Federal Court of Australia

Combe International Ltd v Dr August Wolff GmbH & Co. KG Arzneimittel [2021] FCAFC 8

ORDERS

THE COURT ORDERS THAT:

1.    The application for leave to appeal under s 195(2) of the Trade Marks Act 1995 (Cth) be allowed.

2.    The appeal be allowed.

3.    Orders 1, 2 and 4 of the Orders made by the primary judge on 18 February 2020 be set aside.

4.    Orders 1, 2 and 3 of the Orders made by the primary judge made on 29 May 2020 be set aside.

5.    Australian Trade Mark Application No 1701217 be refused registration.

6.    The respondent pay the appellant’s costs of the primary proceeding.

7.    The respondent pay the appellant’s costs of and incidental to the application for leave to appeal and the appeal.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

THE COURT:

1.    INTRODUCTION

1    This is an application for leave to appeal from a judgment of a single judge of this Court, allowing an appeal by the respondent (Dr Wolff) from a decision of the delegate of the Registrar of Trade Marks under s 56 of the Trade Marks Act 1995 (Cth) (Act): Dr August Wolff GmbH & Co. KG Arzneimittel v Combe International Ltd [2020] FCA 39. Leave is required pursuant to s 195(2) of the Act.

2    The application for leave and the appeal were heard together. The applicant/appellant (Combe) is the owner of various marks consisting of or including the word VAGISIL. It contends that the primary judge erred by finding that Combe’s s 44 and s 60 grounds of opposition to Dr Wolff’s application for registration of the trademark VAGISAN were not made out.

2.    BACKGROUND TO APPLICATION AND APPEAL

3    The following facts, set out in the primary judge’s reasons at [15]-[20], are not in dispute:

[15] Dr Wolff is a German pharmaceutical company that was founded in 1905. It supplies medicinal, cosmetic and dermatological products in and outside Europe.

[16] Among Dr Wolff’s products are those offered for sale and sold under the VAGISAN mark – first in Germany, since 1998, and thereafter progressively in other countries. By 2015, there were 18 such countries. The products include a range of feminine hygiene products said to be for application in the female genital area.

[17] Dr Wolff developed the name VAGISAN in 1994 for a new product developed to treat vaginal flora imbalances. It is a portmanteau of “vagina” and “sanify”. The latter is said to be derived from the Latin, sanus, for health.

[18] Dr Wolff has sought, and in many cases obtained, trademark registrations in jurisdictions around the world in respect of the name VAGISAN.

[19] Combe is a global personal-care company that was founded in the United States of America in 1949. It has developed and marketed a numbered [sic] of different products over the years. The products might be described as being personal cleansing, health and grooming products. Combe markets the products under brand names rather than under the name Combe.

[20] For example, it developed the product known as CLEARISIL which was launched in 1951 and later sold to Vick Chemical Company. Other brands include JUST FOR MEN, BRYLCREAM and, obviously, VAGISIL.

4    By an application filed on 27 May 2015, Dr Wolff sought to register the mark VAGISAN in Australia in respect of the following goods (definitions added):

Class 3: Soaps, cosmetics, all aforementioned goods not for the indication and application of tired legs and/or arms (class 3 goods)

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 (class 5 goods)

5    Combe opposed Dr Wolff’s application pursuant to s 52 of the Act. On 29 September 2017, the Registrar’s delegate upheld Combe’s ground of opposition on the basis of s 60 of the Act, but rejected grounds of opposition advanced pursuant to ss 44, 42(b) and 62A: Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2017] ATMO 110. By an appeal de novo to this Court under s 56 of the Act, Dr Wolff appealed the delegate’s decision in relation to the s 60 ground. By cross-appeal, Combe contended that the opposition ought to be upheld under ss 44 and 59 as well as the s 60 ground upheld by the delegate.

6    In relation to the s 44 ground of opposition, the trade marks identified in the table below (VAGISIL marks) were relied upon by Combe:

7    The primary judge rejected the grounds of opposition under ss 44, 59 and 60 and ordered (subject to a stay pending appeal) that the application proceed to grant. The primary judge also ordered that Combe pay the costs of the proceedings, and the proceedings before the delegate: Dr August Wolff GmbH & Co. KG Arzneimittel v Combe International Ltd (No 2) [2020] FCA 730.

3.    APPLICATION FOR LEAVE

8    Combe seeks leave to appeal on the following grounds:

(1)    The primary judge’s decision is attended with sufficient doubt to warrant its reconsideration by the Full Court on the grounds set out in the draft notice of appeal.

(2)    Substantial injustice would result if leave were refused, as the concurrent registration and use in Australia of the trademarks VAGISIL and VAGISAN for the same or similar goods:

(a)    is likely to confuse consumers;

(b)    compromises the integrity and purity of the Register of Trade Marks; and

(c)    adversely affects the interests of Combe as the owner of the rights conferred on it under s 20 of the Act by the registration of its prior VAGISIL mark.

9    In Bauer Consumer Media Ltd v Evergreen Television Pty Ltd [2019] FCAFC 71; 367 ALR 393 at [282], Burley J (Greenwood J agreeing) set out the following applicable principles on an application for leave to appeal under s 195(2):

In a pre-grant opposition proceeding, where there have been two hearings before a skilled specialist administrator in the Trade Marks Office and before a judge of the Court, with the latter, if not both the former and the latter, dismissing the opposition, the Full Federal Court should exercise its discretion to grant leave to appeal under s 195(2) of the Act with care; Pfizer Corp v Commissioner of Patents [2006] FCAFC 190; (2006) 155 FCR 578 (Emmett, Allsop and Greenwood JJ) at [8]. Leaving aside applications for leave on a question of pure law, in the context of essentially undisputed facts, and subject always to considerations of fairness and the interests of justice raised by a particular case, leave to appeal against a decision rejecting a pre-grant opposition will often be granted only where the applicant has demonstrated a clear prima facie case of error in the decision appealed from, such that the likely effect of that decision would be to allow an invalid trade mark to proceed to grant; Pfizer Corp at [8]; Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170; (2001) 52 IPR 382 (Moore, Tamberlin and Goldberg JJ) at [39]-[45]. In the present case I have had the benefit of full argument on the appeal and have concluded, for the reasons stated, that the circumstances warranting the grant of leave have been met.

