In a long running dispute over the marks “HALLOUMI” and “BBQLOUMI”, the General Court, having had its previous judgment set aside by the Court of Justice of the European Union (CJEU), has once again held that there is no likelihood of confusion between the respective marks, owing to the low degree of similarity between the signs and the weak distinctive character of the earlier mark.
Background
In July 2014, the Bulgarian company M.J. Dairies EOOD applied to register the following figurative mark as an EU trade mark:
EUTM 013069034
Registration was sought for various foodstuffs in classes 29 and 30, including ‘cheese’, as well as ‘restaurant and catering services’ in class 43.
The dispute began in November 2014, when the Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi (the “Foundation”) filed an opposition based on its earlier EU collective mark for the word “HALLOUMI” which covers ‘cheese’ in class 29.
This opposition was initially rejected by the EUIPO Opposition Division who, in January 2016, held that there was a low likelihood of consumer confusion between the two marks because the earlier mark ‘Halloumi’ was weak in its inherent distinctiveness.
This decision was affirmed by the EUIPO Fourth Board of Appeal in March 2017, and again by the General Court in September 2018.
In March 2020, the Foundation finally saw some success when they brought a further appeal to the CJEU, who held that the General Court had erred by holding, in the abstract, that because the earlier mark had only a weak distinctive character there could be no likelihood of confusion. Moreover, the General Court had failed to examine whether the marks’ low degree of similarity could be offset by a higher degree of similarity of the goods in question.
Consequently, the CJEU set aside the General Court’s judgment and referred the case back to it for a new assessment.
Rebecca Anderson-Smith discussed this at the time, and offered some predictions as to the impact of this decision, in her blog.
The General Court’s decision
In its decision of 20 January 2021, the General Court confirmed and re-stated a number of points from the earlier decisions.
Firstly, they repeated that where the earlier mark is an EU collective mark, they are subject to the same basic requirements of distinctiveness and likelihood of confusion as traditional trade marks. As such, the likelihood of confusion has to be understood as being the risk that the public might believe that the goods or services covered by the earlier mark and those covered by the mark applied for all originate from members of the association who owns the earlier mark or, where appropriate, from undertakings economically linked to those members or to that association.
Next, the General Court confirmed that since the trade marks in question were EU trade marks covering everyday consumer goods, the relevant territory was that of the European Union and the relevant public was the general public, whose level of attention is average when purchasing the goods in question.
The General Court agreed that the distinctiveness of the earlier mark was low, owing to the fact that the word ‘halloumi’ is used as a generic name for a product type—i.e. a type of cheese—and no evidence was submitted to suggest that the relevant public would view it as anything other than a description of a type of cheese. Therefore, the level of protection conferred by the earlier mark could itself only be weak.
When looking at the signs in question, the General Court considered that in light of the graphic form of the later mark, the relevant public’s attention would be drawn to both the word element ‘BBQLOUMI’ and the figurative element. As regards the word element of the later mark, they found that more weight had to be given to its initial part, ‘BBQ’, than to its final part, ‘LOUMI’. However, because the marks both contained the word element ‘LOUMI’, there was at least some degree of similarity, albeit to only a low degree.
When considering what impact the mark similarity had on the assessment of the likelihood of confusion, the General Court again stressed that the element ‘LOUMI’ – the main element from which the similarity of the signs in question stems – contributes very little to the distinctiveness of the mark applied for. It is the element ‘BBQ’ that the relevant public will be drawn to, due to its positioning within the mark.
When looking at the respective goods and services, the General Court held that there was no similarity between the goods covered by the earlier mark and either the class 43 services or ‘meat extracts’ in class 29 of the later mark. As such, there could be no likelihood of confusion in respect of these goods and services. However, the remaining goods in classes 29 and 30 were considered either identical or similar to the Foundation’s goods and so the court was required to undertake an analysis on the likelihood of confusion for these goods.
Overall, in the present case, it was held that a risk that the relevant public would likely be misled as to the commercial origin of the goods designated by the mark applied for was not established, even for the goods in Class 29 (such as ‘cheese’, ‘processed cheese’ and ‘cheese dips’) which are identical or highly similar.
The General Court therefore concluded that there was no likelihood of confusion. Interestingly, they suggested that even if consumers were to focus their attention on the element ‘LOUMI’ – which is unlikely given the secondary position occupied by that element in the later mark – consumers still would not establish a link between that mark and the earlier mark. At most, they will establish a link between the goods designated by the earlier mark (i.e. halloumi cheese).
Comment
Importantly, this decision reaffirms the principle that when assessing EU collective marks, the requirements for establishing a likelihood of confusion are the exact same as they are for traditional trade marks. This decision emphasises that collective marks do not enjoy a greater level of protection, and they are not to be used as a substitute for protected designations of origins (PDOs) and protected geographical indications (PGIs) .
The ruling also highlights the difficulty in enforcing a trade mark registration which is of low distinctive character, even if the reason for that low distinctive character is largely attributable to the success of the trade mark proprietor.
Will this decision be the end of the long running saga between these two trade mark owners? Possibly not. Given the time and expense the Foundation has been willing to invest in this case to date, a further appeal seems likely.
