General Court finds no likelihood of confusion in BBQLOUMI opposition – Cypriot cheesemakers continue to struggle in EU trade mark courts

United Kingdom

Further to a decision of the Court of Justice of the European Union (“CJEU”) in Case C-766/18P Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO (BBQLOUMI) referring this case back to the General Court, the General Court has handed down its decision in an appeal in opposition proceedings relating to geographical collective marks.

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 October 2014, a Bulgarian company applied for an EUTM registration of a figurative mark containing the word ‘BBQLOUMI’ (shown below), in classes 29, 30 and 43 to cover various foodstuffs, including cheese.

BBQLoumi

The Foundation opposed the application, on the basis of a likelihood of confusion between its earlier collective mark. (It is important to note that, although the Foundation has commenced the procedure for the establishment of a Protected Designations of Origin (“PDO”) to reserve the use of the designation ‘Halloumi’ to cheese made in Cyprus, that procedure remains pending (understood to be for political reasons); therefore, the Foundation was only able to rely on its collective mark in these proceedings.)

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 the word ‘halloumi’ denotes a particular type of cheese produced according to certain features, but not to its belonging to any specific marketer (or to a special association of producers or traders) who sell it. Despite similarities between the marks, there was deemed to be a low degree of similarity. As the earlier mark was deemed to have a descriptive meaning and therefore weak distinctive character, this was not sufficient to give rise to a likelihood of confusion.

Appeal to the CJEU

The Foundation appealed to the CJEU, which set aside the original judgment and referred the case back to the General Court, making the following observations:

  • It confirmed that, where the earlier mark was a collective mark, the relevant “likelihood of confusion” to be assessed was the risk that the public might believe that the goods or services covered by the marks in question all originated from members of the association which held the earlier mark, or undertakings economically linked to it.

  • EU case law relating to “likelihood of confusion” was equally applicable to EU collective marks and, in that context, there was no special or different test for assessing their distinctiveness, whether inherent or acquired through use. An association seeking registration of a geographical collective mark still needed to prove that the mark was capable of distinguishing the goods and services of its members from those of other undertakings.Therefore, the General Court had correctly assessed the collective mark’s distinctiveness.

  • However, the General Court had relied on the mistaken premise that, in the case of an earlier mark of weak distinctiveness, the existence of a likelihood of confusion had to be ruled out as soon as it was established that the similarity of the marks was insufficient to give rise to confusion. Instead, the General Court should have carried out a global assessment to determine whether the low degree of similarity of the marks was offset by the higher degree of similarity, or even identity, of the goods or services in question.

General Court ruling

In its decision dated 20 January 2021, the Second Chamber of the General Court applied the CJEU’s guidance to revisit its assessment of the “likelihood of confusion”. It confirmed and re-stated its earlier decisions that:

  • The relevant public for the purposes of a comparison of the signs was the general public of the European Union whose level of attention was average when purchasing everyday consumer goods;

  • The goods covered by the marks at issue were in part identical and in part similar to some degree; and

  • The inherent distinctiveness of the earlier mark was low and the evidence submitted by the applicant was insufficient to establish intensive use of that mark as a trade mark designating cheese. Therefore, enhanced distinctiveness acquired through use had not been proved.

Re-applying the “global assessment” as directed by the CJEU, the General Court confirmed that:

  • There was no likelihood of confusion in respect of ‘meat extracts’ in Class 29 and ‘restaurant services’, ‘fast-food restaurant services’, ‘cafeteria’ services and ‘catering’ services in Class 43, which were neither identical nor similar to ‘cheese’ covered by the earlier mark.

  • In relation to the other goods in Classes 29 and 30, which were similar to varying degrees to the goods covered by the earlier mark, the Court found that:

    • In light of the graphic form of the applied-for mark, the relevant public’s attention would be drawn to both the word element ‘BBQLOUMI’ and the figurative element (representing a dish containing grilled food). Those two elements dominated the overall impression produced by the later mark. As regards the word element of the mark, more weight had to be given to its initial part, ‘BBQ’, than to its final part, ‘LOUMI’.

    • Although the figurative element of the sign supported to some extent the concept of halloumi cheese cooked on a barbecue, it related more to the concept of barbecue (in view of the representation of a dish of grilled food) rather than that of cheese produced in a Mediterranean environment as it couldn’t be stated categorically that the cheese shown was halloumi cheese.

    • Therefore, the element ‘LOUMI’ common to both marks contributed very little to the distinctiveness of the mark applied for, and the similarity of the signs in question was weak.

As regards the distinctiveness of the earlier mark, the General Court’ was satisfied with its earlier assessment that the degree of inherent distinctiveness of that mark was weak. The evidence submitted by the applicant did not allow a finding that consumers, confronted with the earlier mark, would associate it with something other than halloumi cheese (in the sense of its generic name), rather than to the commercial origin of the goods designated by the collective mark. A likelihood of confusion was therefore not established even for the goods in Class 29 of the application, such as ‘dairy products and dairy substitutes’, ‘cheese’, ‘processed cheese’ and ‘cheese dips’, which were accepted as identical or highly similar to ‘cheese’ covered by the earlier mark.

In light of the above, the General Court upheld the Board of Appeal’s findings that there was no likelihood of confusion and dismissed the appeal.

Comment

This decision is the latest in a series of unsuccessful attempts by the Foundation to rely on its HALLOUMI trade mark to prevent the use of similar marks in the EU. The CJEU ruling had given Cypriot cheesemakers a glimmer of hope that the General Court might reverse its previous finding of a lack of likelihood of confusion. However, the General Court’s finding that consumers would tend to relate the term “halloumi” to the generic type of cheese, rather than a specific trade origin, will be a major blow to the Foundation’s efforts to preserve the exclusivity of its mark through trade mark law.

The ruling confirms that EU collective marks are subject to the same basic requirements of distinctiveness and likelihood of confusion as traditional EU trade marks and should not be treated any differently. As had been noted by Advocate-General Kokott in her opinion preceding the CJEU’s ruling (reported here), EU collective marks do not (and arguably should not) enjoy an enhanced level of protection under trade mark law, given the existence of separate regimes for protected designations of origins (PDOs) and protected geographical indications (PGIs).

The Foundation continues to pursue its politically difficult campaign for a PDO which would grant “halloumi” special status as a geographically protected cheese made only in Cyprus. In the meantime, the General Court’s ruling firmly shuts the door on collective marks being used as a substitute for PDOs and PGIs to seek protection for marks which may be associated in the minds of consumers with a particular geographical origin, but which do not sufficiently distinguish the goods and services of the members of a particular association.