10    The proposed grounds of appeal relied upon by Combe are, in summary, that the primary judge erred in the assessment of deceptive similarity between the words VAGISIL and VAGISAN for the purposes of:

(1)    s 44 of the Act; and

(2)    s 60 of the Act.

11    Combe also contends that the primary judge erred in his decision that it should pay Dr Wolff’s costs.

12    The correct approach to the consideration of whether there is error by a primary judge has been addressed in a number of decisions. In Christian v Société Des Produits Nestlé SA (No 2) [2015] FCAFC 153; 327 ALR 630 at [123], the Full Court (Bennett, Katzmann and Davies JJ) said:

The determination of whether a sign used as a trade mark is deceptively similar to a registered trade mark involves an evaluative exercise upon which reasonable minds might differ. An appellate court can only intervene “if it is first shown that [the] assessment was affected by error of law or fact”: Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9 at [92]. Questions of judgment, nuance and degree are involved. Moreover, in a case of this kind, absent an error of principle, and unless the appeal court comes to an affirmative conclusion that the decision of the primary judge is wrong, weight should be given to the primary judge’s opinion: S & I Publishing Pty Ltd v Australian Surf Life Saver Pty Ltd (1998) 88 FCR 354 at 361.

13    Where the process of evaluation by the primary judge has miscarried, the Full Court should carry out its own evaluation: Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83; 251 FCR 379 at [55] (Greenwood, Jagot and Beach JJ); Aldi Foods Pty Ltd v Moroccanoil Israel Ltd [2018] FCAFC 93; 261 FCR 301 at [2]-[10] (Allsop CJ (Markovic J agreeing)).

14    In Aldi Foods Perram J said (Allsop CJ and Markovic J agreeing):

[49] ... [The court] must be guided not by whether it disagrees with the finding (which would be decisive were a question of law involved) but by whether it detects error in the finding. On the one hand, error may appear syllogistically where it is apparent that the conclusion which has been reached has involved some false step; for example, where some relevant matter has been overlooked or some extraneous consideration taken into account which ought not to have been. But error, on the other hand, may also appear without any such explicitly erroneous reasoning. The result may be such as simply to bespeak error. Allsop J said in such cases an error may be manifest where the appellate court has a sufficiently clear difference of opinion: Branir at 437-438 [29].

[50] There may seem an element of circularity in this, but the sufficiently clear difference of opinion bespeaks not merely that the appellate court has a different view to the trial judge but that the trial judge’s view is wrong even having regard to the advantages enjoyed by the trial judge and even given the subject matter: Branir at 435-436 [24].

See also Homart Pharmaceuticals Pty Ltd v Careline Australia Pty Ltd [2018] FCAFC 105; 264 FCR 422 (Murphy, Gleeson and Markovic JJ) at [35]-[37]; Verrocchi v Direct Chemist Outlet Pty Ltd [2016] FCAFC 104; 247 FCR 570 (Nicholas, Murphy and Beach JJ) at [45]-[47]; Hashtag Burgers Pty Ltd v In-N-Out Burgers, Inc [2020] FCAFC 235 (Nicholas, Yates and Burley JJ) at [8].

15    The task of an appellate court in reviewing an evaluative assessment was explained by Allsop J (as his Honour then was) in Branir Pty Ltd v Owston Nominees (No 2) Pty Ltd [2001] FCA 1833; 117 FCR 424 at [28]-[29] (Drummond and Mansfield JJ agreeing):

[28] … First, the appeal court must make up its own mind on the facts. Secondly, that task can only be done in the light of, and taking into account and weighing, the judgment appealed from. In this process, the advantages of the trial judge may reside in the credibility of witnesses, in which case departure is only justified in circumstances described in Abalos v Australian Postal Commission (1988) 171 CLR 167; Devries v Australian National Railways Commission (1993) 177 CLR 472 and SRA v Earthline, supra. The advantages of the trial judge may be more subtle and imprecise, yet real, not giving rise to a protection of the nature accorded credibility findings, but, nevertheless, being highly relevant to the assessment of the weight to be accorded the views of the trial judge. Thirdly, while the appeal court has a duty to make up its own mind, it does not deal with the case as if trying it at first instance. Rather, in its examination of the material, it accords proper weight to the trial judge’s views. Fourthly, in that process of considering the facts for itself and giving weight to the views of, and advantages held by, the trial judge, if a choice arises between conclusions equally open and finely balanced and where there is, or can be no preponderance of view, the conclusion of error is not necessarily arrived at merely because of a preference of view of the appeal court for some fact or facts contrary to the view reached by the trial judge.

[29] The degree of tolerance for any such divergence in any particular case will often be a product of the perceived advantage enjoyed by the trial judge. Sometimes, where matters of impression and judgment are concerned, giving “full weight” or “particular weight” to the views of the trial judge might be seen to shade into a degree of tolerance for a divergence of views [citations omitted] … However, as Hill J said in Commissioner of Taxation (Cth) v Chubb Australia (1995) 56 FCR 557, 573 “giving full weight” to the view appealed from should not be taken too far. The appeal court must come to the view that the trial judge was wrong to interfere. Even if the question is one of impression or judgment, a sufficiently clear difference of opinion may necessitate that conclusion.

16    As in Bauer, this Court has had the benefit of full argument on the appeal. For the reasons developed below, we consider that it is appropriate to grant leave to appeal and, in the result, to allow the appeal.

4.    SECTION 44 (DECEPTIVELY SIMILAR TRADE MARK)

17    By s 57 of the Act, the registration of a trade mark may be opposed on any of the grounds on which an application for the registration of a trade mark may be rejected.

18    Section 44(1) of the Act provides relevantly:

(1) …an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

(a) the applicant's trade mark is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of similar goods or closely related services; or

(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1: For deceptively similar see section 10.

