CIDINE and HELICIDINE held to be dissimilar in surprising decision

European Union
In Ajinomoto Omnichem v Almirall-Prodesfarma SA (Case R-1645/2007-2, May 27 2009), the Second Board of Appeal of the Office for Harmonization in the Internal Market (OHIM) has held that there was no likelihood of confusion between the marks CIDINE and HELICIDINE. 
Ajinomoto Omnichem, a company incorporated in Belgium, sought to register the mark HELICIDINE as a Community trademark for pharmaceutical products in Class 5 of the Nice Classification. Spanish company Almirall-Prodesfarma SA opposed the application based on its earlier Spanish registration for the trademark CIDINE for goods in Class 5. The Opposition Division of OHIM ruled that the marks were visually and phonetically similar, pointing out that the earlier mark was included in its entirety in the mark applied for. However, the Second Board of Appeal disagreed and annulled the decision of the Opposition Division.
From a conceptual point of view, the board held that health professionals would regard the suffix 'ine' as meaning “belonging to, made of, similar to”. The board pointed out that in the pharmaceutical industry, the suffix 'ine' is often added to the name of a chemical component to indicate that the product derives from it. However, the board considered that the elements 'heli' and 'cidine', as well as the term 'helicidine', had no particular meaning and would thus be perceived as fanciful words.
From a visual and phonetic point of view, the board acknowledged that the earlier mark was reproduced in its entirety in HELICIDINE. However, because the elements 'heli' and 'cidine' have no particular meaning for Spanish consumers, the element 'cidine' does not have a distinctive position in the mark applied for. The board concluded that 'helicidine' is an invented term which cannot be divided into two elements having their own meaning. Moreover, the board found that the relevant public would focus mainly on the beginning of the mark (ie, the element 'heli'), which has no counterpart in the earlier mark. Consequently, the board held that the marks were dissimilar.   
The decision may seem surprising in light of the fact that the earlier mark was reproduced in its entirety in the mark applied for. Arguably, HELICIDINE might be perceived as a declension of the CIDINE mark. Moreover, one may argue that the element 'cidine' is the dominant element of the mark applied for from a visual and phonetic point of view. Nevertheless, the board’s decision is in line with the practice of OHIM, which gives prevalence to prefixes when assessing the likelihood of confusion.
The decision also seems to follow the 'whole without being divided' approach, which has been applied in France for decades. However, this approach usually applies to trademarks whose elements have a particular meaning, rather than to signs with no meaning. Therefore, it was surprising that OHIM considered the marks to be visually and phonetically dissimilar on the grounds that 'heli' and 'cidine' have no meaning for the relevant public. The fact that two trademarks and their components have no meaning should not prevent a finding of a likelihood of confusion.
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris

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