Advocate General opinion: collective EU trade mark registration is not a substitute for Protected Designation of Origin status

England, Wales

Advocate General Kokott (the “AG”) recently handed down her opinion in the appeal in Case C-766/18 P Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, making observations in relation to geographical collective marks and Protected Designations of Origin (“PDO”).

Background

The Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi (the “Foundation”), holds an EU collective trade mark registration for ‘HALLOUMI’ for 'cheese' in class 29. In 2014, the Foundation commenced the procedure for the establishment of a PDO, to reserve the use of the designation ‘Halloumi’ to cheese made in Cyprus. This procedure is still pending due to political considerations.

In October 2014, a Bulgarian company applied for an EUTM registration of a figurative mark containing the word ‘BBQLOUMI’ in classes 29, 30 and 43 to cover various foodstuffs, including cheese. The Foundation opposed the application, on the basis of a likelihood of confusion between the marks. The opposition was rejected by the Opposition Division, the Board of Appeal and the General Court on the grounds that the ‘HALLOUMI’ mark has low distinctive character, given that it describes the well-known Cypriot cheese. Despite similarities between the marks, there was no likelihood of confusion.

Appeal and AG Opinion

The Foundation appealed to the Court of Justice of the European Union (the “CJEU”). The AG considered the grounds of appeal to be unfounded, as follows:

  • By virtue of being a registered trade mark, a collective mark necessarily has a minimum degree of distinctive character unless it has been cancelled’ as per Formula One Licensing v OHIM (C-196/11 P). Such distinctive character is presupposed and need not be proven. The Foundation’s submission that the General Court had required the very existence of distinctive character to be proven was therefore rejected. The Foundation’s argument that a collective mark, by its very nature, should have increased distinctive character was also rejected by the AG, who confirmed that varying degrees of distinctive character may be applicable.
  • The Foundation also claimed that geographical collective marks necessarily have increased distinctive character and that the general rules should not apply to these marks. The AG considered these claims to be inadmissible. However, the AG helpfully set out a number of observations, including that the provision for geographical collective marks was a ‘foreign body in trade mark law’, as it does not conform with the general prohibition on the registration of descriptive marks. The AG also noted that a geographical collective mark is ‘accorded the necessary minimum degree of distinctive character to justify its registration.’ Distinctiveness must therefore be assessed by reference to the extent to which the mark is an indication of the collective commercial origin of the goods. The ‘HALLOUMI’ mark had such distinctiveness ‘at most to a low degree’ and not enough for a likelihood of confusion to have arisen.
  • The AG therefore considered that the first two grounds of appeal concerning the distinctive character of collective and geographical collective marks were unfounded and must be rejected.
  • The English language version of the General Court’s judgment provided that ‘the existence of a visual, phonetic and conceptual similarity is not, in the case of an earlier descriptive mark with low distinctive character, sufficient to give rise to a presumption of a likelihood of confusion’. This might have implied that there was no assessment of whether or not a likelihood of confusion exists. The Foundation argued that if this was the case, the paragraph would be vitiated by an error in law. This was ultimately found to be a translation error as the judgement given in the General Court’s internal working language of French provided that the evidence was not sufficient to conclude that there was a likelihood of confusion. The AG dismissed this ground of appeal as ‘redundant in its present form’ as this translation error was rectified in September 2019.
  • The General Court had taken issue with the Board of Appeal’s decision that the two marks were phonetically and conceptually different. The General Court instead considered that there was a low degree of phonetic and conceptual similarity and used this information to make a decision as to the likelihood of confusion. The Foundation claimed that this should have been remitted to the Board of Appeal. The AG rejected this ground of appeal on the basis that the General Court did nothing more than correct the assessment of the Board of Appeal and draw the same conclusion from a new global assessment based on this correction.

The AG therefore proposed that the CJEU should dismiss the appeal.

Comment

Of note in this opinion is the AG’s comment about the extent of protection afforded by trade mark law in this respect, namely that there is:

‘no need for more extensive protection because the rules governing protected designations of origin and protected geographical indications can provide sufficient protection outside the scope of trade mark law.’

This statement makes it clear that, in the AG’s opinion, it is not appropriate for the proprietors of geographical collective marks to rely on trade mark law to obtain equivalent or even stronger protection for their marks than that available under the PDO system. This decision is unfortunate for the Foundation, given that its application for registration as a PDO is pending and it is unclear when the decision on the PDO status of ‘Halloumi’ will be resolved in light of ongoing political considerations.

The final decision in this case rests with the CJEU.

This article has been co-authored by Francesca Gough.