DERM(I) marks held to be confusingly similar

European Union
In A Menarini Industrie Farmaceutiche Riunite Srl v Healthpoint Ltd (Case B 1 338 302, October 22 2009) and Aventis Pharmaceuticals INC v Op Ozone Pharma Ltd (Case B 1 204 817, October 23 2009), the Opposition Division of the Office for Harmonization in the Internal Market (OHIM) has considered trademarks for pharmaceutical goods that all included the term 'derm'/'dermi'.
 
In the first case, US Company Healthpoint Ltd applied to register the word mark XENADERM as a Community trademark (CTM) for goods in Class 5 of the Nice Classification. Italian Company A Menarini Industrie Farmaceutiche Riunite Srl filed an opposition based on its earlier Spanish trademark MENADERM for goods in Class 5. The Opposition Division upheld the opposition, concluding that the goods were identical and that the marks were similar.
 
In the second case, Op Ozone Pharma Ltd sought to register the figurative trademark DERMIO for goods in Class 5. US company Aventis Pharmaceuticals INC lodged an opposition based on its earlier CTM DERMIK for goods in Class 5. The Opposition Division upheld the opposition, finding that the goods were identical or similar, and that the marks were similar.
 
In both cases, the Opposition Division held that the marks at issue were similar from a visual and phonetic point of view. However, what is striking in these decisions is the conceptual comparison of the marks and the overall assessment of the likelihood of confusion.
 
In the first case, the Opposition Division found that the common suffix 'derm' could be perceived as alluding to the Spanish word 'dermatología' (meaning 'dermatology'). In the second case, it pointed out that both marks contained the prefix 'dermi', which is very similar to the Greek word 'dermis' (meaning 'skin'). In both cases, the Opposition Division found that there was a conceptual link between the marks due to the presence of the term 'derm/dermi'.
 
With regard to the global assessment of the marks, the Opposition Division applied the same two-step reasoning in both cases. First, it stated that the suffix 'derm' and the prefix 'dermi' were weak elements in relation to goods in Class 5, as they allude to the field of dermatology. However, it then added that the relevant public was unlikely to "dissect the marks into separate parts". According to the Opposition Division, the public would rather see the marks as a whole - and, as such, they did not convey any clear meanings in relation to the goods at issue. The Opposition Division justified its decisions by stating that:
 
"the average consumer only rarely has the chance to make a direct comparison between the different marks, but must place his trust in the imperfect picture of them that he has kept in his mind."
 
It is difficult to see why OHIM considered the suggestiveness and low distinctive character of the term 'derm/dermi', as these elements have no influence on the overall assessment of the likelihood of confusion. The visual and phonetic similarities between the marks should have been sufficient to find a likelihood of confusion, without making additional considerations. Nevertheless, it is surprising that OHIM mentioned the weakness of 'derm'/'dermi', and then decided that the marks were confusingly similar. The common element of the marks was suggestive and, consequently, should be have given limited protection.
 
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris

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