Note 2: For similar goods see subsection 14(1).

…

19    Section 10 provides:

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

20    Section 14(1) provides:

For the purposes of this Act, goods are similar to other goods:

(a) if they are the same as the other goods; or

(b) if they are of the same description as that of the other goods.

21    For present purposes, s 44(1) broadly invites the following questions to be answered: is the trade mark application substantially identical with or deceptively similar to a prior trade mark? Is the application in respect of similar goods to those of the prior trade mark? In relation to the latter, Dr Wolff accepted before the primary judge that, of the goods designated in the VAGISAN application, the class 3 goods (soaps and cosmetics) are, for the purposes of s 14 of the Act, of the same description and therefore similar to goods designated in some of the prior registrations of the VAGISIL marks. Dr Wolff disputed that the class 5 goods were goods of the same description as those included within the prior registrations of the VAGISIL marks. The primary judge rejected that contention, concluding that the class 5 goods, namely pharmaceutical products, sanitary products for medical purposes and dietetic substances for medical purposes (in each case excluding goods for the indication and application of tired legs and/or arms), are the same as or are of the same description as goods covered by the VAGISIL marks. That finding is not now challenged by Dr Wolff, with the consequence that the sole issue under s 44(1) in the present application is whether or not the VAGISAN application is deceptively similar to the VAGISIL marks.

22    In its draft Notice of Appeal Combe contends that the primary judge erred in the assessment of whether there is a deceptive similarity between the words VAGISIL and VAGISAN in the following two respects:

(1)    at [49] to [59] of his Honour’s reasons by, in effect:

(a)    comparing the two words side by side;

(b)    engaging in a meticulous comparison of the two words, letter by letter and syllable by syllable with a clear pronunciation;

(c)    failing to give proper consideration to the notional consumer’s imperfect recollection of VAGISIL;

(d)    failing to give proper regard to the importance of the first syllable of each word and the tendency of English speakers to slur the endings of words;

(e)    breaking each word into component parts, assessing the descriptive and distinctive qualities of those parts and thus failing to pay proper regard to the whole of each mark;

(f)    failing to assess the whole of each mark as a coined term with no actual meaning; and/or

(g)    assessing the SAN element of VAGISAN as a distinctive and not descriptive feature, despite finding that SAN is readily understood as a reference to sanitary.

(2)    at [71] of his Honour’s reasons, by giving insufficient weight to the high-volume, low-value nature of the goods covered by the prospective registration.

23    In ground (3), Combe contends that by reason of the errors identified in grounds (1) and (2) the primary judge erred in finding that the ground of opposition based on s 44 of the Act was not made out.

24    On appeal, Combe does not rely on its prior registrations of the 1494391 or 1490519 trade marks for the s 44 ground.

4.1    Deceptive similarity

25    In Australian Woollen Mills Ltd v F.S. Walton & Co Ltd [1937] HCA 51; 58 CLR 641 at 659 Dixon and McTiernan JJ emphasised that the determination for the Court to make is one of estimation and evaluation:

The main issue in the present case is a question never susceptible of much discussion. It depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs.

26    The summary provided by Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66; 109 CLR 407 at 415 also encapsulates the approach required:

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question.  The marks are not now to be looked at side by side.  The issue is not abstract similarity, but deceptive similarity.  Therefore the comparison is the familiar one of trade mark law.  It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions.

27    The distinction between consideration of whether one mark is deceptively similar to another, rather than substantially identical, lies in the point of emphasis on the impression or recollection which is carried away and retained of the registered mark. In this context, allowance must be made for the human frailty of imperfect recollection. In New South Wales Dairy Corporation v Murray Goulburn Co-operative Company Ltd [1989] FCA 124; 86 ALR 549, in a passage in his judgment not affected by the proceedings on appeal, Gummow J said at 589:

In determining whether MOO is deceptively similar to MOOVE, the impression based on recollection (which may be imperfect) of the mark MOOVE that persons of ordinary intelligence and memory would have, is compared with the impression such persons would get from MOO; the deceptiveness flows not only from the degree of similarity itself between the marks, but also from the effect of that similarity considered in relation to the circumstances of the goods, the prospective purchasers and the market covered by the monopoly attached to the registered trade mark:  Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414–15; Polaroid Corp v Sole N Pty Ltd [1981] 1 NSWLR 491 at 498. The latter case is also authority (at 497) for the proposition that the essential comparison in an infringement suit remains one between the marks involved, and that the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit.

28    The respective marks should not be compared side by side because purchasers in the market may not ordinarily have the opportunity of comparing them in that way. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected: Australian Woollen Mills at 658 (Dixon and McTiernan JJ); Jafferjee v Scarlett [1937] HCA 36; 57 CLR 115 at 121-2 (Latham CJ); Shell Company at 415 (Windeyer J).

29    Each of the marks must be judged as a whole: Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15; 86 CLR 536 at 538 (Dixon, Williams and Kitto JJ); Re Johnson and Johnson v Kalnin [1993] FCA 279; 114 ALR 215 at 220-221 (Gummow J). In Cooper Engineering, the High Court stated (at 538):

The proper approach to the answer to this question is well settled. It was summed up by Lord Parker (then Parker J.) in In the Matter of an Application by the Pianotist Company Ltd. for the Registration of a Trade Mark (1906) 23 RPC 774, in a passage appearing on p 777 , “You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion - that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods - then you may refuse the registration, or rather you must refuse the registration in that case.” To the same effect see Australian Woollen Mills Ltd. v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641, at p 658; Reckitt & Colman (Aust.) Ltd. v. Boden (1945) 70 CLR 84, in this Court.

30    In considering whether the sound of one word resembles too nearly the sound of another, little assistance is to be obtained from a “meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution”: Aristoc Ltd v Rysta Ltd [1945] AC 68; 62 RPC 65 at 84 (Lord Simonds); Reckitt & Colman(Australia) Ltd v Boden [1945] HCA 12; 70 CLR 84 at 98; Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196; 209 ALR 1 at [77] (Moore, Sackville and Emmett JJ).

