Cyprus fails to convince EU court to reverse ‘Grilloumi’ TM

Owner of word mark ‘Halloumi’ is dealt another blow in feud with Swedish food producer | EU General Court finds no likelihood of confusion | Decision is latest in long line of setbacks for Republic of Cyprus.

The Republic of Cyprus has lost its bid to annul a decision that enabled a Swedish food company to keep the word mark ‘Grilloumi’.

Cyprus, via an organisation called the Foundation for the Protection of the Traditional Cheese of Cyprus—otherwise known as the Halloumi Foundation—owns two Cypriot word marks (registered in 1992) describing the island’s speciality cheese, Halloumi.

Fontana Food, based in Tyresö, Sweden, makes and sells a product called Grilloumi, which it describes as a ‘Greek-style grilled cheese’. Grilloumi Food International, a subsidiary of Fontana, was founded in 2012 after Grilloumi proved successful in the domestic Swedish market, according to the company.

Fontana successfully registered the word mark ‘Grilloumi’ in 2009, seeking to extend the trademark further in a different class, which was granted in 2016.

The Republic of Cyprus argued that ‘Grilloumi’ is too similar to ‘Halloumi’ and would cause confusion among the cheese-buying public.

But in a decision delivered yesterday, October 11, the EU General Court found no risk of confusion between ‘Halloumi’ and ‘Grilloumi’ and dismissed Cyprus’ appeal.

Protections

Halloumi cheese has been produced on the island of Cyprus for centuries, and has become its most valuable export. In 2020, exports of Halloumi were worth €270 million (£229 million), and this figure is forecast to ally double in value by 2027.

The country has fought bitterly to protect its gastronomic heritage and this dispute is one of many fought by the country against food suppliers’ rival products.

For example, Cyprus lost its applications to invalidate or revoke trademark applications by a UK food importer and retailer, John & Pascalis, after the Cypriot government did not provide the necessary paperwork within the two-month deadline.

The country even lost against a Cypriot association which trademarked the term ‘BBQloumi’ for a rival product in 2021.

As well as being a registered trademark, ‘Halloumi’ is also registered as a certification trademark in Cyprus and a number of other countries: the US, Jordan, Oman, Saudi Arabia, Qatar, Syria and South Africa.

Additionally, ‘Halloumi’ was registered as a collective trademark in the EU and the UK in 1999.

The Halloumi Foundation operates the collective mark scheme, under which only members of the Foundation are entitled to use the mark within the EU and the UK in relation to their products.

According to the Republic of Cyprus, the Halloumi Foundation has established a framework of quality controls and product specifications by issuing regulations governing the use of the collective mark.

But the effectiveness of the collective trademark has been called into question.

Fontana’s Grilloumi

Fontana applied to register the word marks ‘Grilloumi’ and ‘Grilloumi Burger’ in October 2016, kick-starting a ping-pong between Cyprus and Fontana—with Cyprus being knocked back each time.

For example, fast-forward to a decision taken in December 2021, Cyprus v EUIPO – Fontana Food (GRILLOUMI), in which the EU General Court overturned a Board of Appeal decision.

The court “held, in essence, that the Board of Appeal had erred in finding that the goods covered by the earlier marks and the services covered by the contested mark were dissimilar, which had led it to conclude, wrongly, that one of the cumulative conditions for there to be a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 was not satisfied”.

‘Rare interplay’

Looking at this latest judgment, Constantin Eikel, a partner at Bird & Bird in Germany, highlights the difference between the similarity of goods and the similarity of services.

Cyprus made the argument that the “services covered by a mark which is similar or identical to an earlier certification mark must be regarded as being similar to more than a low degree to the goods with which they are likely to be associated”, he tells WIPR.

This, says Eikel, is “interesting, as it alludes to the nature of certification marks; certification marks certify certain characteristics”.

“The argument that the public will relate these characteristics of, in this case, goods, to the offered services is understandable, but it creates a rare interplay between similarity of signs and similarity of goods," he says.

“Can the similarity of signs increase the similarity of goods and services? The court shut down this argument on technical grounds: the EUIPO was bound by the prior decisions.

“In my view, the similarity of signs cannot increase the similarity of goods. But a higher similarity of the signs does of course increase the scope of protection and may result in a likelihood of confusion, even if the goods and services are only of low similarity.”

The ‘wrong tool for the job’

Cyprus’ following argument, namely that certification marks should not be subject to the same requirement of distinctiveness as individual marks, is the continued effort to justify “the wrong tool for the job”, notes Eikel.

Since a protected designation of origin (PDO) was not available as a form of protection, Cyprus had to rely on a certification mark.

He adds that Article 83 (1) of Regulation 2017/1001 states that “even” a certification mark must be “capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services which are not so certified”.

“This is something which Halloumi–as found by the court–does not fulfil. The public does not perceive the sign as a certified good coming from a specific proprietor but as a generic description of a type of cheese,” says Eikel.

Similar evidence

“Lastly, the proof filed [by Cyprus] to underline enhanced distinctiveness was similar to the evidence filed in the previous cases,” he observes.

“Yes, Halloumi was sold. But the opponent failed to show a link between these sales and the certification mark.”

Eikel believes the decision of October 11 is “reasonable”.

“I believe the decision continues along the lines of, and in line with, the previous decisions,” he says.

“This does not mean that Halloumi should not be protected as a PDO. It simply was not at the time the trademarks were filed.”

The Republic of Cyprus was represented by Simon Malynicz, barrister-at-law, and Claudia Milbradt, a partner at Clifford Chance.

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