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

7 On 29 September 2017, the delegate refused to register the VAGISAN mark under s 55(1)(a) of the Act. That is the decision appealed against. The basis for the decision was that within the meaning of s 60 of the Act, the VAGISIL marks had acquired a reputation in Australia and because of that reputation the use of the VAGISAN mark would be likely to deceive or cause confusion. 8 The delegate rejected Combe's opposition to the registration in reliance on s 44 of the Act, finding that no real, tangible danger of deception or confusion exists between the VAGISAN mark and the VAGISIL marks. 9 It is common ground that the appeal is a re-hearing de novo under s 56 of the Act in which the Court exercises its original jurisdiction; the Court is not confined to the evidence or record that was before the delegate and there is no need to identify any error in the delegate's reasoning. 10 The opponent to the registration, being in this case Combe, bears the onus to prove that the grounds of opposition are made out: Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; 185 FCR 9 at [26]-[34]. To the extent that the evidence is unclear, and the Court cannot resolve it either way, the opposition must fail: Food Channel at [66]. 11 As indicated, the rights of the parties are to be determined as at the priority date: Southern Cross Refrigeration Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; 91 CLR 592 at 595. 12 On the first day of the hearing, Dr Wolff sought, under s 197 of the Act, to amend its application for registration by deleting certain types of goods from the specification. The amendment was not opposed, with the result that Dr Wolff seeks by this proceeding the registration of its VAGISAN word trade mark in respect of the following goods: Class 3: Soaps, cosmetics, all aforementioned goods not for the indication and application of tired legs and/or arms 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 13 Although other grounds were also relied on until part way through the first day of the hearing, ultimately Combe relied on only the following three grounds of opposition to the registration of the VAGISAN mark: (1) Section 44, on the basis that the goods specified in the application for the VAGISAN mark are similar to the goods specified in respect of the VAGISIL marks and the VAGISAN mark is deceptively similar to the VAGISIL marks; (2) Section 60, on the basis that the VAGISIL marks had, before the priority date, acquired a reputation in Australia and because of that reputation the use of the VAGISAN mark would be likely to deceive or cause confusion; (3) Section 59, on the basis that Dr Wolff did not intend, as at the priority date, to use or authorise the use of the VAGISAN mark in Australia, or to assign the trade mark for such use, in relation to the goods specified in the application. It was contended that Dr Wolff had no intention in good faith to use the VAGISAN mark in relation to any goods other than those directed for application in the female genital area. 14 Regulation 17A.34 of the Trade Mark Regulations 1995 (Cth) provides that protection of an international registration designating Australia may be opposed on any of the grounds on which a domestic trademark application may be rejected (i.e. ss 39 to 44 of the Act) and also on the grounds of opposition set out in ss 58 to 61 and 62A of the Act. Sections 44, 59 and 60 are thus available to Combe as grounds of opposition.

Background 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 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. 21 Combe initially operated in Australia as a branch of the US company, without a local entity. In 2006, Combe registered Combe Asia-Pacific Pty Ltd which is a wholly-owned subsidiary of Combe. 22 Combe licensed certain rights in the VAGISIL marks to Combe Asia-Pacific in 2006.

Section 44 23 Section 44 of the Act relevantly provides as follows: 44 Identical etc. trade marks (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 … deceptively similar to: (i) a trade mark registered by another person in respect of similar goods …; or (ii) …; and (b) … Note 1: For deceptively similar see section 10. Note 2: For similar goods see subsection 14(1). Note 3: For priority date see section 12. Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A. 24 There are two issues for determination with respect to the s 44 ground of opposition, namely: (1) whether the VAGISAN mark registration application is in respect of goods that are "similar" to the goods in respect of which the VAGISIL marks are registered; and (2) whether the VAGISAN mark is deceptively similar to the VAGISIL marks.

Similar goods? 25 Section 14 is relevantly as follows: 14 Definition of similar goods and similar services (1) 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. 26 Dr Wolff accepted that, of the goods designated in the VAGISAN application, the class 3 goods (i.e. soaps and cosmetics) are, for s 14 purposes, of the same description of and therefore similar to goods designated in some of the VAGISIL registrations. However, Dr Wolff did not accept that the other goods covered by the VAGISAN application are the same or of the same description as the various VAGISIL registered goods which it characterised as "highly specialised". 27 The question is thus whether the goods described in Dr Wolff's application under class 5, 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. 28 The phrase "goods of the same description" ought not to be given too restricted a construction; at least not so as to be limited to goods substantially analogous in kind, or commonly used as mere substitutes or alternatives the one for the other: Re J Lyons & Co Ltd's Application [1959] RPC 120 at 128 per Lord Evershed MR cited with approval in MID Sydney Pty Ltd v Australian Tourism Co Ltd [1998] FCA 1616; 90 FCR 236 at 243G-244C per Burchett, Sackville and Lehane JJ. Although MID Sydney dealt with services rather than goods, its reasoning applies equally to goods: E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27; 175 FCR 386 at [70]. 29 Further, the expression "goods of the same description" is generally to be understood in such a sense that, if two different items are held not to fall within the expression, their sale under the same mark by different companies is not likely to lead to confusion or deception: Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 203; 42 FCR 227 at 240 per Burchett J cited with approval in E & J Gallo at [71] per Moore, Edmonds and Gilmour JJ. 30 It is important to bear in mind that the issue of whether the goods are similar is being considered in the more general context of whether consumers might see the goods as having the same trade origin: Southern Cross Refrigeration at 606 and E & J Gallo at [73]. 31 Product substitutability is one of several factors which may be taken into account, but it is by no means determinative of itself: SMA Solar Technology AG v Beyond the Building Systems Pty Ltd (No 5) [2012] FCA 1483 at [75] per Perram J. 32 As indicated, Dr Wolff relies principally on its characterisation of the goods covered by the VAGISIL marks as being "highly specialised types of goods" to contend that the goods covered by its more general descriptions are not the same as, or do not have the same description as, the goods in issue covered by its registration. It also submits that the goods are not substitutable and on that basis should not be considered to be similar goods. 33 In my view, that is too narrow an approach. There are a variety of factors that are relevant, including, in particular, the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in the manufacture or distribution they are regarded as belonging to the same trade: Southern Cross Refrigeration at 606. 34 In my view, there is a substantial overlap in the types and descriptions of the goods covered by the VAGISAN application and the VAGISIL registered goods. They are all goods of a type that would typically be expected to be sold in pharmacies, supermarkets and online. That is to say, they would typically be sold through the same trade channels. 35 Also, it is typically to be expected that producers of pharmaceuticals and hygiene or sanitary products would produce a variety of different such products. It is thus to be expected that producers of "pharmaceutical products" (to reference one of the broadly specified VAGISAN goods) might also produce "medicated lotions and medicated creams" and various other "medicated" goods included amongst the VAGISIL goods. 36 Similarly, it is to be expected that producers of "sanitary products for medical purposes" (to reference another of the VAGISAN goods), might also produce "medicated products for feminine use", "medicated douches" and various other goods included amongst the VAGISIL goods. 37 It is thus clear to me that the specified goods "pharmaceutical products" and "sanitary products for medical purposes" are similar to one or more of the goods covered by the specified goods in respect of the VAGISIL marks within the meaning of s 44(1)(a)(i) of the Act. 38 The only remaining VAGISAN goods are "dietetic substances for medical purposes". That might be considered to overlap sufficiently with "medicated products for feminine use", being one of the VAGISIL goods. However, even if that is considered a little strained on the basis that "substances for medical purposes" might be different from "products for use", my conclusion that all of the other goods specified by VAGISAN, i.e. soaps, cosmetics, pharmaceutical products and sanitary products for medical purposes, are similar goods to VAGISIL specified goods means that it would be incorrect to carve out the remaining more limited category of dietetic substances for medical purposes from being susceptible to the s 44 objection. 39 The reason is that there is no separate application for registration of the VAGISAN mark for this category of goods as a separate category. There is one application covering registration of the mark for all the goods that have been specified. See Apple v Registrar of Trade Marks [2014] FCA 1304; 109 IPR 187 at [232] per Yates J. 40 In the circumstances, the goods covered by the VAGISAN application and the goods registered in respect of the VAGISIL marks are the same goods or they have the same descriptions within the meaning of s 14(1) with the result that they are similar goods within the meaning of s 44(1)(a)(i) of the Act.