31    In Aristoc, Lord Simonds stated at 84:

A comparison of the two words “Rysta” and “Aristoc”, syllable by syllable, may be necessary as a test, though it will serve to emphasize differences rather than similarities. But I think that the truer test is to take the hypothetical case of a saleswoman, who has heard of “Rysta” stockings but not of “Aristoc” stockings, being asked by a customer whether she has any “Aristoc” stockings. Is there in such a case a reasonable possibility that she will think that it is “Rysta” stockings for which the customer is asking? The answer is necessarily one of first impression, but no doubt is left in my mind that there is a real danger of confusion. It is easy perhaps to exaggerate the risk of careless pronunciation, but it may at least be said that the standard of ordinary speech is not the precise articulation of the perfect announcer and that the inquiry for one article or the other will not be made in the quiet atmosphere of the studio.

32    The test is whether the result of the impugned trade mark’s use will be that “a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source”: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; 91 CLR 592 at 595, 608; applied to s 44 of the Act in Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; 93 FCR 365 at [50(ii)] (French J, Tamberlin J agreeing).

33    It is not necessary to establish that confusion is more probable than not, so long as there is a finite, non-trivial danger of confusion: Woolworths at [43] (French J, Tamberlin J agreeing). As Kitto J explained in Southern Cross at 595, “[i]t is enough if the ordinary person entertains a reasonable doubt”. It is also not necessary to establish that such confusion persists up to the point of sale or that actual purchasers will ultimately be deceived: Southern Cross at 596.

4.2    Primary judge’s reasons

34    At the outset of the judgment the primary judge referred to dictionary definitions to attribute meaning to the word “Vag” (at [1]-[2]):

[1] Vag is a slang word used as a noun meaning vagina or vulva (OED Online (Oxford University Press, December 2019)). The origins of the English word vagina, from which vag is obviously derived, are French and Latin (OED). It is thus likely that there are many other languages in which the use of vag would in colloquial or slang usage be a reference to vagina. Examples include vagin in French and vagina in German, Dutch, Spanish and Portuguese. But even leaving aside colloquial and slang usage, vag is a convenient and obvious shortened form of reference for vagina.

[2] Doubtless for that reason, there are traders of what were euphemistically referred to in this proceeding as “feminine hygiene products for the intimate area” that use the prefix “vag-” in the names of their products. The parties to this proceeding are traders of such products and sell them under the names VAGISAN and VAGISIL. This case is a contest between trade marks that include those words which is each intended to reference the vagina.

35    After addressing matters of background, to which we have referred, his Honour turned to consider the disputed question of deceptive similarity. At [41] to [46], the primary judge set out relevant legal principles in terms that are not challenged by Combe.

36    At [47], his Honour set out the following similarities between the VAGISAN and VAGISIL marks relied upon by Combe to contend that the VAGISAN mark was deceptively similar to the VAGISIL marks within the meaning of s 10 of the Act:

 (1)     they all have the same first five letters, VAGIS;

(2)     in each of the marks, VAGIS is followed by two more letters, so that each mark is seven letters long;

(3)     they each have three syllables – VA and GI being the first two and the same and then the third in each case starting with the same letter, S;

 (4)     the VAGIS part of each of the marks would be pronounced the same way; and

(5)     all of the marks (except for 1490519 and 1494391) are word marks, so that they can be used with any stylisation.

37    At [48], the primary judge addressed the pronunciation of the two marks, finding that:

VAGISIL is pronounced … as follows, VAG·I·SIL. A similar pronunciation of VAGISAN seems to me to be most natural, i.e. VAG·I·SAN. That pronunciation gives recognition to VAG as a distinct sound which, as I identified as the outset, references the vagina. But even if the word is most naturally pronounced VA·GI·SAN, as was submitted, the distinct element comprised of the first two syllables, VAGI, also obviously references the vagina.

38    His Honour then proceeded to consider deceptive similarity at [49]-[50]:

[49] In my view, in respect of both the VAGISAN mark and the VAGISIL marks, the central idea conveyed by the marks is the vaginal reference. They are likely to be understood as being associated with products that have something to do with the vagina.

[50] However, that is not to say that the distinctive features of the marks are the same. The central idea, VAG, or even VAGI, is descriptive. It is what follows that is distinctive. In the case of the VAGISAN mark it is the idea or association conveyed by SAN which I regard to be readily understood as a reference to sanitary or some other word of similar derivation such as sanify or sanitation. It thus conveys an association with health and cleanliness.

[51] The VAGISIL marks do not have the same distinctive feature. The descriptive element, VAG, or VAGI, is the same but the suffix SIL does not convey anything in particular. SIL as a suffix is, however, not unknown in the market. As indicated above, Combe invented and for many years marketed the well-known product CLEARASIL before selling it, and it trades a pharmaceutical or healthcare product known as VALIDOSIL. The descriptive element of VAGISIL, VAG or VAGI, is not the distinctive element precisely because it is descriptive. It is what comes with it, and the combination of the two, that is distinctive about the mark.

39    The primary judge then addressed two of the Combe trade marks that incorporated a stylised “V” feature, which are not pressed as relevant to the proposed ground of appeal, before returning more generally to his findings as follows (at [54]):

… for the reasons already given, in my view the words VAGISIL and VAGISAN are not deceptively similar. That is substantially because the distinctiveness of the mark comes from SIL in the neologism VAGISIL.

40    It is apparent that in reaching this conclusion his Honour had regard to the pronunciation of the respective marks (at [48]), the idea or meaning of the respective marks (at [49]-[51]) and the distinctive elements of the marks, being respectively SIL and SAN (at [50]-[51]). His Honour then developed his reasoning in relation to the points of distinctiveness at [55]:

In the above regard, where the common element of two marks is descriptive or of limited distinctiveness or in common use in the trade, it should be paid less attention, and greater weight must be given to the additional features of the marks in question.

