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Does BBQing your HALLOUMI make a difference? – CJEU delves into the latest collective marks' issue

Heidi Hurdle
08/04/2020

Summary

The CJEU has asked the EU General Court to reassess whether the collective mark HALLOUMI reserved for Cypriot cheesemakers can stop an EU trade mark application for BBQLOUMI. In its judgment the court found that the General Court had failed to consider the interdependence of relevant factors when determining the likelihood of confusion between the collective mark and the application for BBQLOUMI. 

 

Background

In July 2014, a Bulgarian company, M.J. Diaries EOOD applied for an EU trade mark (EUTM) for the word BBQLOUMI and figurative sign (pictured below), covering goods and services in classes 29, 30 and 43 including cheese. 



This was opposed by the Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi (the "Foundation"). The Foundation owned an EU collective trade mark for the word "HALLOUMI" registered for cheese.
 
The EUIPO dismissed the Foundation's opposition, finding that there was no likelihood of confusion between HALLOUMI and BQQLOUMI. This ruling has made its way through several appeals to the CJEU.


General Court's decision

The General Court upheld the EUIPO's ruling that there was no likelihood of confusion, under Article 8(1)(b) of the EUTM Regulation No 207/2009 (the "Regulation"), between the marks. The General Court agreed that earlier collective marks must be assessed in the same manner as earlier individual marks in opposition proceedings (rejecting arguments to the contrary from the Foundation). 

The court found that the HALLOUMI mark had weak distinctiveness as it is used generically to describe a type of cheese. There was no evidence suggesting that the general public in Cyprus and Greece thought that HALLOUMI was anything other than a description of cheese. The General Court also found a low degree of visual, phonetic and conceptual similarity between the two marks. Furthermore, the goods covered by the marks were held to be in part identical and in part similar.

The General Court concluded that there was no likelihood of confusion between the marks as the identity and similarity of the goods designated by the marks was not enough to offset the weak distinctiveness of the collective mark, and the low visual, phonetic and conceptual similarity between them.


CJEU's ruling

The CJEU upheld the General Court's ruling that earlier collective marks must be assessed in the same manner as earlier individual marks, and therefore distinctiveness is required for collective marks in the same way as it is for all marks. The court went on to state that an EU collective mark must also fulfil its essential function under Article 66(1) of the Regulation namely, to distinguish the goods or services of the members of the association which is the owner of the collective mark from those of other undertakings.

The CJEU agreed with the General Court's approach of including the following factors when assessing the likelihood of confusion between the marks under Article 8(1)(b) of the Regulation:
 
  • The essential function the HALLOUMI mark;
  • The weak distinctiveness of the HALLOUMI mark;
  • The identity and similarity between the goods covered by the marks; and
  • The low degree of visual, phonetic and conceptual similarity between the marks.

However, the CJEU found that the General Court had ignored the interdependence between these factors in reaching its conclusion. It appeared from its judgment to have relied on the reasoning that for an earlier mark of weak distinctiveness, likelihood of confusion cannot be found due to a low degree of similarity between the marks. This contravenes established case law which states that the weak distinctiveness of an earlier mark does not prevent a likelihood of confusion being found. The General Court had failed to consider whether the low similarity between the marks was offset by the identity and similarity of the goods covered by them.

The CJEU set aside the General Court's finding that there was no likelihood of confusion and referred the case back to the General Court for reassessment. The court did not follow the opinion of Advocate General Kokott who had advised it to reject the Foundation's appeal. 


Comment

This decision confirms that EU collective marks should be assessed in the same way for distinctiveness as EU individual marks. In determining likelihood of confusion for collective marks, the case law for individual marks should also be followed. Like all trade mark owners, proprietors of EU collective marks must ensure that their marks are and remain distinctive and fulfil their essential function of distinguishing their goods and services from those of other undertakings.

It will be interesting to see how the General Court now deals with the interdependence of the relevant factors, especially the balance between the low degree of similarity of the marks and the identity and similarity of the goods covered by them, and whether the Foundation will ultimately be successful. 

With special thanks to trainee, Chris Tang, for his contribution to this blog.
 
We are all navigating uncharted waters as business and society faces up to the impact of COVID-19.  We very much hope you and your loved ones remain in good health. 

 Please be assured that Fieldfisher is continuing to work with clients to navigate COVID-19 related issues and on business as usual needs.  Do get in touch with us if you would like to chat anything through. 

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