In a long-running international trade mark dispute over intimate care branding, the General Court of the EU recently upheld the Board of Appeal decision, finding a likelihood of confusion between Dr. Wolff’s Vagisan mark and Combe’s earlier Vagisil registrations. This decision not only reinforces how similarity in weakly distinctive elements can still give rise to confusion but also offers procedural clarification on the impact of Brexit-era marks in ongoing EU proceedings.
Background
In 2011, Dr. August Wolff GmbH & Co. KG Arzneimittel requested subsequent designation of the European Union for their International Registration for Vagisan for various cosmetic and pharmaceutical products in classes 3 and 5, including intimate healthcare products.
In 2017, Combe International, who is the proprietor of various earlier Vagisil registrations in, inter alia, the UK, Spain, Italy, Poland, and Portugal, sought to invalidate the Vagisan mark based on a likelihood of confusion with its Vagisil marks.
The EUIPO’s Cancellation Division upheld the invalidity based on Combe’s earlier UK marks on 11 September 2019, citing a likelihood of confusion under Article 8(1)(b) of the EUTMR. The EUIPO’s Board of Appeal confirmed the decision.
Dr. Wolff appealed this decision to the General Court, seeking its annulment.
The General Court’s decision
The case addressed two legal questions concerning the impact of Brexit as well as re-examining the Board of Appeal’s substantive findings on the likelihood of confusion.
Impact of Brexit
The impact of Brexit was examined from two different perspectives:
- The EUIPO asked the Court to declare that there was no need to adjudicate on the action following Brexit. Since the Board of Appeal upheld the Cancellation Division’s decision on the basis of two earlier UK marks, the expiry of the Brexit Transition Period rendered the action devoid of purpose. The earlier UK trade marks no longer constituted ‘trade marks registered in a Member State’. Therefore, no future conflict could arise between the earlier marks and the contested mark.
- Wolff argued that, beginning on 1 January 2021, the application for a declaration of invalidity based on Combe’s UK registrations was unfounded. After the end of the Brexit Transition Period, these registrations no longer enjoyed protection in the European Union. Since the decision of the General Court would be made after this date, the application for invalidity based on these marks was unfounded.
In both cases, the Court confirmed that the purpose of appeal proceedings was to review the legality of decisions of the Board of Appeal of the EUIPO.
As the contested decision was not formally withdrawn, the end of the transition period did not have the effect of retroactively eliminating the decision. Therefore, the Court confirmed that there was still a need to adjudicate.
Furthermore, an appeal is carried out in light of the factual and legal context of the dispute as it was brought before the Board of Appeal, and grounds that come into existence subsequent to its adoption (such as Brexit) do not pertain. Consequently, the Court confirmed that since the Board of Appeal decision was adopted prior to the end of the Brexit Transition Period, the changes in the validity of the rights post-Brexit were irrelevant.
Neither argument was effective.
Likelihood of Confusion
On the likelihood of confusion, the Court upheld the findings of the Board of Appeal. The Court confirmed that the marks Vagisan and Vagisil were visually and phonetically similar to an average degree and that the goods were identical or similar.
The Board of Appeal had, however, overestimated the distinctiveness of the marks as a whole. The Board of Appeal found that the common element “vagi” of the signs is a reference to the English word “vagina” and would allude to the purpose of those goods. While the element “vagi” might be perceived as alluding to the purpose of the goods at issue, the Court found that it wouldn’t be negligible in the overall impression. The Court considered that since “vagi” was placed at the beginning of both signs and had significant length and comprised two of three syllables in both of the marks, it would not be neglected in the overall impact. Dr. Wolff’s argument that the relevant public would focus on the endings, “sil” and “san” respectively, was not heard.
The Court concluded that there was a visual overlap in the letters “vagis” as well as the phonetic overlap with regard to the “vagi” elements, and a conceptual overlap with regard to the weakly distinctive element “vagi”.
Although the Board of Appeal had overestimated the distinctiveness of the marks as a whole, the weak distinctiveness of the element “vagi” was not sufficient to change the overall conclusion that there was a likelihood of confusion for the identical goods.
On this premise, the General Court dismissed the appeal. The decision of the EUIPO’s Board of Appeal remained in force, and the EU designation of IR 10985168 was invalidated.
Outlook
The questions the General Court answered with regard to Brexit may provide some reassurance for parties in currently pending cases. However – barring another Brexit-like event – they’re unlikely to be relevant to the vast majority of trade mark owners.
Beyond that, the decision is consistent with international case law (for a rundown on the 2023 UK decision concerning the same marks, see our blog here). EU case law regarding weak and non-distinctive elements is, however, inconsistent.
The EUIPO highlights this in their case law overview on weak and non-distinctive elements noting that “this line of case-law is still evolving and, in some aspects, the dichotomy [between findings of a likelihood of confusion and findings of no likelihood of confusion] remains”. This reflects an area of EU trade mark law where interpretations can be inconsistent, making it important for brand owners to take a cautious approach. Ensuring that trade mark applications are as distinctive as possible remains a sound strategy. It remains to be seen how this decision will impact future EU case law.
Dr. Wolff could request leave to file an appeal to the Court of Justice of the European Union. As of writing this blog, though, it doesn’t look like they have.
