PEROXYNET opposition to PEROXAL perishes

A hearing officer of the Irish Patent Office has rejected an opposition to the registration of the mark PEROXAL filed by the owner of the mark PEROXYNET for similar products.

In 2001 Atofina (now known as Arkema France) applied to register PEROXAL in Ireland as a trademark in Classes 1, 2 and 5 of the Nice Classification. Degussa AG opposed the application on the basis of its Community trademark registrations for PEROXYNET and PEROXYBRIGHT. Atofina asserted that the prefix 'perox' is a well-known prefix derived from the word 'peroxide'. Degussa disagreed and submitted that there was no evidence for this.

The hearing officer held that Degussa was entitled to rely only on its registration for PEROXYNET as its application to register PEROXYBRIGHT was subsequent to the date of filing of the PEROXAL mark. The hearing officer found that there were clear and close visual and aural similarities between the marks, but also that there were obvious visual and aural differences arising from the different endings of the respective marks.

He also considered the impression likely to be created by the marks in the mind of the average consumer of the relevant goods - that is, his or her conceptual appreciation of the words in question. He agreed that Atofina had failed to show that 'perox' is a commonly used abbreviation of the word 'peroxide' or that the average consumer may be expected to be already familiar with its use in that way in the course of trade.

However, he then held that the average consumer of the goods in question - chemicals, in particular hydrogen peroxide - would instinctively and intuitively perceive the inclusion of the 'perox' element in the respective trademarks as primarily descriptive of the nature of the products so marked (ie, as containing a peroxide of some kind), notwithstanding that he or she has no prior understanding of that element as directly indicative of peroxide.

Further, he noted that the obvious reference made by the 'perox' element to the nature of the goods is likely to cause consumers to focus more on the additional parts of the marks to identify and distinguish between the different products on offer. The adoption and simultaneous use by different undertakings of trademarks for chemicals consisting of words commencing with 'perox' is not likely to be perceived by consumers as unusual or unlikely. Therefore, the inclusion of the 'perox' element in the marks is not determinative of the likelihood of confusion between them, notwithstanding that that element dominates the look and sound of each of the marks.

Thus, the hearing officer reasoned that while the 'perox' element may dominate each of the words 'peroxynet' and 'peroxal', the conceptual significance in the respective trademarks PEROXYNET and PEROXAL, in the context of the relevant goods, renders it of considerably lesser significance in terms of the likelihood of confusion between those marks.

A likelihood of confusion could be said to exist only if the remaining elements of the respective marks were sufficiently similar such that the overall impression created by each, leaving aside the allusion to peroxide, was essentially the same. This was not the case here as the 'ynet' and 'al' components of the respective marks are sufficiently different to distinguish one from the other and to render the overall impression created by them sufficiently different to eliminate the likelihood of confusion. The trademark PEROXAL is not likely to be taken as signifying a connection with goods marked PEROXYNET or with the undertaking putting those goods on the market.

Accordingly, the hearing officer dismissed the opposition.

Patricia McGovern, P McGovern & Co Solicitors, Dublin