DERM(I) est évocateur mais …

OHIM – October 22, 2009 – MENADERM/XENADERM

In two decisions of October 22 and 23, 2009, the Opposition Division of the OHIM considered that he mark MENADERM / XENADERN and DERMIK / DERMIO (each proceeding involving different parties) were confusingly similar.

The suffix “DERM” was actually regarded as likely to be alluding to the Spanish word “dermatologia” (i.e.“dermatology”). In the second proceeding “DERMI” was pointed out as being very similar to the Greek word “dermis” (i.e. “skin”).

When making its global assessment, the Examiners stated that “DERM” and “DERMI” were weak elements in relation to goods in class 5. However, they added that the relevant consumers would unlikely dissect the marks into separate parts. The public would rather see the marks as a whole which do not convey any clear meanings in relation to the goods at issue. The Examiners justified their decisions by saying 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.

The already existing aural and phonetic similarity especially between XENADERM and MENADERM should have been sufficient to rule likelihood of confusion without entering into additional considerations. But mentioning the weakness of DERMI and then deciding that DERMIO (which by the way also including a device) and DERMIK are globally similar hardly makes sense as these marks not only matched in one of their part only: they matched in an element which is allusive and should consequently be given restrictive protection.

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