Dr August Wolff GmbH & Co. KG Arzneimittel v Combe International Ltd

Dr August Wolff GmbH & Co. KG Arzneimittel (Dr Wolff) sought registration of the trade mark VAGISAN for feminine hygiene products, while Combe International Ltd (Combe) opposed the application on the grounds of similarity to its existing VAGISIL trade mark. The case, heard by the Federal Court of Australia, revolved around whether Dr Wolff’s mark was deceptively similar to Combe’s VAGISIL, and whether Dr Wolff intended to use the mark at the priority date. The court had to consider the admissibility of evidence in the form of data extracted from a database and survey evidence, which Combe argued was inadmissible hearsay. Combe further contended that the evidence should be excluded under the discretion provided by s 135 of the Evidence Act 1995 (Cth).

Dr Wolff argued that the data and survey evidence were admissible under s 69 of the Evidence Act as business records. The court examined the circumstances in which the data was obtained and the processes by which it was extracted and compiled into the schedules. It was noted that the data originated from a third party, IRi Australia, and was made available to Combe via a subscription service. The court found that the schedules were indeed based on business records, but the question remained whether the extracted schedules constituted hearsay and whether they should be excluded under s 135.

The court concluded that Combe had not established that Dr Wolff lacked the requisite intention to use the VAGISAN mark at the priority date, and therefore the opposition based on s 59 of the Trade Marks Act 1995 (Cth) must fail. Furthermore, the court determined that the opposition based on s 44 also failed as the VAGISAN mark was not found to be deceptively similar to the VAGISIL marks. As a result, Dr Wolff's appeal was allowed, and Combe's opposition to the registration of the VAGISAN mark was dismissed.

The final orders directed the parties to bring in agreed or competing orders reflecting the court's conclusions and to resolve any outstanding issues, including costs, within two weeks. In case of disagreement, the parties were to liaise with the Associate to Stewart J to arrange a short hearing to determine final orders.