No likelihood of confusion between EU collective trade mark ‘HALLOUMI’ and ‘BBQLOUMI’, says EU General Court

In a recent decision concerning the likelihood of confusion between the EU collective trade mark ‘HALLOUMI’ and the Intervener’s sign ‘BBQLOUMI’, the EU General Court held that – in light of the similarity between the signs, the goods and services, and the distinctive character of the former mark – there was no like likelihood of confusion pursuant to Articles 8(1)(b) and 75 – 82 of Regulation 2017/1001 (the EU trade mark regulation (EUTMR)).

This decision is the most recent instalment in the long-running battle between the Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi and a Bulgarian company seeking registration of BBQLOUMI as an EU trade mark (EUTM).

Background

In July 2014, M.J. Dairies EOOD (the Intervener) applied to register the following figurative sign as an EUTM:

Registration was sought for goods and services in Classes 29 (dairy products and dairy substitutes, cheese, processed cheese, cheese products, meat extracts), 30 (sandwiches, crackers flavored with cheese, condiments), and 43 (restaurant services, fast good restaurant services) of the Nice Classification.

In November 2014, the Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi (the Applicant), filed an opposition pursuant to Articles 8(1)(b) and 8(5) of EUTMR based on its earlier EU collective word mark HALLOUMI.

The Opposition Division of the European Union Intellectual Property Office (EUIPO) rejected the opposition in January 2016. The Applicant appealed to the EUIPO Fourth Board of Appeal (the Board). In March 2017, the Board considered that there was no likelihood of confusion between the Applicant’s mark and the Intervener’s mark, in light of the weak distinctive character of the earlier mark, the low degree of visual similarity between the signs, the lack of phonetic and conceptual similarity, and the varying degrees of similarity for some of the goods covered by the marks. In relation to Article 8(5) of the EUTMR, the Board considered that the Applicant had not shown that the use of Intervener’s mark would take unfair advantage of the distinctiveness or the repute of the earlier mark.

The Applicant subsequently appealed to the General Court. In September 2018, the General Court considered that the Applicant’s mark had weak distinctive character and there was no likelihood of confusion between the two marks.

The Applicant filed yet another appeal to the Court of Justice of the European Union (CJEU). In March 2020, the CJEU observed that the General Court had relied on the incorrect premise that – in the case of an earlier mark with weak distinctive character – the existence of a likelihood of confusion had to be ruled out as soon as it was established that the similarity of the marks at issue did not permit such a likelihood to be established. According to the CJEU, the weak distinctive character of the earlier mark could not preclude the finding of a likelihood of confusion. The CJEU therefore set aside the General Court’s judgment and referred the case back to it for a new assessment (Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, C-766/18 P).

The General Court’s decision

The General Court first acknowledged that, where the earlier mark is an EU collective mark, the likelihood of confusion, pursuant to Articles 8(1)(b) and 75 – 82 of the EUTMR, has to be understood as entailing the risk that the public might believe that the goods or services covered by the earlier mark and those covered by the mark applied for all originate from members of the association which is the proprietor of the earlier mark or, where appropriate, from undertakings economically linked to those members or to that association.

Furthermore, where an association applied for registration of an EU collective trade mark, it is for it to ensure that that sign has elements which enable consumers to distinguish the goods or services of its members from those of other undertakings. Accordingly, the degree of distinctiveness of the EU collective trade mark is a relevant factor for the purposes of assessing whether there is a likelihood of confusion with a junior mark.

In relation to the relevant territory and public, the General Court reasoned that this was the European Union and that the relevant public was the general public, whose level of attention was average.

As regards the comparison of the goods and services, the General Court considered that there was no likelihood of confusion in respect of ‘meat extracts’ in Class 29 and ‘catering services’ in Class 43, covered by the Intervener’s mark. Other goods, such as ‘cheese’, were considered similar to varying degrees to the Applicant’s goods and could therefore not be ruled out from the likelihood of confusion assessment at the outset.

As regards the analysis and comparison of the signs, the General Court considered that – where a mark is composed of word and figurative elements – then the word element is in principle more distinctive than the figurative element. This is because the average consumer would more easily refer to the goods by citing the name rather than describing the figurative element.

In this sense, it reasoned that both signs shared the element ‘loumi’, which has a weak distinctive character for a large part of the relevant public. Such public would understand it as a possible reference to halloumi cheese. In particular, the attention of the relevant public would be drawn to the initial part of that element, namely ‘bbq’ rather than the final part ‘loumi’, due to its positioning.

Furthermore, the figurative element in the Intervener’s mark also played a differentiating role since the Applicant’s EU collective trade mark was a word mark. In this sense, that figurative element related more to the concept of barbecue, in view of the representation of a dish of food (some of which showing signs of grilling), rather than that of cheese produced in a Mediterranean environment.

In light of the above, the General Court concluded that there was a low degree of similarity between the signs in question.

The General Court then considered that the distinctiveness of the Applicant’s EU collective trade mark was weak. Consumers would not associate it with anything other than halloumi cheese, due to the mark’s generic name of that type of cheese. No association with the commercial origin of the goods designated by it, in so far as they originate from members of the Cypriot association or undertakings that are economically linked to those members or to that association, would be possible.

The General Court noted that a global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the marks and that of the goods or services covered by them. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (Canon, C‑39/97).

In the present decision, the General Court concluded that, in light of the differentiating goods and services in respect of ‘meat extracts’ and ‘catering services’, the low degree of similarity between the signs, and the weak distinctive character of the senior mark in particular, that there was no likelihood of confusion for the relevant public as regards the commercial origin of the goods bearing the Intervener’s mark.

Even if consumers focused their attention on the element ‘loumi’, which the General Court considered unlikely in light of its secondary position and perceived the figurative element as a possible reference to halloumi cheese grilled on the barbeque, they would still have not established a link between the two marks.

Comment

This decision is relevant because it marks the (provisional?) ending to the longstanding HALLOUMI/ BBQLOUMI saga. In all this, it is worth recalling that the Foundation has not always faced defeat. The present decision may be in fact contrasted to that of the High Court of England and Wales in Foundation for the Protection of the Traditional Cheese of Cyprus v Babel Sajft KFT [2020] EWHC 2858. There, the English court found that the Applicant’s mark (a figurative sign incorporating, as a word element, ‘HAJDÚ HALLOUMI’):

should be refused registration because of a likelihood of confusion with the opponent’s EU collective trade mark, pursuant Section 5(2)(b) of the Trade Marks Act 1994.