Deceptively similar marks? 41 Section 10 is as follows: 10 Definition of deceptively similar 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. 42 There was substantial agreement between the parties on the applicable principles. The differences between them were ones of emphasis and, of course, on the application of the principles to the competing marks in this case. 43 The question of deceptive similarity should not be considered separately from the question of similarity of the competing sets of goods. The correct approach is to make one practical judgement, recognising that whether the resemblance between the marks renders them deceptively similar depends upon the nature and degree of that resemblance and the similarity between the goods in question: Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; 93 FCR 365 at [39]-[40]. 44 The question for me is whether a number of Australian consumers who see or hear the VAGISAN marks used in relation to the VAGISAN goods, and who have an imperfect recollection of the VAGISIL marks (Reckitt & Colman (Australia) Ltd v Boden [1945] HCA 12; 70 CLR 84 at 89 and 98) and do not have an opportunity to compare the respective marks side-by-side (Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; 109 CLR 407 at 415-416), are at a real risk (that is, a finite and non-trivial risk) of being confused (Woolworths at 426). That includes being left in doubt or caused to wonder (Southern Cross Refrigeration at 594-595) or to be perplexed or mixed up (Coca-Cola Company v All-Fect Distributors Ltd [1999] FCA 1721; 96 FCR 107 at [39]) as to whether it might not be the case that the parties' respective products come from the same source. 45 No intention to deceive or cause confusion is required - a mark can be deceptive without being used deceitfully: Re Bali Brassiere Co Inc's Registered Trade Mark and Berlei Ltd's Application [1968] HCA 72; 118 CLR 128 at 139. Importantly, 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 at 86-87, 95, 99 and 104; Reckitt & Colman at 98. 46 It is not insignificant that s 10 refers to the relevant marks being deceptively similar if the one "so nearly resembles" the other that it is likely to deceive or cause confusion. A near resemblance between the marks is required, and that the near resemblance is the cause of the likely deception or confusion. 47 Combe relied on the following similarities between the VAGISAN mark and the VAGISIL marks: (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. 48 There was some debate about the ordinary pronunciation of the word VAGISAN and what the natural syllables are. Combe tendered and played a recording of a radio commercial for VAGISIL Feminine Wash. It also tendered recordings of radio and television advertisements for other VAGISIL products. In my assessment, the way in which VAGISIL is pronounced in each case breaks up the syllables 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 at 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. 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. 52 The VAGISIL mark 1494391 which includes the "V" device was said to reference, by its shape, the female groin area. That is certainly a strong and plausible association. It may also be that the elements of the "V" are seen to reference leaves of a tree or shrub and thereby convey freshness or something natural. Some people may also see the device merely as a stylised 'V' for VAGISIL. In any event, the combined mark is quite distinctive and different from the VAGISAN word mark. 53 This case is different from E & J Gallo where it was held (at [77]) that the use of the image of a barefoot with the words BAREFOOT RADLER did not sufficiently distinguish that mark from the word mark BAREFOOT. That was because the use of the image of a barefoot would be more likely to reinforce the significance or prominence of the word BAREFOOT. In the present case, the "V" device does not play that role in relation to the whole of the word VAGISIL, and it is questionable whether it even plays that role in relation to the prefix VAG. 54 The VAGISIL mark 1490519 which includes the words "The Expert in Intimate Skincare" is distinct from the VAGISAN mark because of the addition of those words. But in any event, even if those words are regarded as adding only little more because of their descriptive nature, 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. 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. For example, in Mond Staffordshire Refining Co Ltd v Harlem [1929] HCA 6; 41 CLR 475 at 477 the High Court held that MONSOL and MULSOL were not deceptively similar in part because of the common use in the trade of the suffix "-sol" in relation to medicines and pharmaceutical preparations. 56 Further, in MID Sydney the Full Court held that CHIFLEY was not deceptively similar to THE CHIFLEY TOWER in part because the word Chifley was in common usage in relation to several different applications of which the ordinary person would be regarded as having some knowledge (at 246D-E). See also REA Group Ltd v Real Estate 1 Ltd [2013] FCA 559; 217 FCR 327 at [246]. 57 In Australian Meat Group Pty Ltd v JBS Australia Pty Ltd [2018] FCAFC 207; 363 ALR 113, an infringement case, the Full Court compared the word marks AMG and AMH (at [80]ff). It was a relevant consideration that the letters "AM" in the acronym AMH would be understood in the Australian meat industry as an obvious contraction of "Australian Meat" (at [85]). It was held that the primary judge had placed too much significance on the "AM" component of the AMH word mark and the AMG word mark when concluding that they were deceptively similar marks, particularly in discounting the significance to be attached to the distinguishing last letters "H" and "G" respectively (at [88]). 58 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. 59 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). 60 The parties referred to limited evidence that may be relevant to the question of deceptive similarity. 61 During the cross examination of Dr Wolff's export manager, Angela Thevessen, senior counsel for Combe elicited 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. 62 There was a dispute about the admissibility of exhibits AT-7 and AT-8. I deal with that below where I deal with the admissibility of other survey evidence. 63 On the basis of Ms Thevessen's evidence, it was submitted on behalf of Combe 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. Also, they are not likely to be guided by healthcare professionals in making their purchases. 64 The counterpoint to this argument, advanced on behalf of Dr Wolff, is 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. So, 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. 65 Added to that is the consideration that in an era when these types of products are sold online - and even if they do not buy them online, the notional consumer would have easy access to information about the products online - a prospective purchaser will have ample opportunity to consider their purchase in private. 66 However, these submissions and the evidence underlying them seem to me to miss the point. What is at issue here is the competing marks, being the VAGISAN mark and the VAGISIL marks, in respect of the goods for which the VAGISAN application is made and the VAGISIL marks are registered. In the case of VAGISAN, those goods are by no means limited to intimate healthcare products of the nature of those actually presently traded by both Dr Wolff and Combe under their respective marks. That is to say, little weight can be given to a consideration of the actual products and the specific circumstances in which they are likely to be bought. What must be considered is the full range of goods covered by the prospective registration and the existing registrations: MID Sydney at 246F. In the case of the former, they are not necessarily of the type that might be bought furtively or with some embarrassment - "soaps", "cosmetics", "pharmaceutical products" and "dietetic substances for medical purposes" are by no means necessarily goods of that nature. 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)]. 68 In any event, I do not consider that the evidence establishes that consumers of the type of products in question are not likely to pay particular attention to what they are purchasing. 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 lacks credibility. 69 Senior counsel for Combe also elicited from Ms Thevessen evidence to the effect that in the United Kingdom Dr Wolff currently retails its 200ml VAGISAN Intimate Wash Lotion for £9.99 and its 50g VAGISAN Moisturising Cream for £14.99. Ms Thevessen was not able to say at what price those products might be sold for in Australia in the event that Dr Wolff enters the Australian market. There was also evidence that VAGISIL products were sold in Australia before the priority date for between $1.24 and $10.23. 70 On the basis of that evidence, it was submitted on behalf of Combe that the inference is that the products are high-volume, low-value products with the result, once again, 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. 71 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 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. 72 Dr Wolff adduced evidence that even at the priority date there were many registrations of marks in classes 3 and 5 that incorporate VAGI or VAG. Combe countered by pointing out that in respect of most of those marks there was no evidence that they had any reputation in the market as actually being used and that the ordinary consumer would therefore not be familiar with them. On that basis, it was contended, they cannot feature in an assessment of likely confusion. There was, however, 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". 73 It has been recognised that the state of the register does not establish what is actually happening out in the market and that comparison with other marks on the register is in principle irrelevant when considering a particular mark that has been tendered for registration: Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177; 47 IPR 579 at [35] citing British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 at 305. See also 1-800-Flowers.Com Inc v Registrar of Trade Marks [2012] FCA 209; 201 FCR 488 at [41]. 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. 75 For the above reasons, I conclude that Combe has not established the second component of its s 44 ground of opposition, namely that the VAGISAN mark is deceptively similar to the VAGISIL marks.