41    In support of this proposition, the primary judge referred to several authorities, including: Mond Staffordshire Refining Co Ltd v Harlem [1929] HCA 6; 41 CLR 475 at 477, where the High Court (Knox CJ, Gavan Duffy and Starke JJ) found that it was relevant that the names of a number of medicines and pharmaceutical preparations ended in “sol” or “ol”; MID Sydney Pty Ltd v Australian Tourism Co Ltd [1998] FCA 1616; 90 FCR 236, where the Full Court (Burchett, Sackville and Lehane JJ) found that the ordinary person would have general knowledge that the name “Chifley” had been applied in several contexts; and Australian Meat Group Pty Ltd v JBS Australia Pty Ltd [2018] FCAFC 207; 268 FCR 623, where another Full Court (Allsop CJ, Besanko and Yates JJ) found that the letters “AM”, in the context of the Australian meat industry, are likely to be understood as denoting the words “Australian meat”.

42    The primary judge concluded on this point at [58] (emphasis added):

As with OPTUM and OPTUS in Singtel Optus Pty Ltd v Optum Inc [2018] FCA 575; 140 IPR 1 (at [138]), whilst VAGISAN and VAGISIL are both single words with the same prefix, the words do not have a close phonetic resemblance and neither of the words lends itself to mispronunciation. Moreover, whilst the words only differ in the last letters, both words are invented words and the suffixes SIL and SAN are quite distinct.

43    At [59], the primary judge returned to the question of aural similarity:

Insofar as aural similarity is concerned, I do not consider that VAGISIL and VAGISAN are sufficiently close in the way in which they sound to give rise to confusion. Although the initial sounds VAG and I or VA and GI are the same, SIL and SAN are quite distinct. The result is that the word marks sound quite different from each other compared to other marks that have been held to be deceptively similar at least in part because they sound the same or very similar. Examples are VAPORUB and VAPOUR RUB (De Cordova v Vick Chemical Company (1951) 68 RPC 103; 1B IPR 496); DITHANE and DITRENE (Shell Company of Australia Ltd v Rohm and Haas Co [1948] HCA 27; (1949) 78 CLR 601); BURLEY and BARLEY (Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; 129 CLR 353); and TIVO and VIVO (Vivo International Corporation Ptd Ltd v Tivo Inc [2012] FCAFC 159; 99 IPR 1).

44    The primary judge then referred to the evidence of Ms Thevessen, Dr Wolff’s export manager, which was to the effect that vaginal dryness is an embarrassing or taboo subject and that cross-culturally women differ substantially in the likelihood of discussing the issue with a physician, the implication being that the same is true of other vaginal maladies, real or perceived. His Honour also noted that the evidence of a survey conducted in Germany showed that more than half of the purchasers of such products bought them without the advice or intervention of a healthcare professional (at [61]).

45    In this regard his Honour noted the submission advanced on behalf of Dr Wolff that consumers of the types of products referred to in the evidence of Ms Thevessen are likely to be particularly discerning about, and to pay attention to, the products that they apply to their vulvas or in their vaginas. Whilst such consumers may not linger at the shelves of the notional supermarket or pharmacy and study the product and its packaging carefully, and they may be embarrassed to raise the issue with a healthcare professional, they are likely to have made a study of the products available on the market and to know what product they intend to purchase in advance of entering the store (at [64]). The primary judge also records the submission advanced on behalf of Combe to the effect that there is a greater likelihood of confusion between the respective products than what might otherwise be the case because the notional consumer is not likely to take time at the shelves to pay attention to differences that there may be between the mark on the goods in front of them and their imperfect recollection of the competing marks (at [63]).

46    The primary judge then set these submissions to one side, correctly observing that the VAGISAN application is not limited to intimate healthcare products of the nature of those actually traded by Dr Wolff and Combe, but to a broader range of goods (at [66]). He said at [67]:

The point is that although, in considering whether there is a likelihood of deception or confusion, all surrounding circumstances have to be taken into consideration which include the circumstances in which the mark will be used, that must be considered in respect of all the goods coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained. See Berlei Hestia at 362; Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12; 202 CLR 45 at [72]; Telstra Corporation Ltd v Phone Directories Company Australia Pty Ltd [2015] FCAFC 156; 237 FCR 388 at [192(9)].

47    Furthermore, his Honour noted that the evidence did not establish that consumers of the type of products in question are not likely to pay particular attention to what they are purchasing. He considered the proposition that a woman is likely to pay little attention to the particulars of any product that she might put in her vagina or on her vaginal area inherently lacked credibility (at [68]).

48    At [70] and [71] the primary judge addressed a submission on behalf of Combe that the relevant products are “high-volume, low-value products with the result… that a typical consumer is not likely to spend much time or attention on the particular mark on the product and the differences between that mark and the competing mark of which they have a notionally incomplete memory”. At [71], his Honour concluded:

Leaving aside the evidence on this question, which seems to be particularly weak given the different markets (United Kingdom and Australia), unproven exchange rates and the absence of any evidence on likely retail sale prices in Australia, and that the actual products presently traded by VAGISAN are not particularly relevant to the enquiry, I accept that the types of products described in the specifications are most likely of a high-volume, low-value nature. Experience suggest[s] that that is generally the nature of products within the product descriptions for which Dr Wolff seeks registration. Whilst the Australian dollar equivalent of a product sold at £14.99 is likely to be sufficient to cause the average consumer to pause and possibly even to plan before buying it, it is not a high value good that might ordinarily require savings or borrowings. There is therefore some force in the submission but I do not consider that it outweighs the other considerations I have identified.

49    The primary judge next considered evidence of prior trade mark registrations in classes 3 and 5 of the Trade Marks Register that incorporate VAGI or VAG, noting Combe’s submission that there was no evidence that they had any reputation in the market as actually being used or that the ordinary consumer was familiar with them. His Honour appeared to accept that such evidence was not relevant to the assessment of deceptive similarity (at [72]).

