HALLOUMI cases fail in the Board of Appeal

On 19 October 2012, The Organization of Cattle Farmers (P.O.C.F) filed an application for an EU trade mark for the logo above left of a cowboy hat and the words “Cowboys Halloumi” above and below it. In the conjoined case of the same year, Papouis Dairies Ltd filed an application for an EU figurative trade mark (above centre).

The goods for which registration was sought for both EU figurative marks are in Class 29: “Cheese made from sheep’s and/or goat’s milk; cheese made from blends of cow’s milk”.

In 2013 the Republic of Cyprus opposed both applications.

The oppositions were based, in particular, on the earlier certification word mark in the United Kingdom, HALLOUMI, registered on 22 February 2002 under number 14511888 (‘the earlier mark’) for “Cheese made from sheep’s and/or goat’s milk; cheese made from blends of cow’s milk; all included in Class 29”.

The grounds put forward in support of the opposition were those referred to in Article 8(1)(b) and Article 8(5) of Regulation No 207/2009 (now, respectively, Article 8(1)(b) and Article 8(5) of Regulation 2017/1001), that is, that the trade mark applied for shall not be registered if there exists a likelihood of confusion and Article 8(5) where the mark in question has a reputation.

For both cases, the Opposition Division rejected the opposition and ordered the Republic of Cyprus to pay the costs. The EUIPO Fourth Board of Appeal dismissed the appeals.

The Board considered that, for the purposes of Article 8(1)(b) of Regulation No 207/2009, there was no likelihood of confusion between the earlier mark and the marks applied for. It took the view that the inherent distinctive character of the term ‘halloumi’ was weak due to its descriptive meaning, pointing out first of all that the General Court, in its judgment of 7 October 2015 (Cyprus v OHIM) had considered that, in the eyes of the Cypriot public, the word designated a particular type of cheese produced in Cyprus, then stating that that finding must be extended to the public in the United Kingdom. That word (Halloumi) which is not a protected geographical indication to the relevant public, is descriptive of the characteristics and composition of the product and does not refer to whether the user of the earlier mark belongs to a group of licensees authorised to use the mark.

Regarding the similarity of the signs at issue, the Board of Appeal considered that the dominant element of the marks applied for were the word “cowboys”, placed above the figurative element consisting of a cowboy hat and the word “pallas”, respectively. There is only very low visual similarity between the marks, low phonetic similarity and no relevant conceptual similarity.

With regard to the overall assessment of the likelihood of confusion, it found that the Republic of Cyprus had failed to prove the high level of distinctiveness of the earlier mark nor that it would be perceived by the United Kingdom public as a reference to any certification. Therefore, having regard to its assessment of the inherent distinctive character of the earlier mark, the Board of Appeal found that the differences between it and the dominant element of the marks applied for, in this case the word “cowboys” / “pallas” (and the figurative element consisting of a cowboy hat for the cowboy mark), were sufficient to obviate any likelihood of confusion.

As regards article 8(5), the Board of Appeal found that the conditions regarding sufficient reputation were not satisfied.

Whilst the Republic of Cyprus sought to annul the decision of the Board of Appeal, the General Court in fact agreed with their decision dismissing the opposition, after examining the single plea in law alleging infringement of article 8(1)(b) and in particular: 1. the relevant public, 2. the comparison of the signs, 3. the assessment of the distinctive character if the earlier mark, 4. the assessment of the visual, phonetic and conceptual similarity of the signs at issue, and 5. the overall assessment of the likelihood of confusion.

As regards 3, the overall assessment of the distinctive character of the earlier mark, the General Court found that the reasoning of the Board of Appeal was entirely correct, in essence, the word ‘halloumi’ is directly understood by the UK public as describing the characteristics or even the origin of the goods, and not as an indication of its certified quality, not even as an indication of that quality. It must therefore be held that the earlier mark, consisting solely of the word ‘halloumi’, in that it is descriptive of the characteristics and origin of the product which it covers, has only a weak inherent distinctive character and that the existence of any enhanced distinctive character is, in addition, not proven.

Therefore the General Court came to the conclusion that, although the goods in question are identical, because of the weak distinctive character of the earlier mark and its descriptive meaning, the mere identity of the goods and the similarity of the conflicting signs as regards the common presence of the descriptive term ‘halloumi’ is not sufficient to create a likelihood of confusion.

It followed that the Board of Appeal was correct in finding that there was no likelihood of confusion and the appeal was dismissed.

Case Ref: Cowboys Halloumi T-847/16 and Pallas Halloumi T-825/16