The law 76 Section 60 of the Act was as at the priority date (and is) in the following terms: 60 Trade mark similar to trade mark that has acquired a reputation in Australia The registration of a trade mark in respect of particular goods or services may be opposed on the ground that: (a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and (b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion. 77 The issues that arise from this section for present determination are: (a) which, if any, of the VAGISIL marks had acquired a reputation in Australia before the priority date; and (b) whether because of any such reputation, the use of the VAGISAN mark would be likely to deceive or cause confusion. 78 Section 60 does not require a reputation amongst any particular proportion or number of the Australian population; the authorities indicate that a "significant" or "substantial" number of people or potential consumers is required: Vivo at [56]. 79 There is some authority for the proposition that reputation in this context means recognition of the mark by the public generally: Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8; 202 FCR 490 at [45] citing McCormick & Co Inc v McCormick [2000] FCA 1335; 51 IPR 102 at [81]. Although McCormick is a s 60 case and what was said about reputation there was in that context, Austin, Nichols & Co concerned removal of a mark from the register for non-use. On the basis that the mark in question had a reputation in Australia despite non-use, it was contended that the court should exercise its discretion under s 101(3) of the Act not to remove the mark from the register. That is a context far removed from s 60. Austin, Nichols & Co is therefore not readily applicable authority on reputation as referred to in s 60. 80 In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83; 251 FCR 379 the question of reputation under s 60 was considered directly. The Full Court held (at [71]) that when sufficiency of reputation is an issue, the nature of the class of the goods or services is always relevant. The case was about services, but its reasoning applies equally to goods. The Court held that the nature of the goods or service in question which the mark is to distinguish necessarily informs the identification of the relevant class of persons who may be deceived or confused. Thus, an evaluation of the sufficiency of the reputation necessarily calls for consideration of the nature of the goods which the marks distinguish. Thus, what is "significant" or "substantial" will depend on the nature of the goods that are the subject of the application in question and the class of consumers of those goods. 81 That the relevant market is the potential customers of goods described in the trade mark application in issue, i.e. the VAGISAN goods, rather than those covered by the VAGISIL marks is apparent from Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587; 50 IPR 1 at [91] per Heerey J. In this case that distinction is not particularly significant given the substantial overlap in the types and descriptions of the VAGISAN goods and the VAGISIL goods as discussed above at [34]-[38]. 82 Reputation for the purposes of s 60 may be established in a number of ways, including a high volume of sales, direct advertising, use and promotion. The authorities recognise that even in the absence of sales or use, a mark may acquire a reputation in Australia by means of direct preliminary marketing, direct advertising, indirect advertising, exposure in radio, film, newspapers and magazines or television, or because the mark has a reputation in another country which can be shown to have extended to Australia: Vivo at [57].

Exhibits LL-1 and LL-2 83 Combe sought to rely on the evidence of Leandro De Lima, the marketing manager of Combe Asia-Pacific. His evidence included two schedules that were prepared by him. They were schedules of data extracted from a computer database. Dr Wolff objected to them and the paragraphs of his affidavit that explain the process by which the schedules were prepared. After hearing submissions, I admitted the schedules as exhibits LL-1 and LL-2. I also made suppressions orders in respect of exhibit LL-1 because the inherent commercial sensitivity of the information in it meant that the orders were necessary to prevent prejudice to the administration of justice: Federal Court of Australia Act 1976 (Cth), s 37AG(1)(a). I said that I would give reasons for admitting the evidence when I gave judgment on the substantive issues. These are my reasons. 84 The objection to the evidence was asserted on the basis that the schedules are inadmissible hearsay under s 59 of the Evidence Act 1995 (Cth), that they express inadmissible conclusions and that they fall to be excluded under s 135 of the Evidence Act on the basis that their probative value is substantially outweighed by the danger that the evidence might be unfairly prejudicial. 85 Combe contended that the evidence is admissible as an exception to the rule against hearsay under s 69 on the basis that it constitutes business records, and in that regard relies on s 48(1)(d) saying that the schedules are documents that were produced by the use of a device in which information is stored in such a way that it cannot be used by the court unless the device is used to retrieve, produce or collate it. There is no dispute that the source data on the device constitutes business records within the meaning of s 69. 86 Mr De Lima deposed that he has access to the business records kept and maintained by Combe Asia-Pacific in the ordinary course of its business. He said that, where necessary for the purposes of preparing the affidavit, he had access to those records and extracted information from them. He further stated that the documents annexed to his affidavit, which include LL-1 and LL-2, are true copies of documents contained in the business records of Combe Asia-Pacific or are extracts of information contained in those business records. As will be seen, the two schedules in question are said to fall within the latter category, i.e. they are said to be extracts of information contained in the business records. 87 Exhibit LL-1 is a spreadsheet which contains the total sales of VAGISIL branded products in Australia by wholesale dollar value and units for the calendar years 2013 to 2017. 88 Exhibit LL-2 is a spreadsheet which contains pharmacy and grocery (i.e. supermarket) consumption data for feminine hygiene products in Australia across the years 2013 to 2017. 89 The witness explained that both schedules are based on consumption data that Combe Asia-Pacific obtains from a company referred to as IRi Australia (which formerly operated under the name Aztec). That company obtains the data directly from each retailer such as Coles and Woolworths, and makes it available to companies like Combe Asia-Pacific in exchange for a subscription fee. 90 The witness explained that IRi Australia sends a monthly email to Combe Asia-Pacific, as a subscribing company, with a link to download the latest data from the IRi website. The data is made available on the website as .nad, .nah and .nai files, with one set of files for grocery data and one set of files for pharmacy data. Each month, the witness downloads all of the new database files and saves them to Combe Asia-Pacific's share drive in a designated folder. 91 The witness explained that the IRi Australia data can then be accessed through IRi software called IRi Temple. He explained that that is a program that works within Microsoft Excel, and appears as a tab on the navigation bar within Microsoft Excel. From that tab the witness can select a data source, then select the relevant fields and IRi Temple retrieves the data from the database files and inserts it as a table into the current Excel document. In respect of exhibit LL-1, the witness says that he created that schedule in February 2018 as a new Excel document. Given that the current proceedings were commenced in October 2017, I infer, and it was not submitted to the contrary, that the schedule was prepared specifically for the purposes of the current litigation. 92 The witness explained that within Excel he selected the IRi Temple tab and "ran a report" with specific fields selected by him, which then generated the schedule. 93 The witness explained that he followed a similar process in respect of exhibit LL-2.

