Author

Louise Popple

Senior Counsel – Knowledge

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Author

Louise Popple

Senior Counsel – Knowledge

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14 November 2023

Brands Update - November 2023 – 2 of 6 Insights

Certification marks: EU General Court rules no likelihood of confusion between GRILLOUMI and HALLOUMI

  • In-depth analysis

In a long-running dispute, the EU General Court has held that there is no likelihood of confusion between HALLOUMI and GRILLOUMI. This decision reaffirms that the test for likelihood of confusion for certification marks is the same as that for individual marks.

What has happened?

  • This case concerns an opposition by the Republic of Cyprus to the registration of a word only EUTM for GRILLOUMI covering restaurant and related services by Fontana Food AB, based on Cyprus's earlier national certification marks for ΧΑΛΛΟΥΜΙ HALLOUMI for fresh and mature halloumi.
  • Certification marks distinguish certified goods/services from non-certified goods/services. Certification can be in respect of material, mode of manufacture of goods or performance of services, quality, accuracy, or other characteristics of the goods/services except geographical origin. Certification marks are owned by independent bodies who are able to certify whether the goods/services in question meet the required certification standards. 
  • The case has bounced between the Board of Appeal and the General Court for a number of years. The opposition was initially rejected on the grounds that halloumi and restaurant services were not deemed similar. That decision was overturned on appeal and the case remitted back to the Board of Appeal, which rejected the opposition for a second time on the grounds that there was no likelihood of confusion. 
  • In its most recent decision, the General Court found no fault with the Board of Appeal’s reasoning and upheld the decision. It means that (unless permission to appeal to the ECJ is granted, which is unlikely), the GRILLOUMI mark will now proceed to registration. 
  • The case confirms that the criteria for assessing likelihood of confusion for certification marks is the same as for individual marks – this is the likelihood that the average consumer will consider the goods/services to have been certified. It also confirms that certification marks that are descriptive/weakly distinctive will be given a narrower scope of protection (just like individual marks). Halloumi was considered weakly distinctive and that seems to have had a particular influence on the outcome of the opposition. 
  • Some commentators have found the decision surprising on the basis that consumers of GRILLOUMI might well think they're consuming HALLOUMI (especially as HAMMOULI is often grilled). Others consider the marks distinguishable. 
  • Had Cyprus relied on its protected designation of origin for HALLOUMI (registered in 2021), the outcome of the case might have been different. 

Want to know more?

The Opposition Division's decision

In 2016, Fontana Food AB filed an EUTM for the word GRILLOUMI, covering services for providing food and drink, coffee-shop services and restaurants in class 43. 

The Republic of Cyprus opposed the application based on two of its earlier Cypriot certification word marks for XAΛΛOYMI HALLOUMI in Class 29, one for 'fresh halloumi’ and the other for ‘mature halloumi’. 

The opposition was based on various grounds but the current decisions related only to Article 8(1)(b) of the EUTM Regulation (EUTMR). This states that "Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:… if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected…".

The opposition was rejected by the Opposition Division since the goods/services in question were not deemed similar. In some circumstances, goods/services can be deemed similar if they are complementary in nature. Here, there was deemed to be an insufficient ‘complementary connection’ between the goods and services of the respective marks (halloumi and restaurant services), prompting Cyprus to file an appeal with the EUIPO Board of Appeal. 

The Board of Appeal's first decision

The Board of Appeal dismissed Cyprus' appeal. The Board acknowledged the possible complementarity between the goods and services but ruled that such a connection had not yet been determined for cheese and restaurant services. It took the view that the goods and services covered by the marks were not similar and so no likelihood of confusion could exist.

Cyprus sought to annul this decision and, as a result, filed an appeal before the General Court. 

The General Court's first decision

In contrast to the Board of Appeal, the General Court held that (as established by case law) goods like cheese are necessarily used in the serving of food and drink, and so a ‘complimentary link’ must be presumed to exist. As a result, the Board had erred in finding that the goods and services were dissimilar, and the case was remitted back to the Board of Appeal.

The General Court also confirmed that the test for likelihood of confusion for certification marks is the same as that for individual marks.  

The Board of Appeal's second decision

Despite the goods/services in question now being deemed similar (albeit to a low degree), the Board still found no likelihood of confusion between GRILLOUMI and HALLOUMI. It did so because of the low degree of similarity between the goods/services, low degree of inherent distinctiveness of the HALLOUMI marks, lack of evidence of acquired enhanced distinctiveness through use and below-average degree of similarity between the marks. 

The General Court's second decision

In the latest General Court decision, Cyprus contested the following points:

  • The Board of Appeal had applied an incorrect criterion in their assessment of the likelihood of confusion by applying case law relating to individual marks. In their view, such case law is not applicable where a certification mark is concerned as the latter does not function as an indicator of commercial origin, but rather distinguishes certified goods from other goods. 
  • The Board had wrongly assessed the earlier marks' distinctiveness by again applying the law relating to individual marks and not certification marks. It argued that certification marks offer a guarantee of "quality" more than "origin" such that different criteria should apply in determining distinctiveness. Many certification marks would be deemed descriptive if normal criteria were applied.
  • The Board had failed to consider that, in the context of certification marks, a 'specific comparison' between the goods and services was required. The Board of Appeal's claim that the similarity between the goods and services was low was wrong.

The General Court dismissed the appeal, holding that:

  • There was no fault with the Board of Appeal’s reasoning that the degree of similarity between the goods/services in question was low. Indeed, that was what the General Court had itself found in its earlier ruling and so the matter was res judicata.
  • The Board of Appeal had correctly assessed the distinctiveness of the earlier marks, which consist exclusively of the term ‘halloumi’ in Latin and Greek characters. The Court reaffirmed that the marks in question possessed only a weak inherent distinctive character, and any claim of enhanced distinctiveness was unfounded.
  • When determining the likelihood of confusion, the essential function of a certification mark must be understood and applied. As previously held by the General Court, likelihood of confusion, in the context of certification marks, means the risk that the public might believe that the goods or services covered by the later mark originates from persons authorised to use the certification mark by the proprietor, or from undertakings economically linked to those persons or that proprietor. Therefore, the Board of Appeal had applied the correct criterion and was entitled to rule that there was no likelihood of confusion between the marks.

In view of these considerations, it concluded that the Board of Appeal had acted within the meaning of Article 8(1)(b) and the decision was to be upheld.

What does this decision mean for you?

Critically, the General Court's ruling dispels any uncertainty around the criteria to be applied in determining likelihood of confusion where a certification mark is concerned. It also indicates that certification marks that are descriptive will be given a narrower scope of protection. 

This article was primarily authored by Emily Hufford.

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