Athene Legal were recently instructed in a trade mark dispute in which the Court of Appeal upheld a High Court decision that VAGISAN was an infringement of the VAGISIL trade mark.
Combe International LLC (Combe US) and Combe International Ltd (Combe UK) (together Combe) are respectively the owner and licensee of three UK trade mark registrations for the word VAGISIL in respect of female intimate healthcare products.
Combe issued trade mark infringement proceedings against Dr August Wolff GmbH & Co KG Arzneimittel in relation to Dr Wolff’s use of the signs VAGISAN and DR WOLFF’S VAGISAN in relation to identical goods. Dr Wolff denied infringement and counterclaimed for a declaration of non-infringement in relation to the Sign DR WOLFF’S VAGISAN.
This was a complex and highly contested trade mark dispute between a global retailer of healthcare products and a German pharmaceutical company. The Defendants had attempted to register trade marks in multiple jurisdictions across the world and following opposition by the Claimants the parties entered into co-existence negotiations. The parties failed to come to a settlement, which since 2015 resulted in ongoing proceedings between the Claimants and First Defendant in a number of jurisdictions, including Australia, New Zealand, Singapore and the EU.
The liability trial of the claim and counterclaim was heard over five days, at which it was declared that the Defendants had infringed the First Claimant’s UK trade marks and the Defendants’ counterclaim was dismissed. The Defendants subsequently appealed to the Court of Appeal on three grounds, following which the case became the leading case on statutory acquiescence in trade mark law.
We were instructed on behalf of the receiving party Claimants in relation to detailed assessment proceedings in the Senior Courts Costs Office. We first assisted our clients with the preparation of an electronic bill of costs, which sought to justify and support the costs claimed through a detailed narrative and clear and concise descriptions of the work undertaken.
Thereafter, our team reviewed the paying party’s points of dispute and drafted detailed points of reply, including points of principle in relation to the core and technical costs issues, as well as replies to individual items of costs challenged by the paying party. In addition to the drafting of replies, we undertook our own analysis of the costs claimed and provided advice to our clients on the merits and quantum of the costs claim, including what we believed the court would allow for the costs at detailed assessment. This formed the basis of the settlement negotiations that ensued and which were ultimately successful, thereby avoiding the costs of a lengthy detailed assessment hearing.
To find out how we can assist you with the preparation of bill of costs, drafting of points of reply or any other assistance with costs in the Intellectual Property List, please get in touch at info@athenelegal.co.uk or call us 0207 459 4843.