Hearsay evidence 94 Section 59(1) of the Evidence Act provides that evidence of a previous representation made by a person is not admissible to prove the existence of a fact that it can reasonably be supposed that the person intended to assert by the representation. There is no controversy that the data recorded in the computer as collated and made available by IRi Australia constitutes asserted facts within the purview of s 59. 95 However, s 69 provides an exception to the exclusionary rule in s 59 for "business records". The exception applies to a document that either is or forms part of the records belonging to or kept by, relevantly, an organisation in the course of, or for the purposes of, a business, or, at any time was or formed part of such a record, and contains a previous representation made or recorded in the document in the course of, or the for the purposes of, the business. 96 As I have indicated, it was common ground that the data provided by IRi Australia and then downloaded and retained by Combe Asia-Pacific constituted data in business records. 97 The objection was not directed to that data, but rather to the schedules. It was submitted by Dr Wolff that in the absence of an application by Combe under s 50 of the Evidence Act for the admission of the schedules as summaries of two or more documents which would not otherwise be possible conveniently to examine because of their volume or complexity, there was no basis on which the schedules could be admitted. It was submitted that the schedules are extracts of data from the overall database. 98 Section 48 of the Evidence Act deals with the proof of contents of documents. Paragraph (d) of subsection (1) provides that a party may adduce evidence of the contents of a document in question by tendering the document in question or, relevantly, if the document in question is an article or thing on or in which information is stored in such a way that it cannot be used by the court unless a device is used to retrieve, produce or collate it, by tendering a document that was or purports to have been produced by use of the device. 99 It is to be remembered that "document" is given a broad definition in the dictionary in the Evidence Act as including any record of information, including an electronic record such as the data base in question. The database as a whole, as I have indicated, constitutes a business record and constitutes a document the contents of which could be proved by tendering the document. The alternative means of proving its contents is by tendering a document that was or purports to have been produced by use of the device under s 48(1)(d). 100 I am satisfied on the witness's affidavit evidence that the schedules in question were produced by retrieving and collating data, which inevitably involved formatting the data or how it is presented, within the meaning of the provision. That is to say, exhibits LL-1 and LL-2 are documents that were or are purported to have been produced by use of the device that was running the IRi Temple software. Cf. Edmonds-Jones Pty Ltd v Australian Women's Hockey Association Inc [1999] NSWSC 285 at [15].

Sections 135 and 190 101 The principal complaint of prejudice that Dr Wolff advanced was that it had not had access to the source data from which the schedules were prepared and was therefore unable to interrogate whether the schedules are indeed a fair and accurate collation of data extracted from the overall corpus of data. To deal with that aspect it is necessary to consider some history. 102 The affidavit in question, with the disputed schedules annexed, was filed on 28 February 2018. On 27 April 2018, Dr Wolff's solicitors wrote to Combe's solicitors referring to the affidavit. With specific reference to exhibit LL-2, and without referring to exhibit LL-1, they requested soft copies of the ".nad, .nah and .nai database files downloaded from the IRi Australia website referred to in paragraphs 13 and 15 of the affidavit" and "any other underlying data your client obtained from IRi Australia for the purposes of preparing the spreadsheet". 103 Combe's solicitors replied on 9 May 2018. They said that the request for all the data files referred to in paragraphs 13 and 15 of the affidavit is unreasonable as the request is not limited in time and would capture all such data files ever downloaded by Combe from IRi Australia. They then said they would require IRi Australia's permission to release the data files and that if they had that permission, access to the data files by Dr Wolff would have to be on the terms of any confidentiality regime governing exhibit LL-1. 104 I observe that Combe's solicitors were correct in respect of the call for the files referred to in paragraphs 13 and 15 of Mr De Lima's affidavit. Those paragraphs refer to all the database files ever downloaded by Mr De Lima on a monthly basis. 105 No further correspondence was entered into between the parties on the matter until a few days before the hearing when, on 1 April 2019, Dr Wolff served a notice to produce which required production of the relevant underlying data. Prior to that notice to produce, there was no correspondence from Dr Wolff's solicitors in reply to the letter of 9 May 2018. They did not narrow the request for data files by clarifying that it was only the data files underlying the schedule in question that were at issue; nor did they make any offer to accept the data files subject to an appropriate confidentiality regime. 106 Pursuant to the notice to produce, the data files were produced at the commencement of the trial on a USB drive, although there was some issue with regard to whether it was immediately accessible or not. Be that as it may, clearly production of the files so late in the day meant that it was not practical for Dr Wolff to analyse the data so as to interrogate or verify the schedules. 107 In my view, the prejudice created by the late provision of the underlying data lies at the door of Dr Wolff. The obstacles put up by Combe in the correspondence of 9 May 2018 were not absolute, or unreasonable. Combe did not suggest that it would not request IRi Australia for permission, nor that IRi Australia would not grant permission. The central points that were taken were quite valid, namely that the request for data files was unduly burdensome as not being limited in time and that the provision of the files would have to be subject to an appropriate confidentiality regime. 108 Dr Wolff did not engage with those obstacles; it neither sought to meet them nor to contend for their variation or abandonment. Acting reasonably and in accordance with its obligations under s 37N of the Federal Court of Australia Act 1976 (Cth) to conduct the proceeding in a way that is consistent with the overarching purpose of facilitating the just resolution of the dispute as quickly, inexpensively and efficiently as possible, Dr Wolff should have done so. 109 Instead, Dr Wolff waited until the eve of the trial before putting the schedules in issue. Whilst I accept the submission by Dr Wolff that it is Combe's onus to bring itself within the requirements for admissibility of the schedules, for the reasons I have given it is my view that Combe has done that. Insofar as discretionary exclusion under s 135 is concerned, I am not satisfied that such prejudice as Dr Wolff may face in relation to the schedules outweighs the probative value of the evidence. 110 In any event, I would admit the evidence under s 190 of the Evidence Act by not applying the strictures of s 59 that would otherwise exclude the evidence because the source data is not genuinely in dispute. In that regard, Dr Wolff itself relied on IRi data and it had the opportunity to cross-examine Mr De Lima on how he prepared his schedules. The fact that Dr Wolff left it until the last minute before seeking the documents underlying the schedules further tends to indicate that there is no genuine dispute with regard to what the schedules seek to prove.

Section 50 111 Combe indicated that in the event that I would not otherwise admit the evidence, it would make an application under s 50 for the admission of the schedules as summaries of the relevant data extracted from the database. Because of my ruling admitting the evidence, that application was not made. I therefore did not hear submissions on the application. Had the application been made, I might have been inclined to exercise my discretion under s 190 to waive compliance with the strictures of s 50(2)(b) that Dr Wolff be given a reasonable opportunity to examine or copy the underlying documents. That is because, as I have indicated, the absence of that opportunity arises from the failure of Dr Wolff to take timely steps to obtain those documents which otherwise would have been available.

