Marks with 'evocative' prefix held to be dissimilar

On March 10 2010 the French Trademark Office rejected Schering Plough's opposition against the registration of the trademark AERALIS.
On December 2008 French company Gibaud filed an application for the registration of the mark AERALIS in France for goods in Classes 5 and 10 of the Nice Classification, including “pharmaceutical products, hygienic products for medical purpose; dietetic substances for medical use; food for babies; plasters, material for dressings”.
Schering opposed the application on the basis of its earlier Community trademark AERIUS, which is registered in Class 5 for “pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use; food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants”.
The Trademark Office carried out an overall assessment of the similarity of the goods and held as follows:
  • The goods in Class 5 were identical or similar; and
  • The goods covered by the earlier mark in Class 5 and the goods covered by the mark applied for in Class 10 were dissimilar, as their nature, destination and public were different.
This is a French specificity: French authorities usually consider that goods in Classes 5 and 10 are dissimilar, while EU authorities mostly find that they are similar. The destination of goods in Classes 5 and 10 may be the same, and they are often used by the same persons for the same purposes. Moreover, such goods may come from linked companies.  
The conclusion of the office in the present case is remarkable in that the goods covered by the AERALIS mark in Class 10 included "supportive bandages for joints" and "orthopaedic belts", which could be directly linked to the "plasters" and "dressings" covered by the earlier mark.
With regard to the comparison of the marks, the office pointed out that AERALIS and AERIUS shared five letters, in the same order. Both marks begin with the prefix 'aer' and have a conceptual link with the word 'aerial'.
Nevertheless, according to the office, the similarities between the marks were insufficient to create a likelihood of confusion among the public, because:
  • the endings of the marks were different ('alis' and 'ius'); and
  • the earlier mark contained an unusual association of vowels.
Moreover, the office considered that the common prefix 'aer' could be perceived as an indication that the goods were used for the treatment of the respiratory system or to filter the air. Consequently, as the marks shared only an evocative prefix and had different endings, the office found that they were dissimilar and rejected the opposition.
The reasoning of the office is debatable. Arguably, the prefix 'aer' does not necessarily and immediately evoke an association with goods used for the treatment of the respiratory system. A few days earlier, the office had also found that the marks AEROSIL and AEROCARE for goods in Classes 1 and 2 were dissimilar because the prefix 'aero' could refer to aerosols.
Moreover, the office applied the same reasoning to all the goods in Class 5 without considering the specific goods covered by each mark. For instance, it is difficult to see how “dietetic substances for medical use” or “food for babies” could be linked with the treatment of the respiratory system.  
Jean-Philippe Bresson and Séverine FITOUSSI, INLEX IP EXPERTISE, Paris

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