50    The primary judge found (at [72]) that there was evidence of the sale of products, albeit in small quantities, in pharmacies as at the priority date under the names VAGICARE, VAGITEST and ECOVAG in the category “feminine care” and concluded at [74]:

The significance of the evidence of the registrations and the limited sales of the limited products is not in relation to the knowledge or understanding of the ordinary consumer of existing trade marks and therefore of their capacity for confusion. It is rather in its support of the notion that the word or prefix VAG or the prefix VAGI- are likely to be understood by the ordinary consumer to be references to the vagina, and are therefore descriptive. The fact that many traders seek to register VAG or VAGI in relation to particular types of feminine healthcare products is indicative of that likely understanding.

51    On the basis of these matters, the primary judge concluded at [75] that Combe had not established the second component of the s 44 ground of opposition, namely that VAGISAN is deceptively similar to VAGISIL.

4.3    Combe’s submissions

52    Combe submits that the primary judge’s analysis erroneously lost sight of the perspective of the notional consumer or salesperson, who would not engage in such a syllable by syllable analysis of VAGISAN and VAGISIL, comparing and assessing the relative distinctiveness and descriptiveness of each syllable. According to Combe, his Honour’s analysis amounted to a meticulous comparison of the two words, letter by letter and syllable by syllable with clear pronunciation. The analysis was said to have failed to give proper (if any) consideration to the notional consumer’s imperfect recollection of VAGISIL, and to have failed to give proper regard to the importance of the first syllable of each word and the tendency of English speakers to slur the endings of words.

53    Combe further argues that the primary judge assessed the component parts of each of the marks and wrongly failed to pay proper regard to the whole of each mark. Combe submits that [50] of the primary judge’s reasons “proceeds on an unrealistic premise that consumers and retailers would focus on the suffix -SAN”, and failed to take into account the finding (at [49]) that the central idea conveyed by both marks was that the products have something to do with the vagina. According to Combe, the primary judge also failed to assess the whole of each mark as a coined term with no precise meaning.

54    Moreover, Combe argues, the primary judge’s analysis was internally inconsistent insofar as it assessed the SAN element of VAGISAN as a distinctive and not descriptive feature, despite finding that SAN is readily understood as a reference to “sanitary”.

55    Combe submits that the primary judge’s approach stands in contrast with the approach in Johnson & Johnson. Refusing registration of BAND>>IT for being deceptively similar to BAND-AID, Gummow J reasoned as follows (at 221):

I am impressed by the presence in each mark of the common first element “band” and by the joinder of the two elements by a hyphen or chevron device. It is true that the second elements “aid” and “it” differ but the comparison must be between the marks as a whole.

56    As to aural similarity, Gummow J noted that BAND>>IT and BAND-AID consist of the same first, and dominant, primary syllable and that “in Australian spoken English the final consonant tends not to be precisely articulated”.

57    Combe notes that there was no evidence that the prefix VAGI (or, we add, VAGIS) is in common use in Australia for the goods in question. Rather, the primary judge accepted (at [169]) that the leading brands in the so-called “feminine care” category in Australia, other than VAGISIL, are FEMFRESH, SUMMER’S EVE, LIBRA GET FRESH, AMELE, and CANESTON.

58    Combe argues that the trade marks in issue are analogous to those in Re Broadhead’s Application (1950) 67 RPC 209, where ALKA-VESCENT was refused in the face of ALKA-SELTZER, because the ALKA part of the marks, although “common in the pharmaceutical trade”, was the more emphatic part of the mark. The rest of the marks were subsidiary and unemphatic. In this case, the common part of the marks (VAGIS) is all but the last two letters.

59    As a separate matter, Combe submits that the primary judge’s finding at [71] that the types of products described in the specifications are most likely of a high-volume, low-value nature, ought to have reinforced the conclusion of a likelihood of confusion. Combe observes that, although the primary judge rejected the contention that consumers of the relevant products are not likely to pay particular attention to what they are purchasing, this finding was made in the context of products that the consumer might put in her vagina or on her vaginal area, and not in relation to full range of goods covered by the prospective registration and the existing registrations. Combe also contends that the finding that the prefix VAGI is descriptive does not relate to the full range of goods specified in the VAGISIL registrations or the VAGISAN application.

4.4    Dr Wolff’s submissions

60    Dr Wolff submits that the primary judge assessed the competing trade marks by their look and their sound, in an orthodox way. Dr Wolff contends that the primary judge assessed the marks each as a whole and as invented words (at [58]) and as a whole if perceived aurally (at [59]).

61    Dr Wolff submits that the primary judge gave due regard to the common first two syllables of the marks but concluded at [50] that this was not determinative. His Honour also found that VAGISAN and VAGISIL “do not have a close phonetic resemblance and neither of the words lends itself to mispronunciation” (at [58]). Dr Wolff also notes that there was no expert evidence on pronunciation of the marks, or evidence that the relevant goods were commonly ordered orally; and that the delegate expressed the view that the suffixes were unlikely to be slurred.

62    Dr Wolff submits that the primary judge paid proper regard to the whole of each mark as a coined term, observing that his Honour expressly considered the central idea conveyed by the marks (at [49]) and the fact that VAGISAN and VAGISIL were “invented words” and that VAGISIL was a “neologism” (at [54] and [58]).

63    As to the primary judge’s assessment of the suffix -SAN as distinctive (at [50]), Dr Wolff notes the further finding (at [58]) that the suffixes -SIL and -SAN are quite distinct. Dr Wolff contends that the primary judge concluded that, in the circumstances of this case, the competing suffixes were to be given greater weight, including because products bearing marks containing VAG or VAGI were available for sale in Australia before the priority date and because of the understanding consumers would have of those elements.

64    As to the primary judge’s consideration of the notional consumer, Dr Wolff defends the primary judge’s reasoning insofar as it concerned the process by which a notional consumer would purchase the goods the subject of the competing marks.

4.5    Consideration

65    In ground 1 of the draft Notice of Appeal Combe contends that the primary judge erred in his consideration of deceptive similarity in 7 respects, which we have identified in [22] above. For the following reasons we consider that this ground identifies error of a type that warrants appellate intervention.