Survey Evidence 112 Combe sought to tender certain survey evidence to which Dr Wolff objected. I heard argument on the objection and ultimately provisionally allowed the evidence on the basis that I would make a final ruling in due course. I have decided that the evidence should be admitted. These are the reasons for my decision. 113 Dr Wolff also tendered limited survey evidence, albeit it in relation to consumer behaviour rather than Combe's reputation. It is, however, convenient to deal with its admissibility here. Combe initially objected to that evidence, and then took the position that the fate of Dr Wolff's survey evidence should follow my decision on Combe's survey evidence. Dr Wolff's survey evidence should thus also be admitted. 114 Although objection was initially taken by Dr Wolff on the basis that the survey evidence constituted inadmissible opinion, was conclusionary and did not comply with the Survey Evidence Practice Note (GPN-SU V), ultimately the only objection that was pressed was that the survey evidence constituted inadmissible hearsay. The Practice Note did not apply because in each case the survey was conducted and the report of the survey was prepared and furnished to Combe prior to the current proceeding. 115 It was not an issue between the parties that the evidence constituted hearsay within the meaning of s 59 of the Evidence Act. The real question was whether it was nevertheless admissible as constituting business records within the meaning of s 69 as an exception to the rule against hearsay. 116 It is convenient to commence consideration of the objection by identifying the evidence in question. Combe's witness, Mr Trevor Norman, stated in his affidavit that Combe (by which he meant Combe and Combe Asia-Pacific) conducts research into the feminine care market. In 2013, Combe undertook, with the assistance of a specialist research company, a survey referred to as the Latitude Wave 1 survey (exhibit TDN-10). The report of the survey is dated 18 July 2013 and was prepared by Latitude Insights. The survey is described as an incidence study of the Australian market and the report highlights findings from the study. The report identifies the number of respondents and sets out the responses that were given to various questions. 117 Mr Norman's affidavit states that Combe procured Latitude Insights to carry out a "Wave 2" survey which was carried out in December 2015. The survey report is dated January 2016 and is referred to as the Latitude Insights Wave 2 survey (exhibit TDN-18). The report highlights findings from the study, particularly in comparison to the Wave 1 survey some 2½ years' earlier. It explains that the Wave 1 research was undertaken to help guide and inform the development of the VAGISIL marketing strategy through incidence measures and analysis of current consumer attitudes and behaviours. The Wave 2 study included nearly all of the metrics of the Wave 1 survey, as well as additional measures of advertising awareness and brand positioning compared to key competitors. 118 The next report that was objected to is a report prepared by PinchME in September 2014 (exhibit TDN-30). PinchME operates an online platform for the distribution of samples to subscribers and members in exchange for their reviews. Combe and/or Combe Asia-Pacific provided over 5,000 free units of a particular VAGISIL product to be distributed to PinchME members in July 2014. The report in question documents the survey responses from the PinchME members who had claimed free samples. 119 The next report is by Chicane Marketing (exhibit TDN-41). It reports on sampling campaigns undertaken by Combe and/or Combe Asia-Pacific in 2015, 2016 and 2017 at the Melbourne, Adelaide and Perth Royal Shows. Sample sachets of certain VAGISIL products were placed in show bags and consumers who purchased the show bags were subsequently surveyed and asked to provide feedback on, inter alia, the VAGISIL goods. The reports record the feedback that was received. 120 Finally, in respect of Combe's evidence, is a report by beautyheaven (exhibit TDN-46). In 2016, Combe and/or Combe Asia-Pacific engaged beautyheaven to conduct market testing on intimate care products and VAGISIL products. The report records the survey responses. 121 Dr Wolff's witness, Ms Thevessen, gave evidence by way of affidavit that Dr Wolff commissioned a report from GfK Mediscope in relation to the sales of a VAGISAN product in the German market in order to better understand the market. The GfK report, in January 2016, reports on surveys conducted in 2015 and 2016 (exhibit AT-7 and a translation thereof, exhibit AT-8). The responses were from pharmacy customers who bought the VAGISAN product and, at the point of sale, completed a brief survey. 122 Material common elements of all the reports are the following. First, they were commissioned by the relevant owner of the brand from specialist professional survey companies. Secondly, they record respondents' responses or answers to survey questions, or other feedback from the respondents. Thirdly, they aggregate particular responses and produce, or calculate, some statistical outcomes. Fourthly, they were commissioned in the course of the business of the owner of the brand for the purpose of the conduct of its business (i.e. in order to be able to rely on the information in the reports in taking business decisions), and they were produced by the survey companies in the course of their business. Fifthly, they were kept or stored as part of the records or archives of the commissioning company and (presumably) the survey company. 123 Section 69 of the Evidence Act provides, relevantly, as follows: (1) This section applies to a document that: (a) either: (i) is or forms part of the records belonging to or kept by a person, body or organisation in the course of, or for the purposes of, a business; or (ii) at any time was or formed part of such a record; and (b) contains a previous representation made or recorded in the document in the course of, or for the purposes of, the business. (2) The hearsay rule does not apply to the document (so far as it contains the representation) if the representation was made: (a) by a person who had or might reasonably be supposed to have had personal knowledge of the asserted fact; or (b) on the basis of information directly or indirectly supplied by a person who had or might reasonably be supposed to have had personal knowledge of the asserted fact. … 124 Dr Wolff submitted that Combe's survey reports were neither business records of the survey companies nor business records of Combe or Combe Asia-Pacific. It relied on the judgment of Perram J in ACCC v Air New Zealand Limited (No 5) [2012] FCA 1479; 301 ALR 352. There, the ACCC sought to tender certain parts of magazines produced by airlines to prove the truth of the statements contained in the magazines. The magazines were promotional journals dealing with air cargo. The question was whether the magazines formed part of, in the words of s 69, "the records belonging to or kept by a person, body or organisation in the course of, or for the purposes of, a business". The submission for the ACCC was that it could be inferred from the fact that the magazines were produced by each relevant airline that they formed part of its records. 125 Dr Wolff also relied on the judgment of Sperling J in Roach v Page (No 15) [2003] NSWSC 939 as cited and quoted in the ACCC judgment. It concerned the admissibility of an extract from an edition of the Australian Mushroom Growers' Association Journal. Sperling J stated as follows: 5 The records of a business are the documents (or other means of holding information) by which activities of the business are recorded. Business activities so recorded will typically include business operations so recorded, internal communications, and communications between the business and third parties. 6 On the other hand, where it is a function of a business to publish books, newspapers, magazines, journals (including specialised professional, trade or industry journals), such publications are not records of the business. They are the product of the business, not a record of its business activities. Similarly, publications kept by a business such as journals or manuals (say, for reference purposes) are not records of the business. 126 Perram J, in ACCC, observed that the critical feature of the reasoning of Sperling J is the distinction drawn between documentary products of a business (such as magazines and journals) and records which record the business's activities. On that basis, Perram J did not admit the airline magazines. 127 Dr Wolff submitted that the survey reports in the present case were akin to such magazines on the basis that they were the product of the relevant survey company's business and not a record of its business activities, and, equally, they were not a record of the business activities of Combe or Combe Asia-Pacific. 128 Combe submitted that the survey reports were the business records of Combe. It referred to paragraph [5] of Sperling J's judgment in Roach v Page (quoted above) and submitted that the survey reports were akin to "communications between the business and third parties" as referred to by Sperling J. 129 Combe referred to paragraph [129] of Samaan bht Samaan v Kentucky Fried Chicken Pty Ltd [2012] NSWSC 381, where Rothman J observed that s 69 of the Evidence Act permits evidence of business records for the reason that these records are likely to be accurate. His Honour cited the relevant paragraph from the ALRC report which preceded the Evidence Act, which includes the following: it is suggested that the safeguards of the document being part of a record of a business and of the statement being recorded in the course of, or for the purposes of the business are sufficient threshold requirements to apply at this stage of admissibility of records kept by whatever means they are. The NSWLRC commented that the fact that the statements were to be used by the business, provided a strong incentive for accuracy… In many cases there will be no bona fide issue as to the accuracy of the record. It is more efficient to leave the party against whom the evidence is led to raise any queries and make any challenges it may have. (Odgers, 9th edition p.285.) 130 Combe also referred to Southern Cross Airports Corp Pty Ltd v Chief Commissioner of State Revenue [2011] NSWSC 349 in which the valuation of land and buildings at Sydney Airport was sought to be tendered against objection. Gzell J stated as follows: 42 The introductory words of s 69(1)(a)(i) of the Evidence Act that the provision applies to a document that is, or forms part of, the records belonging to or kept in the course of, or for the purposes of a business, encompasses more than documents recording the activities of a business. 43 For example, a valuation of the assets of a business for insurance purposes or for the purpose of determining appropriate depreciation rates does not record the activities of a business but it is kept in the course of, or for the purposes of, the business. 44 It is preferable, in my view, not to seek to define a business record but to be guided to a decision whether or not a document is a business record by the terms of the statutory provision itself. 45 I am satisfied that the 2002 report was a business record of SACL. It was commissioned, received and kept in the course of, or for the purposes of, its business. 131 Guided by the provisions of s 69, the question for me is whether the survey reports "form part of the records belonging to or kept by [Combe or Combe Asia-Pacific] in the course of, or for the purposes of, a business". 132 Clearly they do. They were commissioned for the purpose of the business of the owner of the brand in each case, with the intention that they would be relied on in various ways including in devising advertising campaigns and, possibly, in developing and marketing products. Whilst they do not record the activities of the business, they are records produced for the purpose of those activities. They were intended to be relied upon by the business, and there is no reason to suppose that the hearsay statements recorded in the report are other than accurate. See Shoshana Pty Ltd v 10th Cantanae Pty Ltd [1987] FCA 786; 18 FCR 285 at 295-296 (reversed on appeal but not on the evidence point, Tenth (10th) Cantanae Pty Ltd v Shoshana Pty Ltd [1987] FCA 667; 79 ALR 299). 133 In those circumstances, I decided to admit the survey reports, including the survey reports tendered by Dr Wolff.

