Two years ago, we commented on the difficulties that Cypriot cheesemakers faced when attempting to oppose the registration of a figurative mark containing the word BBQLOUMI, relying on EU collective trade mark registrations for HALLOUMI – see here. That opposition was rejected on the grounds that the ‘Halloumi’ mark had low distinctive character and was seen as being descriptive, meaning it was not sufficient to give rise to a likelihood of confusion. Notably, that ruling confirmed that EU collective marks were subject to the same basic requirements of distinctiveness and likelihood of confusion as traditional EU trade marks and should not be treated any differently. It made it clear that collective marks were not intended to protect marks which may be associated in the minds of consumers with a particular geographical origin, but which do not sufficiently distinguish the goods and services of the members of a particular association.
Since this decision, the term HALLOUMI has been designated as a Protected Designation of Origin (“PDO”), which reserves its use for the iconic folded grilling cheese made on the island of Cyprus. So, why has the Republic of Cyprus struggled yet again to rely on earlier rights in the HALLOUMI name (specifically, Cypriot certification marks) to prevent the registration of a similar mark – this time ‘GRILLOUMI’ – in the EU? We take a closer look at the General Court’s decision in Republic of Cyprus v EUIPO – Fontana Food (GRILLOUMI) Case T-415/22 – see here.
The present case concerns an opposition by the Republic of Cyprus (“ROC”) against Fontana Food AB’s registration of GRILLOUMI as an EU trade mark, relying on two earlier registrations for the Cypriot certification word mark XAΛΛOYMI / HALLOUMI under class 29 (milk and milk products). Although GRILLOUMI was already registered as a word mark in 2009 under classes 29 and 30, the ROC intervened to prevent its registration in class 43 (services for food and drink; coffee-shop services, restaurants).
Summary of appeal
The initial opposition filed by the ROC in February 2017 was rejected by the Opposition Division and the Fourth Board of Appeal in 2018 and 2019, finding that the goods and services covered by the marks were dissimilar. However, in a judgment dated December 2021, the General Court disagreed with this assessment and invalidated the previous decision by the Board of Appeal. The General Court’s reasoning was that goods in class 29, including cheese, can be used in the serving of food and drink, such as at a restaurant but may also be sold individually or consumed at home. As a result, the goods in classes 29 and 43 were seen as closely connected. The General Court also cautioned the Board of Appeal against dismissing the possibility of a likelihood of confusion based solely on weak similarity of goods and services, without considering all the other factors capable of contributing towards a likelihood of confusion.
On further examination, the Second Board of Appeal nevertheless found no likelihood of confusion since there was also a below-average degree of similarity between the marks themselves, and the mark HALLOUMI had not acquired sufficient enhanced distinctiveness to overcome this. Although the mark GRILLOUMI might cause consumers to make a connection to a specific type of cheese, it was not likely to lead to confusion as to the product’s origin.
The ROC appealed to the General Court, claiming that the decision of the Second Board of Appeal was flawed and should be annulled. That appeal was based on three main arguments:
- the incorrect criterion was used when analysing the likelihood of confusion;
- there was an error when assessing the distinctive character of the earlier marks; and
- the assessment of the degree of similarity was erroneous.
Likelihood of confusion
The ROC asserted that the Board of Appeal had used the incorrect criterion in assessing the likelihood of confusion by examining whether consumers could be misled as to the “commercial origin” of the goods. The ROC asserted that this criterion only applies to individual or collective marks, not certification marks, whose purpose is to distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics. Further, the ROC argued that in the majority of jurisdictions which recognise certification marks (including the ROC), those marks are not associated with an authorised producer but with anyone who complies with certified standards.
The General Court rejected the ROC’s first argument. It accepted that the essential function of a certification mark had to be taken into account to understand what was meant by “likelihood of confusion”. However, it held that, despite referring to the phrase “commercial origin”, the Board of Appeal had correctly assessed whether the relevant public would believe that goods bearing the GRILLOUMI mark were certified by the proprietor of the HALLOUMI mark. It was that type of “confusion” that was relevant to cases involving certification marks. The Court also agreed with the Board of Appeal that principles from established case law relating to collective marks were otherwise equally applicable to certification marks.
The second facet of the ROC’s appeal alleged an error in the assessment of the distinctive character of the earlier marks, which the Board of Appeal had assessed as if it were dealing with individual marks.
The ROC argued that certification marks, such as HALLOUMI, refer to a guarantee of quality and conformity with certain standards, with the specific commercial origin and the trader’s identity being a secondary consideration. To support this, the ROC provided evidence including volume of sales, promotional and marketing efforts to illustrate the perception of the general public of products bearing the HALLOUMI mark. It also asserted that many certification marks would be seen as merely descriptive if they were assessed against the same standards of distinctiveness as individual marks. As a result, the ROC asserted that the “distinctiveness” criterion should be modified for certification marks, recognising that their scope of protection is different to that of ordinary individual marks.