66    Section 10 of the Act provides that a trade mark is taken to be deceptively similar to another if it so nearly resembles the other mark that it is likely to deceive or cause confusion. The question of resemblance is to be viewed having regard to the approach set out in the authorities to which we have referred above, but in each case it is necessary to commence the enquiry having regard to the prior registered mark and take the impression of the notional consumer, based on recollection, of that mark for the purposes of making a comparison with the mark that is said to be deceptively similar. In the present case, the primary judge placed significant emphasis on two conceptual aspects of the prior VAGISIL marks. First, the “central idea” of the marks (at [49], [50]), and secondly, the descriptive component of the marks, which was said to be the same as the central idea (at [50]). Both were said to convey VAG or VAGI, being slang words meaning vagina or vulva (at [1]).

67    The primary judge concluded that because the idea was descriptive, it was necessary to discount the first letters VAGI in their entirety for the purposes of analysis, and focus on the aspect of the mark which is distinctive, namely the letters SIL. Turning to the VAGISAN application, the primary judge again discounted the first letters VAGI in their entirety and considered that the final letters SAN were sufficiently distinctive to warrant a conclusion that VAGISAN was not deceptively similar to VAGISIL (at [50], [51], [54], [75]).

68    For the following reasons, we respectfully disagree with this approach.

69    First, at the outset it may be observed that the words have the same first five letters. In Dr Wolff’s application, 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.

70    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 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.

71    In a comparison between marks, the role of the “idea” must be carefully considered. In Cooper Engineering the application was for registration of the words “Rainmaster”.  The opponent’s mark was “Rain King”.  Dixon, Williams and Kitto JJ cited (at 538) the principles summed up by Parker J in In the Matter of an Application by the Pianotist Company Ltd. for the Registration of a Trade Mark (1906) 23 RPC 774. After pointing out the differences between the suffix “master” and the word “King” in appearance and sound their Honours continued (at 538-539):

The two words are so unlike to the eye and to the ear that counsel for the appellant was forced to rely on the likelihood of deception arising from the two words conveying the same idea of the superiority or supremacy of the article as a mechanism for making a spray similar to falling rain or artificial rain as it was called during the argument.  But it is obvious that trademarks, especially word marks, could be quite unlike and yet convey the same idea of the superiority or some particular suitability of an article for the work it was intended to do. To refuse an application for registration on this ground would be to give the proprietor of a registered trademark a complete monopoly of all words conveying the same idea as his trademark. The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive. As Lord Parker said in the passage cited, you must consider the nature and kind of customer who would be likely to buy the goods.

72    It is apparent from the foregoing that where there are visual or other features in common, commonality of idea might then tip the balance in favour of a finding that the likeness is deceptive: see also Sports Café Ltd v Registrar of Trade Marks [1998] FCA 1614; 42 IPR 552 at 557 (Wilcox, Heerey and Lindgren JJ); Jafferjee at 121-122, 122-123. Conversely, dissimilarity in idea may point in the other direction (although in Hashtag Burgers the Full Court noted at [81] that there may be room for debate as to how far one can go with the idea, absent visual or aural similarity). Where, as here, the marks under consideration had many features in common, the primary judge ought to have considered the common idea to be a factor in favour of a finding of deceptive similarity.

73    Thirdly, in concluding that the vaginal reference in VAG and VAGI was descriptive, the primary judge appears to have assumed, notwithstanding his observation at [66], that the class 3 and class 5 goods in respect of which registration was sought and also the goods of the same description to which the VAGISIL marks were registered were confined to goods relevant to use on the vagina. However, deceptive similarity for the purposes of s 44(1) is not to be considered having regard to actual use, but rather to the extent of the monopoly sought. That is, as his Honour correctly noted, having regard to the full extent of the goods in respect of which the application is sought: Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; 129 CLR 353 at 362 (Mason J); MID Sydney at 245. In the present case, the class 3 and class 5 goods were not so confined. Indeed, it is difficult to see how that reference could be descriptive in the context of soaps or cosmetics, and only in very specialised circumstances may goods described as “pharmaceutical products, sanitary products for medicinal purposes; dietetic substances for medical purposes” potentially come within that description. In this regard, we respectfully consider that the primary judge fell into error.

74    Even if the goods in respect of which registration is sought were to be confined to feminine hygiene products, in our respectful view the conclusion as to deceptive similarity reached by the primary judge was not correct as a matter of evaluation. As we have noted, the correct comparison is to take the word VAGISIL and, holding that in mind as the notional consumer or trader, consider whether that consumer would be caused to wonder whether VAGISAN, when applied to the goods specified in the application, might not be the same source as VAGISIL in respect of those goods.

75    At [54], his Honour decided that the words VAGISIL and VAGISAN are not deceptively similar “substantially because the distinctiveness of the mark comes from SIL in the neologism VAGISIL”.

76    While it was not impermissible to consider the different elements of the VAGISAN and VAGISIL marks, including whether those elements were descriptive, his Honour’s analysis appears to have led the primary judge to assign less significance to the common VAG, VAGI or VAGIS element of the two marks than was appropriate having regard to the association with the word “vagina”. Where, as here, the dominant aspect of the VAGISIL mark is the first five letters, in our view that is also the part of the mark that the consumer is likely to recall. Indeed, the consumer is more likely to recall the VAG or VAGI component because it carries connotations as a reference to the vagina or the vulva and is a word that represents a topic regarded with some awkwardness amongst consumers. Having noted the central idea conveyed by VAG or VAGI, the primary judge did not consider whether that part of the mark was more likely to be fixed in the consumer’s mind than the whole of the VAGISIL mark. In our assessment, that was an important consideration because, to the extent that VAG or VAGI is associated with vaginas, this is likely to be a striking feature of the trade marks for consumers who are relatively unused to the mention of that intimate and internal female body part in public discourse. At [61] of his Honour’s reasons, the primary judge referred to:

… evidence to the effect that vaginal dryness is an embarrassing or taboo subject and that cross-culturally women differ substantially in the likelihood of discussing the issue with a physician. The implication is that the same is true of other vaginal maladies, real or perceived. Ms Thevessen’s evidence was also that many women are embarrassed to buy products like that so when they go into stores they would tend to get the product, buy it and get out quickly without drawing attention to the purchase. There was also evidence of a survey conducted in Germany (exhibits AT-7 and AT-8) showing that more than half the purchasers of such products bought them without the advice or intervention of a healthcare professional

77    Widespread discomfort around the discussion of female genitalia is reflected in the euphemistic description of the relevant products as “feminine healthcare” and “feminine hygiene”. It is most likely that the consumer would take away a recollection that there is a trade mark for “VAG, VAGI or VAGIS something” and not have a clear recollection of the final letters in the word. In so doing, in our view when they come across VAGISAN, they are less likely to recall the final two letters of VAGISIL, and will be caused to wonder whether they are goods produced by or associated with the same trader.