Mr Norman 134 Mr Norman is the general manager, a director and company secretary of Combe Asia-Pacific. He has almost 30 years of work experience in the pharmaceutical and personal-care industries. He affirmed two affidavits and gave oral evidence at the hearing about, amongst other things, Combe Asia-Pacific, the history of VAGISIL in Australia and Combe's advertising and promotional activity of the VAGISIL goods. 135 Combe has consistently used the VAGISIL brand in Australia since 1986 in relation to personal-products for feminine use, including powders, creams, moisturising lubricants, wipes and cleansers/washes. 136 Prior to, and since, the priority date, VAGISIL goods have been primarily sold through Coles, Woolworths, Priceline Pharmacy and Chemist Warehouse. VAGISIL goods are also sold through Amcal, MyChemist and Terry White Chemmart throughout Australia. VAGISIL goods are distributed to nearly 4,100 pharmacies and 2,300 supermarkets. 137 The Latitude Wave 1 survey, which is dated 18 July 2013, concluded that the usage of feminine products in Australia is very low compared to other countries around the world and that VAGISIL only had a minor share of that market. However, it concluded, "growth is starting to occur". Survey data was collected in May and June 2013 from 1,227 women aged between 15 and 64 years. The key findings included that VAGISIL enjoys strong brand awareness (45%). Further, 6% of respondents had used VAGISIL in the previous six months. Awareness in the market of six different brands was surveyed, of which VAGISIL registered the second-highest awareness, the highest at 48% being only slightly higher than VAGISIL's 45%. 138 In the period 2010 (when Mr Norman commenced as general manager at Combe Asia-Pacific) to 2015, Combe Asia-Pacific engaged an advertising agency referred to as Starcom. Confidential exhibit TDN-15 includes a number of schedules prepared by Starcom for the years 2011 to 2014. These show the extent of advertising of VAGISIL procured by Starcom in those years. In absolute, as opposed to relative, terms it is difficult to ascribe particular significance to the advertising spend. It seems to me to be significant, but there was no evidence of what competitors spend or any expert analysis of its significance. The schedules reveal regular pre-planned advertising campaigns across a variety of media. 139 In 2015, Combe procured Latitude Insights to carry out the Latitude Wave 2 survey. It was conducted in December 2015 with a sample size of 1,002 women aged between 15 and 64 years. The study showed that the awareness of the VAGISIL brand had improved since the 2013 survey (Latitude Wave 1), achieving the highest percentage brand recall of 53%. 140 Although the survey was conducted after the priority date, I infer that the position was much the same some six or seven months earlier. There is nothing to suggest that there might have been any significant change in that period. It is the type of post priority date evidence that is admissible to prove the state of affairs as at the priority date: JD Heydon, Cross on Evidence (LexisNexis Australia, subscription service, January 2019 update) at [1170]; Astway Pty Ltd v Council of the City of Gold Coast [2008] QCA 073; 159 LGERA 335 at [43]. 141 Mr Norman's evidence was that Combe has promoted the VAGISIL goods through various channels, both before and since the priority date. These included in-store signage or display stands, product brochures and sales literature, magazines, newspapers and other print advertisements, events, television, radio, online (including via a VAGISIL website), social media and in-store promotions (including the distribution of samples). Examples of the advertising were tendered. Much of this advertising is also supported by the Starcom schedules discussed at [138] above. 142 Combe engaged in promotions in magazines and other print media before the priority date. Examples of Combe's advertisements in magazines between 16 September 1995 and the priority date were tendered. They included advertisements in well-known women's and lifestyle magazines including Australian Woman's Weekly, Better Homes and Gardens, Famous, Fernwood, Fitness First, New Idea, NW, Who and Woman's Day. 143 Combe also undertook sponsorships of television programmes on Channels Seven and Ten, two major free-to-air television channels. The VAGISIL goods were promoted by "billboard" advertisements which are short announcements, usually directed before or at the end of a television programme, announcing that the broadcast was sponsored by a brand or product. Examples of such sponsorships were tendered. 144 Combe also promoted the VAGISIL goods through radio advertisements. The Starcom reports referred to above report that VAGISIL radio advertisements were played 99 times through Melbourne radio stations and 66 times through Adelaide radio stations during the period September to December 2014. 145 Mr Norman also gave evidence of promotions undertaken by Combe of the VAGISIL products prior to the priority date by way of providing free samples of products. These included the distribution of 10,000 samples of VAGISIL wipes to 57 Fernwood Fitness Women's Gyms in October 2012. In April 2014, Combe distributed 10,000 samples of VAGISIL goods by placing them in bathrooms and/or change rooms of the top 20 Fitness First gyms, as recommended by Fitness First based on their size and membership. The sampling campaigns were run in tandem with advertising campaigns. 146 In 2014, Combe partnered with Broadway & Houston Australia Pty Ltd trading as PinchMe. It operates an online platform for the distribution of samples to subscribers and members in exchange for their reviews. Combe provided over 5,000 free units of VAGISIL Feminine Wash pH Balance to be distributed to PinchMe members in the first half of July 2014. 147 PinchMe produced a report on the campaign. It shows that all 5,000 samples were claimed by PinchMe members on the first day of the campaign. It also reports that the VAGISIL product page of the PinchMe website received 33,000 page views from 26,800 unique browsers, and generated 1,268 clicks on a "Buy Now" button which diverted to the VAGISIL goods at a Chemist Warehouse website. The consumer feedback indicated that 31% of respondents could recall having previously seen VAGISIL advertising. 148 Mr Norman also gave evidence of digital advertising, trade promotions, search engine marketing and the use of a VAGISIL website. 149 Combe undertook a sampling campaign at the Melbourne, Adelaide and Perth Royal Shows in September and October 2015. Sample sachets of two VAGISIL products were placed in the show bags supplied by well-known magazines, Elle Australia and Cleo. Consumers who purchased the show bags were subsequently surveyed and asked to provide feedback on the show bag itself and, more specifically, the VAGISIL goods. The Chicane Marketing report records that amongst the purchasers of the show bags, prior brand awareness of VAGISIL was significant: 48% in Adelaide, 56% in Melbourne and 59% in Perth. The surveys were conducted after the priority date but can be taken to be broadly reflective of the position at the priority date (see para [139] above). These figures are consistent with the Latitude figures. 150 In 2016, Combe engaged beautyheaven to conduct further market testing on intimate care products and VAGISIL goods. The survey was conducted in July 2016 and had 1,524 female respondents. The survey showed that VAGISIL was the feminine health brand with the highest brand recall at 79%, with the next highest competitor being at 69%. VAGISIL was also the feminine health brand that respondents were most likely to have previously tried (34%), as compared to the nearest competitor being at 31%. Once again, although reflecting the position after the priority date there is no reason to suppose that the position as at the priority date would have been materially different. 151 In cross-examination of Mr Norman by counsel for Dr Wolff, the point was made that the survey reports (other than Chicane) do not record how the sample of respondents was selected. Neither is it apparent whether the sample sizes can or should be regarded from a statistical perspective as meaningful. I do not consider these criticisms to be significant in view of the high level use to which the reports are put - they show generally that there was significant brand awareness and use in the market. The precise percentages and nuanced differences between the numbers are not important. If there was some material flaw in the methodology of the survey, it was not exposed in cross-examination and Dr Wolff adduced no expert evidence to expose it.

