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D Young & Co LLP - Big squeeze on cheese: General Court tests HALLOUMI
Whilst the differences between the marks at issue in this case were a discerning factor, this case does highlight the difficulty to prove a certification mark can be seen by the general public as anything more than descriptive in relation to the goods it serves to certify.
The Republic of Cyprus (‘Cyprus’) has failed to successfully contest a European Union trade mark ( EUTM) on the basis of a certification mark for “HALLOUMI”.
This is a General Court (GC) decision following an appeal brought by Cyprus against M.J. Dairies EOOD’s EUTM application for the figurative mark (shown below) which covered a range of goods and services in Classes 29, 30 and 43, including cheese and related products:
Cyprus claimed a likelihood of confusion based initially on certification
marks for HALLOUMI in the UK and Cyprus. The Opposition Division rejected the
opposition and a subsequent appeal by Cyprus to the Board of Appeal, relying
solely on the UK certification mark, was also dismissed.
The Board of Appeal concluded that the UK certification mark was weak in
distinctive character and there was only limited similarity between the marks
at issue. It set out that protection afforded to certification marks did not
impose an additional requirement that the public must recognize it as a
certification mark. Further, it held that the evidence submitted by Cyprus
showed that the term “halloumi” was, at most, perceived on the market as
designating a specific type of cheese only.
Cyprus appealed the decision further to the GC. Cyprus relied on a single
plea of infringement of Article 8(1)(b) in relation to the UK certification
mark only and claimed the Board of Appeal had erred by:
Finding the certification mark had weak distinctive
Incorrectly assessing the similarity of the
Finding no likelihood of
confusion as a result of an error in the analysis of the evidence filed.
In its decision, the GC set out that registration of a certification mark
could be held to confer a certain level of distinctiveness. However, this did
not mean a certification mark must be accorded an intrinsic distinctive
character of such a level that would provide it with unconditional protection
enabling opposition to any registration including that term.
The GC also confirmed that, unlike standard trade marks, the distinguishing
function of a certification mark should be understood to enable the goods and
services of the undertaking, which comply with the particular certification rules,
to be distinguished from the goods and services of other undertakings which are
Certification marks do not serve to distinguish commercial origin as such,
but rather a class of goods.
Considering the distinctive character of the earlier certification mark,
the GC held the Board of Appeal had correctly assessed the earlier
certification mark had a low degree of inherent distinctive character in view
of its descriptive nature and perception by the public as referring to a
particular type of cheese only.
The GC also upheld that the evidence submitted by Cyprus failed to prove
the existence of an enhanced distinctive character.
Considering the assessment of the similarity between the marks, the GC
confirmed the Board of Appeal was correct to find that the public’s attention
would be on the verbal element “BBQLOUMI” as well as the plate of food in the
foreground of the image, therefore both these elements were co-dominant.
Although the GC found the Board of Appeal had erred by not finding a low degree
of phonetic similarity in view of the common element “loumi” and certain
conceptual similarity which would be made to halloumi cheese. However, despite
this error the GC held it did not alter the position that the similarity
between the signs remained limited and insufficient to offset the differences
between the marks.
Considering the weak distinctive character of the earlier UK certification
mark and dissimilarities between the marks in general, the GC held the Board of
Appeal was correct to reach a finding that a likelihood of confusion did not
exist and the appeal was dismissed.
Whilst the differences between the marks at issue in this case were a
discerning factor, this case does highlight the difficulty to prove a
certification mark can be seen by the general public as anything more than
descriptive in relation to the goods it serves to certify.
Case details at a glance
Jurisdiction: European Union
Decision level: General Court
Parties: Republic of Cyprus, M.J. Dairies
Date: 25 September 2018