78    It is correct to observe, as his Honour did, that an element of a trade mark that is descriptive may not tend to cause confusion about the source of a product because it calls to mind the nature of the product, rather than its trade source. However, as we have noted, each case must be considered on the basis of the marks in question and the facts established. The authorities do not say that where there is a common descriptive element in marks that component is to be ignored for the purposes of comparison. In this regard the observation made by Lord Evershed (Asquith and Jenkins LJJ agreeing) in Broadhead’s Application (at 215.1-5), to the effect that even where there is a common denominator one must be careful not to treat words as though the common part was not there at all, is apposite.

79    In Broadhead’s Application the Court of Appeal concluded that the trade mark ALKA-VESCENT for a specification of goods including effervescent tablets for making “seltzer water” was too close to the mark ALKA-SELTZER, which was registered for effervescent tablets for making seltzer water. At 214-215, Lord Evershed MR addressed the common syllable “Alka” in the two trade marks as follows:

The learned judge thought that the “Coca-Cola” case was inappropriate for consideration in connection with this case, because the words “Coca” and “Pepsi”, or the parts of the formulae “Coca” and “Pepsi”, were purely fancy names or words having no meaning of significance except as brand names. I do not think that is right. I think that the Assistant Comptroller rightly paid attention to the “Coca-Cola” case and did so because it had this feature in common with the present: that there was a common half in each of the two competing formulae in the “Coca-Cola” case as there is in this case, “Cola” in the Canadian case and “Alka” in this. I think that he was right in saying that, following the observations of Lord Russell, where you get a common denominator, you must, in looking at the competing formulae, pay much more regard to the parts of the formulae that are not common – although it does not flow from that (nor did the Assistant Comptroller, as I read his decision, make it so appear) that you must treat the words as though the common part was not there at all.

There is, however, this distinction between the cases which is of significance. In the present case it happens that the common part, “Alka”, is obviously the more emphatic. The evidence shows that to the sufferers from all these maladies it is the “Alka” disyllable which is the more firmly fixed in their minds, whereas in the “Coca-Cola” case the common “Cola” was the subsidiary and unemphatic part, the words “Pepsi” and “Cola” being the more important: but that only emphasises after all what Lord Russell said, what the Assistant Comptroller said, what Roxburgh J said and what everyone from time to time says; and although it is obvious, it is perhaps worth repeating, that each case has to be decided on its own particular and peculiar circumstances.

80    Lord Evershed found that the word “ALKA” was a word commonly used in the trade as an abbreviation of “alkaline” (at 214.28) but nevertheless the application for ALKA-VESCENT was a mark that was, in effect, deceptively similar to ALKA-SELTZER. The later “VESCENT” aspect of the mark did not serve to distinguish. The point being that even were there to be a descriptive component common to the trade, it is necessary to conduct the comparison to which we refer.

81    In addition, in the present case, the findings of fact do not permit a conclusion that VAGI or VAGIS was a prefix commonly used in the trade as an abbreviation: contrast Mond Staffordshire where the High Court held that the suffix -SOL was commonly used in germicidal or medicinal preparations, such as “Lysol”, “Phenol” and others (at 477-478) and MID Sydney where the Full Court found that the word “Chifley” was a familiar name to consumers (at 246). But were they to have done so, the question remaining to be asked is whether or not, having regard to the whole of the VAGISAN application, it was deceptively similar to VAGISIL. For the reasons given, we consider that it was.

82    In this regard we further note that the comparator mark VAGISIL is a made-up word. It has no intrinsic meaning. Any reference within VAGISIL to the nature or quality of the goods to which it refers amounts to an allusion, where those who perceive the mark would need to pause and consider what it means having regard to the goods on which it is applied: Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48; 254 CLR 337 at [59].

83    Having regard to these matters, in our view ground (1) of the appeal is established with the consequence that ground (3) is also made out, such that the VAGISAN application should not proceed to grant. We do not consider that the matter raised in ground (2) gives rise to any separate point on appeal and as a stand-alone ground reject it.

5.    SECTION 60 (USE OF TRADE MARK LIKELY TO CAUSE CONFUSION)

84    Having regard to our conclusions in relation to grounds (1) and (3), it is not necessary or appropriate for us separately to consider whether under s 60 of the Act the application should proceed to grant: Boensch v Pascoe [2019] HCA 49; 94 ALJR 112 at [7], [8] (Kiefel CJ, Gageler and Keane JJ); Kuru v State of New South Wales [2008] HCA 26; (2008) 236 CLR 1 at [12] (Gleeson CJ, Gummow, Kirby and Hayne JJ).

6.    DISPOSITION

85    For the reasons developed above we conclude that leave to appeal must be granted and grounds (1) and (3) of the appeal allowed, with the consequence that Combe has established to the requisite standard that the VAGISAN application should not proceed to grant on the basis of s 44(1) of the Act. We dismiss ground (2) of the appeal and otherwise do not consider it necessary to determine the outcome of grounds (4) and (5), which concerns the separate ground of opposition under s 60 of the Act.

86    Ground (6) of the appeal challenges the primary judge’s conclusion that Combe should pay the costs of the proceedings below. At the hearing, counsel for both parties agreed that costs of the appeal and the costs below should follow the event, with the consequence that Dr Wolff must pay Combe’s costs of the appeal and of the hearing before the primary judge.

Associate:

Dated:    11 February 2021