Halloumi v Hellim - more than just a trademark battle?

On October 24, 2005 German manufacturer Garmo AG filed an application to register the word mark ‘Hellim’ (the Turkish word for halloumi) as a Community Trademark.

The applicants sought protection under Class 29 of the Nice classification and the description of the goods and services of the mark included ‘milk and milk products’.

Cypriot firm Organismos Kypriankis Galaktokomikis Viomichanias filed a notice of opposition against the registration of the above mark based on its own earlier and fully registered Community Collective trademark ‘Halloumi’ (CTM 1082965). The opposition was based on the likelihood of confusion (now Article 8[1][b] of regulation No 207/2009).

The opposition was dismissed on March 10, 2010, despite the fact that the goods concerned were identical and/or similar. It was held that there was no visual or phonetic similarity between the two marks. In support of the finding of “no likelihood of confusion”, the decision also went on to say that the ‘Halloumi’ CTM had a weak distinctive character in Cyprus as the term halloumi designated a specialty cheese from Cyprus.

Board of Appeal of OHIM

This decision of the opposition division was appealed pursuant to Articles 58–64 of the regulation but the appeal was subsequently dismissed by the Board of Appeal of the Office for Harmonization in the Internal Market (OHIM).

It was held that that the mere fact that the ‘Halloumi’ mark was a collective mark does not mean that it is not of a weak distinctive character. So the board held that the ‘Halloumi’ mark was of weak character and coupled with the low visual similarities, there was no likelihood of confusion, despite the fact the marks were for similar and/or identical goods.

"should it be possible for anyone to argue based on minor visual differences that they can register a mark which is based upon the geographic indication/heritage of another?"

Conceptually it held, in paragraph 23 of the contested decision, that Turkish was not an official language of the EU, with the result that even if the possible meaning of the word ‘hellim’ was to suggest the designation of a specialty cheese from Cyprus, this would have no impact since it had a purely descriptive meaning and could not be used as a basis for comparison of the signs.

General Court

The applicant filed for an order at the General Court to annul the Board of Appeal’s decision. It was held that the board acted correctly in reaching the conclusion that there was no likelihood of confusion. The applicant put forward an argument that the mark was at least of average distinctiveness due to its collective status. This argument was rejected by the court which held that the mere fact that ‘Halloumi’ is a collective mark does not automatically make it a mark of great or even average distinctiveness.

To quote: “It is true that Article 66(2) of Regulation No 207/2009 allows registration of collective marks, notwithstanding the fact that they could fall within the scope of Article 7(1)(c) of that regulation, the second sentence of Article 66(2) states expressly that a collective mark cannot entitle the proprietor to prohibit a third party from using, in the course of trade, such signs or indications, on condition that that third party uses them in accordance with honest practices in industrial or commercial matters; in particular, such a mark may not be invoked against a third party who is entitled to use a geographical name.”

The Board of Appeal took a different view. In paragraph 23 of its decision it held that the conceptual comparison was neutral. The board said that as Turkish is not an official language of the EU, consequently, the possible meaning of the word ‘hellim’ in Turkish is not conclusive for purposes of assessing the likelihood of confusion.

Paragraph 46 of the judgment elaborates on the matter:

“In paragraphs 25 to 27 of the contested decision, the Board of Appeal found, in essence, that the distinctive character of the earlier mark was diluted by the descriptive meaning of the word ‘halloumi’, with the result that the earlier mark described the product in question, that is to say, cheese. That sign describes, according to paragraph 27 of the contested decision, ‘the nature and type of cheese thus designated and not its geographical origin or other characteristics marked by regional particularities’. Therefore it is vital to examine the likelihood of confusion (phonetic & visual).”

Nonetheless, it is worth noting that the General Court found that there was a degree of conceptual similarity. Quoting a few cases, it said that conceptually, the Turkish translation of the Greek word ‘halloumi’ is ‘hellim’. Therefore in this view and in contrast with the Board of Appeal’s analysis, it cannot be disputed that the average consumer in Cyprus, where both Greek and Turkish are official languages, will understand that the words ‘halloumi’ or ‘hellim’ both refer to the same specialty cheese from Cyprus.

The judgment was delivered on June 13, 2012.

Court of Justice of the European Union

An appeal was filed at the Court of Justice of the European Union (CJEU). The grounds on which the appeal was based were in short:

1. The fact that the ‘Halloumi’ mark was a collective mark was not taken into consideration to the extent that it should have been and thus the conclusion that the mark was of a weak character was unsafe.

2.  That the General Court infringed Article 8(1)(b).

The appeal was dismissed and ‘Hellim’ has been approved for registration. Therefore, it may not be wrong to say that halloumi is something more than just a generic name, but it is true that it constitutes a part of a country’s historic background, which is definitely worthy of protection.

Considering the above decision, as well as the 10-year battle that Greece had in gaining exclusive right to use the mark ‘Feta’ in association with cheese, and that many may say that halloumi is to Cyprus what feta is to Greece, doesn’t this show a problem with protecting geographical indications/heritage?

If Greece had to go through 10 long years to protect its heritage and as Cyprus did not even manage to secure the exclusive use of its own mark of geographical indication, does that show a weakness in the law?

Should it be possible for anyone to argue based on minor visual differences that they can register a mark which is based upon the geographic indication/heritage of another? Wouldn’t that mean that one can unfairly and unjustly take advantage of someone else’s heritage?

Ermioni Pavlidou is head of the IP department at Michael Kyprianou & Co LLC. She can be contacted at: ermioni@kyprianou.com.cy