Mr Pidgeon 152 Mr Pidgeon is the commercial, finance and operations manager for Combe Asia-Pacific. He commenced his employment in that role in 2011. He is a chartered accountant. 153 Mr Pidgeon adduced evidence in the form of a spreadsheet (exhibit DP-1) prepared by him which summarises the units sold, gross sales (in AUD) and consumer advertising and promotions (CAP) expenditure across VAGISIL product groups in Australia for the years between 1994 and 2017. 154 Mr Pidgeon was cross-examined by counsel for Dr Wolff in order to establish errors in the figures presented in his spreadsheet. It was then submitted that that cross examination revealed errors, inaccuracy or reasons for unreliability of the figures for various years up to and including 2013. However, none of that affected the figures for 2014 and 2015 which are the most relevant and are reflected in the columns for those years (page 1142 of the Court Book). Whilst it is difficult to assess those figures in the absence of figures for the market as a whole, or particular segments of the market, including the products of other traders, it can at least be concluded that they do not suggest an absence of reputation of VAGISIL in the market.

Mr De Lima 155 As indicated, Mr De Lima is the marketing manager of Combe Asia-Pacific. He commenced employment in that role in October 2011. 156 Mr De Lima prepared spreadsheets based on information obtained about all participants in the relevant market from IRi Australia and Aztec. That data shows, for example, that in Mr De Lima's category "total feminine hygiene" VAGISIL accounted for 10% of the units sold in pharmacies and 17% of the units sold in supermarkets, with a figure of 15% across pharmacies and supermarkets combined. Measured in dollars, the comparable market share is 16%, 12% and 14% respectively. 157 However, in the cross examination of Mr De Lima it became apparent that his category of "total feminine hygiene" had two potential deficiencies. First, it is only a subcategory of what IRi Australia and Aztec categorised as "total feminine hygiene" because Mr De Lima included only products that he considered to be similar to or competitors of the VAGISIL products and excluded vast numbers of other "feminine hygiene" products. Second, he selected what he considered to be only the major manufacturers of the products that he was considering and not the minor manufacturers. Thus, his figures do not reflect the total figures for even the products that he regards as similar to or competitors of the VAGISIL products. 158 In the circumstances, I am loath to place any reliance on VAGISIL's market share as reflected in Mr De Lima's spreadsheet. However, the absolute, as opposed to the comparative, figures may have some relevance. 159 For the year 2015, exhibit LL-2 reflects sales figures for VAGISIL of $1,172,900 for pharmacies and $1,244,496 for supermarkets, which together amount to $2,417,396. The number of units sold is 192,142 for pharmacies and 206,811 for supermarkets, which together amount to 398,953 units. These are less than the figures given by Mr Pidgeon in exhibit DP-1. The difference is presumably accounted for in online and other sales. 160 Once again, without being able to make any comparison it is difficult to analyse these figures. However, it can at least be concluded that these figures are not suggestive of an absence of reputation. 161 Mr De Lima testified in cross-examination, that the "V" device is always (except, presumably, on radio) used in the marketing and sale of VAGISIL products. That evidence is confirmed by the hundreds of examples of advertisements and promotions that were tendered.

Ms Thevessen 162 Dr Wolff, through Ms Thevessen, tendered two spreadsheets containing data reported by IRi Australia, namely exhibits AT-18 and AT-19. 163 Exhibit AT-18 shows the sales, market share and growth of brands in Australian dollars of "feminine hygiene" products in the "grocery" sector (i.e. supermarkets) by way of "moving annual turnover" for the periods ending in 5 January 2014, 4 January 2015 and 3 January 2016. In the evidence it was explained that the "feminine hygiene" category as used by IRi includes the total range of products within that descriptor including, as indicated above, vast numbers of products quite unlike the VAGISIL products. Thus, as to be expected, VAGISIL's market share in this category is small. Indeed, it is so small that it is reflected with "other manufacturers" and not separately. The "other manufacturers" enjoyed a market share of 0.6%, 1.0% and 1.2% respectively in each of the years reflected. 164 Exhibit AT-19 reflects the moving annual turnover in pharmacies in the "total feminine care" category in the years ending on 29 March 2015 and 27 March 2016. Once again, there are a large number of products within this category, which the evidence reflected is essentially the same as the "feminine hygiene" category used for supermarkets that are not similar to or in competition with the VAGISIL products. The product description "VAGISIL feminine care" is said to have had 1.4% and 1.8% market share in each of the years reflected arising from sales of $828,028 and $1,130,652 respectively. 165 The market shares for VAGISIL in the supermarket and pharmacy categories, on the basis of the above figures, would be regarded as very small. However, that depends entirely on how one categorises the relevant market for reputation purposes. I will consider that further below.

Likelihood of deception or confusion 166 As indicated, the question is whether there was, as at the priority date, a substantial or significant number of people likely to be concerned in the purchasing of the relevant goods who would know the VAGISIL marks. The applicable class of consumers is prospective purchasers of non-prescription feminine healthcare or hygiene products. That is to say, a large market. 167 Although, as the IRi data demonstrates, the market share of VAGISIL products in that market is small, I nevertheless consider that Combe has established a reputation as at the priority date for the VAGISIL marks in the broader market. That arises from a number of factors in the period up to and including 2015. I have in mind, in particular, the long period of time over which VAGISIL branded products were sold, the large number of pharmacies and supermarkets throughout Australia through which the goods were sold, the substantial advertising and promotional activity and expenditure in relation to the VAGISIL marks in media and forums accessible to consumers in the relevant market, the actual sales of VAGISIL products and the significant brand awareness evidenced by the Wave, PinchMe, Chicane and beautyhaven surveys. 168 Combe submitted that the reputation of the VAGISIL marks significantly increases the risk of confusion. It submitted that consumers of the relevant goods are likely to be familiar with the VAGISIL marks, and when they encounter the VAGISAN mark they would wonder whether goods branded with it were the same as, or related to, goods branded with the VAGISIL marks and thus whether they emanated from Combe. 169 It was submitted that apart from VAGISIL, the leading brands in the feminine care category in Australia are FEMFRESH, SUMMER'S EVE, LIBRA GET FRESH, AMELE and CANESTON, which I accept based on the IRi data presented by Ms Thevessen (exhibit AT-18). It was submitted that against that market background, and because of the existing reputation of VAGISIL, another mark beginning with VAGIS- is likely to cause confusion. 170 I do not accept those submissions for the reasons given above (paras [41]-[75]) in relation to the lack of the deceptive similarity between the relevant marks. In addition, from the evidence that the VAGISIL mark is always used in conjunction with the striking "V" device (except in non-visual uses) it is to be concluded that it is principally the VAGISIL mark in conjunction with the "V" device that enjoys what reputation VAGISIL enjoys in the Australian market, and not VAGISIL on its own. The significance is that to the extent that there is confusion between the VAGISAN and VAGISIL marks, because of the reputation of the VAGISIL marks being principally the "V" device mark, such confusion is likely to be less that what it might otherwise be. That is because the "V" device is a particularly distinct element and clearly distinguishes it from the VAGISAN mark that has no similar device. 171 Whilst VAGISIL clearly enjoys a reputation in Australia, it is not a household name that is likely to be known by just about everyone. It is quite unlike VIAGRA, for example, as dealt with in Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787, where it was held that because of the wide-spread reputation of VIAGRA the mark HERBAGRA was likely to deceive or cause confusion. The fact of VAGISIL's reputation adds little to the enquiry that has already been undertaken in relation to s 44. 172 I also take into account that there was no evidence of actual confusion notwithstanding that similar products under the names VAGISAN and VAGISIL have been traded in competition with each other in the United Kingdom since 2013. In relation to VAGISAN that was the evidence of Ms Thevessen and in relation to VAGISIL it was the evidence under cross-examination of Mr De Lima. Evidence of actual confusion is of course not necessary, but its absence can be telling in circumstances where the competing marks have been used side-by-side in the same market. See Notarus v Barcelona Pty Ltd [2019] FCA 4; 138 IPR 304 at [354]. 173 In short, it was not established that because of the reputation of the VAGISIL marks a significant or substantial number of potential consumers might be confused or deceived by the VAGISAN mark such as to wonder whether there is any connection between it and VAGISIL.

