Gloomy days for Halloumi
Assessment of collective trade marks should be no different from that of traditional trade marks, notes Désirée Fields. C-766/18, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, CJEU, 5th March 2020.
The Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi is the proprietor of the EU collective mark HALLOUMI, registered for cheese. The Foundation opposed an application by MJ Dairies EOOD, a company established in Bulgaria, to register a word and figurative sign as an EU trade mark for cheese and related products.
The EUIPO’s Opposition Division rejected the opposition, and the Fourth Board of Appeal dismissed the Foundation’s appeal, finding no likelihood of confusion between the two marks pursuant to Article 8(1)(b) of Regulation (EC) No. 207/2009 (as replaced by Regulation (EU) 2017/1001).
The Foundation’s subsequent appeal to the General Court (GC) was dismissed on the basis that, due to the weak distinctive character of the earlier mark, the existence of a low degree of visual, phonetic and conceptual similarity was insufficient to establish a likelihood of confusion despite the respective goods being partly identical. The Foundation appealed to the CJEU.
The CJEU confirmed that previous case law establishing the criteria for an assessment of likelihood of confusion was applicable to cases involving collective marks. Further, despite collective marks designating the geographical origin of goods or services being capable of registration, the CJEU did not find that this allowed such signs to be devoid of distinctiveness. They still had to fulfil their essential function of distinguishing the goods and services of the proprietor’s members from those of other undertakings.
Accordingly, the GC had not erred in law in including this factor in its assessment of the likelihood of confusion, after concluding that the term “Halloumi” was of weak distinctiveness, as it designates a type of cheese produced according to a certain recipe.
However, the CJEU reiterated that the likelihood of confusion assessment is a global one, taking into account all relevant factors and their interdependence. Here, the GC had relied on the premise that, in cases where the earlier mark is of weak distinctiveness, a likelihood of confusion must be ruled out as soon as it is established that the similarity of the marks, in itself, does not allow such a likelihood to be established. This was found to be incorrect, as the weak distinctive character of an earlier mark did not preclude the existence of a likelihood of confusion.
Accordingly, the GC had erred in failing to examine whether the fact that the marks were only similar to a low degree was offset by, among other things, the identity of the goods concerned, namely cheese.
From here, the case goes back to the GC to conduct a global assessment of the likelihood of confusion, including an assessment of whether the low degree of similarity of the marks is offset by the higher degree of similarity, or even identity, of the goods covered by them. It is clear following this judgment that case law relating to likelihood of confusion applies also to collective marks and that the assessment of the distinctiveness of such marks should not differ from that of other trade marks.
- The consideration of the distinctiveness of an earlier mark for the purposes of assessing likelihood of confusion should not be different for EU collective marks
- When assessing the likelihood of confusion in cases concerning a weak distinctive character of the earlier mark and low similarity between the marks concerned, it is necessary to consider whether this can be offset by other factors, such as the identity of the goods covered
Legal Director, DLA Piper UK LLP