The General Court found that, although the mark HALLOUMI had certain distinctiveness, this did not mean that it was entitled to unconditional protection. The General Court supported the finding that HALLOUMI would be understood by the relevant public as a reference to a type of speciality cheese from the island of Cyprus, but that the mark had a weak inherent distinctive character as indicating compliance with a specific certification regime. The Court had also previously considered – and rejected – the ROC’s evidence seeking to prove that the HALLOUMI marks enjoyed enhanced acquired distinctiveness.
Degree of similarity
The third and final facet of the ROC’s appeal alleged an error in the assessment of the degree of similarity between the goods and services covered by the marks at issue. The Board of Appeal categorised this as low, but the ROC insisted that the Court should have carried out a specific comparison. It argued that the fact that goods provided under the mark HALLOUMI have guaranteed characteristics and qualities was disregarded and would have been important in establishing a complementary connection between the goods and services at issue.
Unfortunately for the ROC, the General Court found that this argument was res judicata, i.e., it had been previously judged and could not be re-litigated. This verdict was because the low similarity finding was made by the General Court itself in the judgment of December 2021 and it could not fault the Board of Appeal for endorsing it. As a result, this argument was also rejected.
The owner of the HALLOUMI marks has again been unsuccessful in attempting to prevent the registration of similar marks in the EU. The GRILLOUMI decision echoes the General Court’s decision in BBQLOUMI, reiterating that consumers would tend to relate the term “halloumi” to a type of specialty cheese from Cyprus, rather than a specific trade origin. The same applies in the context of collective marks denoting a specific group of manufacturers, as well as certification marks reserved for products certified by the proprietor as having certain characteristics.
Importantly, the decision confirms that certification marks are to be treated in the same way as individual and collective marks, at least when it comes to assessing distinctiveness, similarity and the likelihood of confusion. The General Court has made it clear that no special status is to be given to a certification mark, as this would be tantamount to giving it enhanced protection under trade mark law. This ruling delivers a blow for traders who may be hoping to rely on certification marks as a substitute for PDOs for marks which may be associated in the minds of consumers with a particular geographical origin, but which are not perceived as a guarantee of compliance with a specific certification regime.
…and what could have been:
Since the case of BBQLOUMI, the HALLOUMI name has in fact attained protected status as a PDO. This means that every part of the production, processing and preparation process must take place on the island of Cyprus for a product to be designated as ‘HALLOUMI’.
Unfortunately for the ROC, this protection has come too late for the present case. As noted by the General Court, the PDO wasn’t relied on in the GRILLOUMI opposition. It remains unclear whether this was an oversight in the pleaded case or whether it was a deliberate omission given that the PDO was pending at the time of the original opposition – although Article 8(6) of the EU Trade Mark Regulation 2017/1001 does in principle allow oppositions to be based on pending PDOs, provided they are subsequently granted.
Whatever the reason, it begs the question of whether (and how) the decision might have been different had the ROC relied on HALLOUMI’s PDO status, as the tests for “distinctiveness” and “similarity” would likely have been different. Some guidance can be gleaned from the General Court’s 2021 decision in Joaquim José Esteves Lopes Granja v EUIPO (Case T-417/20), which concerned an opposition against the mark ‘PORTWO GIN' relying on the PDO ‘Porto’ for high-end wine. Based on the General Court’s reasoning in that case, it is likely that the court would have assessed the similarity of HALLOUMI and GRILLOUMI to ascertain if GRILLOUMI would amount to “misuse, imitation or evocation” of the PDO, and if it could have been disassociated from the HALLOUMI PDO. Furthermore, it is likely that the court would have also considered whether consumers would have believed that GRILLOUMI complied with the requirements and quality standards they associated with HALLOUMI. The court may have also assessed whether the GRILLOUMI mark intended to exploit or take advantage of HALLOUMI’s reputation under the PDO.
In the “PORTWO GIN” case, the General Court considered Article 8(6) alongside the relevant EU Regulation governing PDOs concerning wine in the EU. It noted that, since the provisions contained in the different sectoral regulations were drafted in largely identical terms, the same principles on the scope of protection would largely be applied across the board. As a result, it is certainly arguable that if the ROC had relied upon its PDO in this case, it would have likely had a greater chance of success of successfully opposing GRILLOUMI. For the time being, however, this latest result illustrates the continued difficulties that HALLOUMI faces in the courts of the EU when opposition actions are based on trade mark rights, rather than protected designations.
Co-authored by Greg Rock, trainee solicitor at CMS.