In good news for the HALLOUMI mark, in an opposition against a mark for GRILLOUMI, the EU General Court recently found that "cheese", and "services for providing food and drink" have a sufficient complementary connection.
In October 2016, Fontana Food AB, a Swedish wholesaler and distributor of Mediterranean foods, applied to register an EU trade mark (EUTM) for GRILLOUMI in class 43 for "services for providing food and drink; coffee-shop services; restaurants".
Its registration was opposed by the Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi ("the Foundation"), owners of an EU collective mark for HALLOUMI, registered in class 29 for "cheese".
However, the EUIPO rejected the opposition at first instance and an appeal by the Foundation to the Board of Appeal was similarly dismissed: the goods and services were found to be too dissimilar for an opposition on the grounds of Article 8(1)(b) of EUTM Regulation No. 207/2009 (likelihood of confusion) to be successful. The Board reasoned that the mere fact that food is consumed in a restaurant is not in and of itself sufficient to find a similarity between foodstuffs and restaurant services. It acknowledged that there are some instances where food or drink-related goods may be found complementary to class 43 services, such as "ice cream" and "ice cream parlour services", "coffee" and "coffee shop services", or "beer" and "pub services", but that "cheese" did not fall into this category (despite the Foundation's argument that restaurants dedicated to cheese exist).
Appeal to the General Court
The Foundation appealed the Board of Appeal's decision to the General Court, arguing that the EUIPO and the Board of Appeal had made an error in finding that "cheese" and "services for providing food and drink" are dissimilar. They argued that the Board of Appeal had failed to apply case law relating to complementary connections between dairy products and the serving of food and drink, and had incorrectly applied the test relating to complementarity.
The General Court conceded that "cheese" and "services for providing food and drink" are not identical and are not similar with regards to their nature, their intended purpose or their method of use. However, when applying the test for whether goods and services are complementary, namely that "one is indispensable or important for using the other, so that consumers may think that the same company is responsible for manufacturing those goods", the court was prepared to find that "cheese" and "services for providing food and drink" are complementary. It reasoned that cheese might be offered to customers of a restaurant or coffee shop as an ingredient in dishes served on the premises or to take away. Additionally, some restaurants sell goods such as cheese, not as part of a dish, but un-processed and intended to be consumed elsewhere.
The General Court concluded that the Board had erred in finding that "cheese" and "services for providing food and drink" were dissimilar, and had therefore erred in finding that one of the cumulative conditions for a likelihood of confusion was not satisfied. The court annulled the Board's decision and remitted the case back to it for a fresh decision. (See the court's judgment here.)
Relationship to the earlier BBQLOUMI case?
We have previously blogged about the BBQLOUMI case where the Foundation was unsuccessful in an appeal relating to likelihood of confusion with the BBQLOUMI mark (see BBQing your HALLOUMI does not confuse consumers – the end of the Halloumi saga?).
In the present case, the Board of Appeal was gently reprimanded by the General Court for querying why the Foundation had not appealed to the General Court a finding in the BBQLOUMI case that "restaurant services" in class 43 and "cheese" in class 29 were dissimilar, but did in the present case. The General Court reiterated that denying the Foundation a chance to appeal in this case would be equivalent to binding them to the previous Board of Appeal decision, whereas decisions as to competing trade mark registrations should be assessed solely on the basis of the EUTM Regulation, and not on previous decisions.
A new chapter for HALLOUMI?
Since this GRILLOUMI decision, the European Commission has registered Halloumi as a protected designation of origin ("PDO") in the EU, whereby only Halloumi produced in Cyprus using the traditional recipe may use the HALLOUMI name. This will add another string to the Foundation's bow for protecting the HALLOUMI brand in the future.
With special thanks to Alex Bryan, Formalities Assistant (Solicitor Apprentice), for his contribution to this blog.
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