CLORALEX held to be confusingly similar to CLOROX

European Union
In Industrias Alen SA de CV v The Clorox Company (Case B 983 835, March 16 2009), the Opposition Division of the Office for Harmonization in the Internal Market (OHIM) has held that the trademark CLORALEX was confusingly similar to the earlier trademark CLOROX.
 
Mexican company Industrias Alen SA de CV sought to register CLORALEX as a Community trademark for goods in Classes 3 and 5 of the Nice Classification. The Clorox Company lodged an opposition based on national registrations for the trademark CLOROX in various European countries for goods in Classes 3 and 5.
 
Unsurprisingly, the Opposition Division found that the goods covered by the marks were similar. It then turned to the comparison of the marks CLORALEX and CLOROX.
 
From a visual point of view, the Opposition Division held that the shared prefix 'clor' and the last letter 'X', which is quite striking, would be readily noticed by the relevant public. The Opposition Division found that the similarities between the marks overwhelmed the differences in length and ending ('ox' and 'alex').
 
From a phonetic point of view, the fact that the beginnings and last sounds of CLORALEX and CLOROX were identical was considered to have a significant influence on the overall impression of the marks. According to the Opposition Division, this was sufficient to conclude that there was a degree of aural similarity.
 
From a conceptual point of view, the Opposition Division pointed out that the marks would be perceived as fanciful terms by the relevant public. Therefore, the perception of the marks rested only on the visual and aural impressions produced by them.
 
In making a global assessment of the marks, the Opposition Division concluded that the similarities between CLORALEX and CLOROX counteracted the differences in the second parts of the words. The differences were not of such a nature as to dispel a likelihood of confusion.  
 
The Opposition Division thus disregarded the differences in pronunciation and length between CLORALEX and CLOROX and focused only on the beginning of the marks and on the last letter 'X'. However, in doing so, the Opposition Division erred in its overall assessment of the marks, as it concentrated only on the common elements. The differences in pronunciation, together with the different ending and structure of the marks, pointed to an absence of similarity.
 
The approach of the Opposition Division in this case seems to follow an emerging tendency in respect of pharmaceutical trademarks. OHIM appears inclined to find a likelihood of confusion where the marks share a common prefix and an identical last letter (especially if that letter is unusual or particularly perceptible), regardless of the differences in structure between the marks.
 
For example, on February 2 2009 the Fourth Board of Appeal of OHIM ruled that the trademark BOTUMAX was confusingly similar to the earlier mark BOTOX. The fact that BOTOX was held to be a well-known trademark played a role in the global assessment of the marks.
 
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris
 

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