Say cheese! Why Halloumi producers should smile at CJEU’s trademark decision

Could an EU trademark case leave a bad aftertaste in the mouths of the official makers of Cyprus’ most famous cheese export, Halloumi?

Their rights came into question earlier in 2020 in the Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO (2020) at the Court of Justice of the European Union (CJEU).

Halloumi is a type of cheese that is synonymous with Cyprus. The matter involved the Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi, (the Foundation), an association of official Cypriot producers of Halloumi who own an EU collective mark for ‘Halloumi’.

An EU collective mark is a special type of trademark and differs from a standard trademark in that it allows multiple parties to use the same mark. The collective mark’s purpose is to allow the consumer to distinguish the goods or services of the members of an association who own the mark, from other products.

In this instance, only members of the Foundation can use the mark to describe their goods. This allows the Foundation to control the quality and origin of producers of Halloumi. However, the power of a collective mark is no different from that of a standard trademark in the rights conferred within.

A cheesy application

The dispute arose in 2014, when a Bulgarian company, M.J. Dairies, applied for an EU trademark registration for the word and figurative mark, ‘BBQloumi’ for goods including cheese in classes 29, 30 and 43.

The Foundation filed an opposition to the application for all goods related to cheese in the application and relied on its EU collective mark ‘Halloumi’. The opposition was filed under articles 8(1)(b) and 8(5) of the EU Trade Mark Regulation and was initially rejected by the EU Intellectual Property Office (EUIPO)’s opposition division. The division found no likelihood of confusion, principally because it held that the mark ‘Halloumi’ was weak in its inherent distinctiveness, given that the term is widely recognised as indicating the type of cheese represented.

The Foundation was unhappy with the initial decision and appealed, but the EUIPO’s Board of Appeal upheld that decision in 2017, finding that although there was a slight visual similarity between ‘Halloumi’ and ‘BBQloumi’, the lack of aural and conceptual similarities did not give rise to likelihood of confusion.

The EU General Court (GC) agreed with this view in its ruling in 2018, which found that although the there were similarities in part, there would be no likelihood of confusion in the mind of the public due to the aural and conceptual differences.

The GC’s error in a point of law

The Foundation then took the matter to the CJEU, which upheld the previous rulings that held the mark ‘Halloumi’ was of weak distinctive character.

However, the CJEU found the GC had erred when it failed to examine whether the marks’ low degree of similarity would be offset by a high degree of similarity of the goods in question.

More specifically, because the goods in both the application and the prior mark were cheese, or products linked to cheese (such as condiments, sauces, or restaurant services), then a lower degree of similarity would be needed for there to be a likelihood of confusion on part of the average consumer.

Consequently, the CJEU referred the case back to the GC to properly analyse the global assessment of the likelihood of confusion.

The case continues and the next instalment should be with us in due course. However, the CJEU’s decision to overturn the prior decisions was good news for the Foundation.

Conclusion

There are a couple of interesting points in this case. First, in my opinion when the marks are studied side by side, the mark ‘BBQloumi’ is too similar to ‘Halloumi’ to avoid confusion.

The fact that the differences lie in the beginning of the contested mark, namely the term ‘BBQ’, should not depart too much from the prior trademark rights, given that Halloumi is often prepared by barbecuing the cheese on a grill.

It is my opinion that there is enough similarity in the remaining elements for the consumer to believe that ‘BBQloumi’ would originate from an official producer and member of the Foundation.

Second, this case provides an interesting crossover between collective rights and geographical indications. At the time of writing, the term ‘Halloumi’ has not been given a Protected Designation of Origin (PDO), that would provide designated status for agricultural products and foodstuffs.

The effect of a PDO would be that only Cypriot producers, who follow the strict process for creating halloumi, would be allowed to brand their goods as Halloumi. By obtaining a PDO for Halloumi, the Foundation could stop other parties if the process to make BBQloumi resembled that for making Halloumi, on top of using a similar name.

The reasons for the Foundation’s not yet receiving a PDO for this are deep and complex, mainly due to the political situation in Cyprus.

However, I believe that every effort should be made to secure this status, to protect this crown jewel of Cypriot exports and to bolster the rights conferred to those Cypriot producers against foreign third parties.

Until then, we await the next instalment in the legal process to see whether the Foundation prevails or whether ‘BBQloumi’ will be burned again.

Michael Tennant is a UK chartered trademark attorney and director at Tennant IP. He can be contacted at:  mike@tennantip.co.uk