In July 2014, Bulgarian company M. J. Dairies EOOD filed a European Union trade mark application for a logo mark containing the word BBQLOUMI. The application covered various goods and services relating to food, including cheese. The Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi (‘The Foundation’) opposed this application. As HALLOUMI was not a protected geographical indication in the EU, the Foundation relied upon an EU collective trade mark for HALLOUMI. A collective trade mark is a trade mark that indicates that the goods/services bearing the mark originate from members of a trade association, rather than just one trader.
As with a traditional trade mark, to succeed in an opposition, the Foundation had to show that there would be a likelihood of confusion between the two trade marks, or that HALLOUMI has a reputation and use of the BBQLOUMI mark would take unfair advantage of or cause damage to that reputation.
The opposition was rejected by the European Union Intellectual Property Office (EUIPO), a decision which was upheld on appeal by the EUIPO Board of Appeal and later the EU General Court. The collective mark HALLOUMI was considered to have only a minimum degree of distinctive character because the word HALLOUMI corresponds to the name of a well-known cheese. Taking this into account, and the differences between the marks overall, there wasn’t considered to be any conflict or risk of confusion between the marks.
The Foundation appealed again to the Court of Justice of the European Union (CJEU). In its decision today, the CJEU confirmed the General Court’s finding that the distinctiveness of EU collective trade marks should not be assessed differently from traditional trade marks and stated that the General Court was not incorrect in assessing the degree of distinctiveness of the earlier mark HALLOUMI and in including that factor in its assessment of whether there was a likelihood of confusion. However, the CJEU felt that it was not clear that the General Court had conducted a full assessment of all relevant factors, including considering whether the low degree of similarity of the marks at issue could be offset by the significantly higher degree of similarity of the goods. Therefore, the CJEU decided to set aside the judgement and send the case back to the General Court for further consideration.
The impact of the decision
Whilst this latest decision is a win for the Foundation, the case is far from over. The General Court must now consider afresh whether there is a likelihood of confusion between HALLOUMI and the BBQLOUMI mark, making sure they demonstrate clearly that they have considered all relevant factors. Given that the CJEU has confirmed that the General Court was not mistaken in its assessment of the weak distinctive character of the HALLOUMI mark, it seems unlikely the General Court will reach a different decision when it next considers this case. Ultimately, the vast majority of consumers in the EU will see HALLOUMI as referring to a type of cheese, whereas BBQLOUMI creates quite a different overall impression. A consumer may well be reminded of HALLOUMI when viewing the BBQLOUMI mark, but this is not the same as confusion.
Steps have now been taken to register HALLOUMI as a protected designation of origin (PDO) in the EU, which would put it on a par with other protected cheeses like Roquefort, Gorgonzola, Parmigiano Reggiano and Blue Stilton. This right could be enforced much more widely than a trade mark registration. There would be no requirement to prove a likelihood of confusion on the part of consumers; instead a PDO can be used to prevent any misuse, imitation or even evocation. The term evocation in particular is interpreted very broadly; it is possible to evoke a PDO without even using the word itself. It could be invaluable in a case like BBQLOUMI. This highlights the importance of ensuring you secure the right type of protection at an early stage and continue to review the protection you have to ensure its still the most appropriate option.
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