Pharmaceutical marks held to be dissimilar despite common prefix

In SND LBS v Allergan Inc (Case 09-2374, January 14 2010), the French Trademarks Office has held that there was no likelihood of confusion between the marks ALLERGAN and ALLERGOR.
On April 3 2009 French company SND LBS filed an application for the registration of the word mark ALLERGOR in respect of “pharmaceutical and veterinary products; dietetic substances for medical use” in Class 5 of the Nice Classification. On July 10 2009 US company Allergan Inc lodged an opposition on the basis of its earlier French trademark ALLERGAN for goods in Class 5. Allergan alleged that the mark applied for constituted an imitation of its earlier registered mark. The Trademarks Office denied that there was a risk of confusion between the marks, holding that, while the goods were identical or similar, the marks themselves were dissimilar.
According to the examiner, ALLERGOR and ALLERGAN shared the prefix 'allerg', but had different endings. The examiner found that this common prefix was insufficient to give rise to a likelihood of confusion in the mind of the public.
The examiner pointed out that the prefix 'allerg' was evocative of the word 'allergy' and, consequently, had a weak distinctive character in respect of pharmaceutical products, as it alluded to the purpose of the goods (ie, fighting allergies). Allergan argued that its ALLERGAN-branded products had no anti-allergic properties, which was reflected by the broad wording adopted in the specification of the goods. The examiner dismissed this argument, stating that the opposition had to be assessed solely on the basis of the goods covered by the marks, without taking into account their effective or supposed use.           
As a result, the examiner found that the distinctiveness of the marks lay in their endings, rather than in the prefix 'allerg'. As the suffixes 'or' and 'an' had nothing in common, the examiner concluded that ALLERGOR did not imitate the ALLERGAN mark.  
This conclusion is understandable to the extent that the prefix 'allerg' has limited distinctive character in respect of pharmaceutical products. However, a couple of aspects remain open to criticism.
First, the examiner considered that the prefix 'allerg' was evocative and thus had limited distinctive character. However, it did not go as far as stating that it was descriptive or totally devoid of distinctive character. Because the marks at hand were both word marks of the same length covering identical products, one might argue that the Trademarks Office's reasoning was improper - especially in light of the fact that there are very few marks with the same structure and length in Class 5.
Second, the reasoning of the examiner appears self-contradictory. One the hand, the examiner stated that no account should be taken of the supposed use of the products. However, on the other hand, the examiner made guesses as to the anti-allergic properties that the products may have. This might represent a possible ground of appeal to the Court of Appeal.
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris

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