A blow to a national cheese
In July, the EU General Court handed down its judgment in the case of Republic of Cyprus v European Union Intellectual Property Office (Case T-847/16), concerning Cyprus’s opposition against Pagkyprios organismos ageladotrofon (POA) Dimosias.
In late 2012, Pagkyprios filed an application for a figurative EU trademark (EUTM) with the words ‘Cowboys Halloumi’ encircling a cowboy hat, covering cheese made from sheep’s, cow’s or goat’s milk in class 29:
Cyprus opposed the application on the basis of its earlier national certification UK trademark no. 1451888 for ‘Halloumi’, covering cheese in class 29. Cyprus cited article 8(1)(b) (likelihood of confusion) and article 8(5) (dilution/free riding/tarnishment) of Regulation (EC) 207/2009 (now, Regulation [EU] 2017/1001) as grounds for the opposition.
Opposition division decision and board of appeal
The Opposition Division rejected the opposition. On appeal, the Board of Appeal also rejected the opposition, finding that there was no likelihood of confusion between the earlier mark and the mark applied for due to the weak distinctive character of ‘Halloumi’, and finding that the reputation of the earlier ‘Halloumi’ mark was not proven.
Appeal to the General Court
Cyprus contested the Board of Appeal’s decision, arguing that it had: (i) erred in its assessment of the distinctive character of the earlier mark; (ii) incorrectly assessed the visual, phonetic and conceptual similarity at issue; and (iii) erred in its overall finding of likelihood of confusion.
The General Court upheld the Board of Appeal’s decision. The court noted that while it was important to recognise that the word “halloumi”, registered as a national certification mark, must have a certain degree of distinctiveness, “that does not mean that it must be recognised as having a distinctive character per se to a degree which would provide it with unconditional protection enabling opposition to the registration of any later EU trademark including that term.”
Cyprus raised the argument that the Board of Appeal had failed to take into account the special nature of the mark for the purposes of assessing its distinctive character, arguing that the distinctive character of a UK national certification mark lies in its ability to be perceived by the public as distinguishing one class of goods from another class of goods (citing two decisions of the English High Court to support its interpretation of distinctive character).
The General Court rejected this argument as irrelevant and noted that, in any event, in the case at hand the evidence presented indicated that it was not possible to link the word “halloumi”, used generically, to any certification mark. It also highlighted that the EUTM regime is an autonomous system, and therefore the national case law referred to was irrelevant.
According to the General Court, 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, nor even as an indication of that quality”. Accordingly, the earlier mark, consisting solely of the word “halloumi”, descriptive of the characteristics and origin of the product, had weak distinctive character.
With regard to likelihood of confusion, the General Court highlighted that the term “cowboys” would be perceived first by the relevant public, with the central figurative element —a cowboy hat —reinforcing the pre-eminence of ‘Cowboys’ within the sign. ‘Cowboys’ was therefore the dominant element, and ‘Halloumi’ the secondary element, of the sign.
In view of its findings, the General Court held that the Board of Appeal was correct in finding that there was no likelihood of confusion.
Conclusion