Section 59 174 Section 59 was, and remains, in the following terms: 59 Applicant not intending to use trade mark The registration of a trade mark may be opposed on the ground that the applicant does not intend: (a) to use, or authorise the use of, the trade mark in Australia; or (b) to assign the trade mark to a body corporate for use by the body corporate in Australia; in relation to the goods and/or services specified in the application. Note: For applicant see section 6. 175 It is common ground that the intention to use a trade mark must exist at the date of the application, i.e. the priority date: Food Channel at [74]. It is the opponent, in this case Combe, who must establish that the applicant, i.e. Dr Wolff, did not intend to use or authorise the use of the mark in Australia: Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100; 75 IPR 478 at [158]. As Jacobson J in that case observed (at [160]-[161]), it is not necessary that the intention be immediate or within a limited time, and the subjective nature of the intention, the presumption of intention flowing from the application for registration and the onus on an opponent usually make it difficult for an opposition to succeed on this ground. 176 The making of the application to register the VAGISAN mark is itself to be regarded as prima facie evidence of intention to use the mark: Aston v Harlee Manufacturing Co [1960] HCA 47; 103 CLR 391 at 401. However, once an opponent has made out a prima facie case that there was a lack of intention to use a mark, the onus shifts to the applicant to establish that intention: Food Channel at [72]. 177 Ms Thevessen was the worldwide export manager for Dr Wolff from 27 April 2012 and was in that position as at the priority date. Ms Thevessen had been employed in the export department since June 2004. The Australian territory formed part of her portfolio until 1 May 2016. 178 From an early stage, Ms Thevessen was involved in the planned entry of VAGISAN products to the Australian market. This required her to undertake business trips to Australia to investigate the market for ALPECIN, PLANTUR and VAGISAN and to visit stores in Australia in January, May, June, August and October 2015. Dr Wolff commenced selling its ALPECIN product in Australia in 2013 and its PLANTUR product in Australia from 2017. 179 There is no explanation why Dr Wolff has not yet commenced selling its VAGISAN products in Australia. Combe sought to make something of this, but I infer that it is because it has not yet achieved an unchallenged registration of the VAGISAN mark. In any event, Ms Thevessen was not asked about this and, had she been asked, there may have been an explanation that did not indicate any lack of intention with regard to VAGISAN as at the priority date. 180 Ms Thevessen explained that before Dr Wolff enters a new market it takes certain preparatory steps. One of those is for the export department to create an export checklist. As at 2014, she drafted most of the export checklists. 181 An export checklist is used when a potential new distribution partner is sought for a new export territory. Under European law, there are certain security checks that must be conducted in respect of a potential new partner. This requires the partner to be named in the checklist. There are also checks required in relation to the intended export products under European law. For the purpose of those checks, product descriptions and customs tariff numbers are also included in the export checklist. 182 Through Ms Thevessen, Dr Wolff tendered a copy of an export checklist dated 20 November 2014 and an English translation thereof. It records the details of an intended distribution partner in Australia and a number of products with customs tariff numbers including five products bearing the VAGISAN brand. 183 Ms Thevessen stated that since at least October 2014 it was the intention of Dr Wolff to bring "the brand" to Australia. 184 In cross examination by senior counsel for Combe, Ms Thevessen agreed that as at May 2015 the extent of Dr Wolff's intention to "sell" any VAGISAN products in Australia was limited to the five products that were included in the export list. The five products in question are the following: VAGISAN Myko Combi, VAGISAN Intimate Wash Lotion, VAGISAN Lactic Acid, VAGISAN Moisturising Cream and VAGISAN Moisturising Cream Combi. 185 Mr Thevessen's evidence in cross examination was that none of these products is directed for use on any part of the human body other than the female genital area. 186 On the basis of that evidence, it was submitted on behalf of Combe that the s 59 ground of opposition had been made out in relation to the specified goods in class 3 because Dr Wolff had no intention in good faith to use the VAGISAN mark in relation to soaps or cosmetics other than those directed for application to the female genital area. 187 I do not accept that submission because the intended products are soaps and/or cosmetics and it is not necessary that Dr Wolff should have had an intention to introduce products in Australia that cover every conceivable subcategory of soaps and cosmetics. The fact that it intended to introduce products that are soaps and products that are cosmetics, albeit limited in their application to a particular part of the body, is sufficient intention to use the VAGISAN mark in respect of the products designated in class 3. 188 In that regard, to establish use in respect of a category of goods it is not necessary to establish that the mark was used on every type of product which might come within that particular term or description of goods. For example, there would be use with respect to clothing if the owner of the mark sold a range of clothing but did not sell, for example, swimwear or ties. See Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135; 176 FCR 300 at [138]. The same is true of intention to use. 189 Similarly, Ms Thevessen confirmed that insofar as any of the products might be described as pharmaceutical products, they are directed for use in the female genital area and only for use in that area. 190 On the basis of that evidence, Combe submitted that the s 59 ground of opposition in respect of pharmaceutical products and sanitary products for medical purposes in class 5 had been made out because Dr Wolff had no intention in good faith to use the VAGISAN mark in relation to such goods other than those directed for application to the female genital area. I do not accept the submission for the same reason, i.e. it is not necessary that Dr Wolff had the intention to use the mark in respect of every type of product which might come within those particular terms or descriptions of goods. 191 The remaining products are dietetic substances for medical purposes in class 5. In that regard, Dr Wolff tendered details of its product VAGISAN Bio-Lactin and a hard copy of a visual presentation dated March 2015 that was used to train partners on that product. The product comprises biotin and lactic acid bacteria capsules. It is an oral food supplement for the maintenance of normal skin and mucous membranes, including vagina mucosa. Its scope of application is generally for the sustainment of vaginal health and it is said to be "for a healthy intimate area". 192 Ms Thevessen testified that the product was introduced as part of Dr Wolff's range of products in Germany in about March 2015 and that it has not subsequently been introduced into any other markets. 193 On the basis of that evidence, Combe submitted that there is no evidence that Dr Wolff had any intention, as at May 2015, to use the VAGISAN mark in respect of dietetic products in Australia. That is not, however, correct because the fact of the application for registration having been made in respect of dietetic products is prima facie evidence of such an intention at the time of the application. Moreover, the fact that the product in question has not subsequently been sold in any market other than Germany is not relevant to the question whether there was the requisite intention as at May 2015. 194 The fact of intention is also supported by the fact that Dr Wolff had such a product at the relevant time. In addition, the presentation records that "additional rights [are] available in countries for Dr Wolff partners!". This shows that as at March 2015, the date of the presentation, Dr Wolff envisaged as a realistic possibility that the product might be made available in countries other than Germany, and that that might be by licence, i.e. "additional rights" to "partners". 195 Thus, in my view there is evidence that Dr Wolff had the requisite intention in respect of dietetic products at the time of the application. However, consideration has to be given to Ms Thevessen's concession in cross examination that Dr Wolff's intention at that time with respect to the sale of products in Australia was limited to the five products listed in the export checklist. Some effort was made in re-examination to open that up but it did not get anywhere. The evidence remained unequivocal, namely that as at May 2015, to the extent that Dr Wolff had any intention to sell any VAGISAN products in Australia, it was limited to the products listed in the export checklist. The dietetic product is not on that list. 196 It is, however, not only sale of products under the mark that can constitute use. Another form of use would be by licence which, as I have indicated, appears to be what the presentation contemplated. The cross examination was restricted to sale and did not exclude other types of use. 197 In those circumstances, I consider that Combe failed to establish that Dr Wolff did not have the requisite intention and that the opposition based on s 59 must fail.

Conclusion 198 For the above reasons, Combe's opposition to the registration of Dr Wolff's VAGISAN mark fails and Dr Wolff's appeal must succeed. 199 I will direct that the parties bring in agreed or competing orders that reflect what I have decided and that also deal with the resolution of any outstanding issues including costs. I certify that the preceding one hundred and ninety-nine (199) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Stewart.