towels impregnated with non-medicated preparations, and washes; and all other goods in Class 3.]

2. 

Singapore Trade Mark No. T9804752H in Class 5 [Pharmaceutical preparations, medicated creams, and vaginal suppositories.]

3. 

Singapore Trade Mark No. T0813410H in Class 10 [Vaginal pH testing kits containing testing swabs and color guides; testing apparatus for sale in kit form [medical]; medical diagnostic testing apparatus; test apparatus for medical use; surgical, medical, dental and veterinary apparatus and instruments.]

4. 

Singapore Trade Mark No. T1112897J in Class 5 [Vaginal lubricants; and medicated products for feminine use, including medicated feminine anti- itch creams, and premoistened feminine hygiene wipes.]

5. 

Singapore Trade Mark No. 40201507713Y in the following classes:

• Class 3 [Feminine antiperspirant creams, gels, lotions, powders, and sprays; feminine deodorant creams, gels, lotions, powders, and sprays; nonmedicated feminine soothing creams, gels, lotions, powders, and sprays for the skin; nonmedicated douches; non-medicated moisturizers for the skin at the external vaginal area; nonmedicated pre-moistened feminine towelettes and wipes; non-medicated feminine hygiene washes.];

• Class 5 [Preparations for external and internal lubrication and moisturization of the vagina; medicated feminine anti-itch creams, gels, lotions, powders, and sprays for the skin; medicated douches; vaginal lubricants; vaginal moisturizers; medicated pre-moistened feminine towelettes and wipes; medicated feminine hygiene washes.]; and

• Class 10 [Massagers.]

 

Procedural History:

This trade mark opposition was commenced by Combe International Ltd, owner of the registered marks above in Class 03, 05 and 10 (i.e. for female personal care/hygiene products etc.) against Dr. August Wolff GmbH & Co. KG Arzneimittel, from registering the Application Mark in Class 03 and 05 for female personal care/hygiene products.

 

Claim(s)/Issue(s):

1. The Application Mark is similar to the Opponent’s Mark;
2. The Application Mark was passing off as the Opponent; and
3. The Opponent’s Mark is well – known.

 

Decision:

Opposition failed. Application Mark will proceed to registration. Applicant is entitled to costs to be taxed, if not agreed.

1. When observed in their totality, the Registrar has concluded that the Opponent’s marks are dissimilar as compared to the Applicant’s mark. It was found that both “Dr. Wolff’s” and “Vagisan” elements in the Application Mark were distinctive. Overall, the Registrar has found that the Application Mark and Opponent’s Marks to be:

   • Visually dissimilar;

   • Aurally dissimilar; and

   • Conceptually dissimilar.

2. The Opponent has also failed on the grounds of its marks being well-known as the similarity element must again be established. As seen above, the Registrar has concluded that the parties’ marks are dissimilar.

3. The Opponent has also failed on the grounds of passing off as even though the Opponent had goodwill in its business in Singapore, the Registrar opined that the elements of misrepresentation was not established. The following factors were considered in the conclusion on misrepresentation:

   • degree of similarity of the marks;

   • the impression given by the marks; and

   • the characteristics of the target audience. etc.