Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO - M. J. Dairies (BBQLOUMI) (EU trade mark - Judgment) [2018] EUECJ T-328/17 (25 September 2018)

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(EU trade mark — Opposition proceedings — Application for EU figurative mark BBQLOUMI — Prior EU collective word mark HALLOUMI — Relative ground for refusal — No likelihood of confusion — Rejection of the opposition — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))

Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi, established in Nicosia (Cyprus), represented by S. Malynicz QC, V. Marsland, Solicitor, and S. Baran, Barrister,

European Union Intellectual Property Office (EUIPO), represented by M. Rajh, D. Walicka and D. Gája, acting as Agents,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

M. J. Dairies EOOD, established in Sofia (Bulgaria), represented by D. Dimitrova, lawyer,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 16 March 2017 (Case R 497/2016-4), concerning opposition proceedings between the Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi and M. J. Dairies,

composed of M. Prek, President, F. Schalin (Rapporteur) and J. Costeira, Judges,

having regard to the response of EUIPO lodged at the Court Registry on 13 September 2017,

having regard to the response of the intervener lodged at the Court Registry on 7 September 2017,

having regard to the decision of 14 March 2018 joining Cases T‑328/17 and T‑384/17 for the purposes of the oral part of the procedure,

1 On 9 July 2014, the intervener, M. J. Dairies EOOD, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2 The trade mark in respect of which registration was sought is the figurative sign in colour represented as follows:

3 The goods and services for which registration was sought are in Classes 29, 30 and 43 of the Nice Agreement concerning the International Classification of Goods and Services for the purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

– Class 29: ‘Dairy products and dairy substitutes; cheese; processed cheese; cheese products; cheese dips; meat extracts; prepared dishes consisting wholly or substantially wholly of meat or dairy products’;

– Class 30: ‘Sandwiches; crackers flavoured with cheese; condiments; sauces; cheese sauce; foodstuffs made from cereals’;

– Class 43: ‘Restaurant services; fast food restaurant services; cafeterias; catering.’

4 The trade mark application was published in European Union Trade Marks Bulletin No 149/2014 of 12 August 2014.

5 On 12 November 2014, the applicant, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the trade mark applied for in respect of the goods and services referred to in paragraph 3 above.

6 The opposition was based on the earlier EU collective word mark HALLOUMI, registered on 14 July 2000 under number 1082965 designating goods in Class 29 and corresponding to the following description: ‘Cheeses’.

7 The grounds put forward in support of the opposition were those referred to in Article 8(1)(b) and (5) of Regulation No 207/2009 (now, respectively, Article 8(1)(b) and (5) of Regulation 2017/1001).

8 On 15 January 2016, the Opposition Division rejected the opposition and ordered the applicant to pay the costs.

9 On 15 March 2016, the applicant filed an appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.

10 By decision of 16 March 2017 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal and ordered the applicant to pay the costs incurred for the purposes of the opposition and appeal proceedings.

11 First of all, the Board of Appeal examined the nature of the earlier mark and stated that, notwithstanding its status as a collective mark, given that the proceedings related to relative grounds for refusal of registration, on the one hand, that mark had to be inherently distinctive, and, on the other, any enhanced distinctive character had to have been acquired through use as a trade mark.

12 However, the inherent distinctive character of the earlier mark is weak in that the term ‘halloumi’ designates a particular type of cheese produced in a certain way in Cyprus and having particular characteristics associated with its composition and taste, so there is long-standing use of that term as a generic name.

13 The Board then found that, for the purposes of Article 8(1)(b) of Regulation No 207/2009, there was no likelihood of confusion between the earlier mark and the mark applied for. In that regard, the Board of Appeal held that it was necessary to carry out a comparison of the marks at issue on the basis of the perception of the general public in the European Union.

14 As regards the comparison of the goods and services covered by the marks at issue, the Board of Appeal found that the opposition was relevant only in respect of the goods covered by the mark applied for in Class 29, since the goods covered by the marks at issue could be identical or similar, with the exception of ‘meat extracts’, and in respect of the goods covered by the mark applied for in Class 30, since the goods at issue could be similar to some degree. However, the services in Class 43 covered by the mark applied for are different from ‘cheeses’.

15 As regards the comparison of the signs at issue, the Board of Appeal found that the visual similarity was weak because the signs coincided only in the group of the letters ‘l’, ‘o’, ‘u’, ‘m’ and ‘i’, that they were phonetically dissimilar and that they were also conceptually dissimilar inasmuch as the sign applied for did not clearly convey the meaning associated with the term ‘halloumi’ or even the concept of cheese.

16 As regards the global assessment of the likelihood of confusion, the evidence submitted by the applicant demonstrates, at the very most, that the term ‘halloumi’ is used throughout the European Union as a generic name for a speciality cheese from Cyprus, and it is insufficient to establish intensive use as a trade mark designating cheeses.

17 That finding applies with respect to use in both Cyprus and Greece, as the applicant did not submit any evidence of the actual perception of the mark HALLOUMI, other than as a type of cheese. The assessment of the likelihood of confusion must therefore rest on the finding of the inherently weak distinctive character of the earlier mark.

18 The Board of Appeal therefore concluded that there was no likelihood of confusion given the weak distinctive character of the earlier mark, the low degree of visual similarity between the signs at issue, the lack of phonetic and conceptual similarity and the varying degrees of similarity for some of the goods covered by the marks at issue.

19 Finally, the Board of Appeal considered that the applicant was no longer relying on the ground of opposition relating to infringement of Article 8(5) of Regulation No 207/2009. It found, in any event, that the applicant had not shown how the use of the mark applied for took unfair advantage of the distinctive character or the repute of the earlier trade mark, or was detrimental to them.

The single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009

22 In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. The plea is divided into four parts. Firstly, the applicant complains that the Board of Appeal wrongly characterised the meaning and effect of EU collective marks by following the reasoning of the General Court in the judgments of 13 June 2012, Organismos Kypriakis Galaktokomikis Viomichanias v OHIM — Garmo (HELLIM) (T‑534/10, EU:T:2012:292) and of 7 October 2015, Cyprus v OHIM (XAΛΛOYMI and HALLOUMI) (T‑292/14 and T‑293/14, EU:T:2015:752). Secondly, it submits that the Board of Appeal misconstrued Articles 66 to 68 of Regulation No 207/2009 (now Articles 74 to 76 of Regulation 2017/1001) in so far as collective marks do not, by their nature, serve to distinguish a single commercial origin, but can, in any event, indicate geographical origin. Thirdly, the Board of Appeal wrongly considered that the earlier mark was generic, thus depriving it of any distinctive character. Fourthly, as a result of the finding of a lack of distinctive character, the Board of Appeal wrongly considered that the differences between the marks at issue were sufficient to avoid a likelihood of confusion.

23 Having regard to the link between them, it will be appropriate to examine the first and second parts together.

24 EUIPO and the intervener seek an order that the applicant’s single plea be dismissed.

25 In accordance with the case-law, the likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, between two marks should not be assessed on the basis of a comparison, in the abstract, of the signs and the goods or services which they cover. The assessment of that risk must, instead, be based on the perception that the relevant public will have of those signs, goods and services (see judgment of 2 October 2015, The Tea Board v OHIM — Delta Lingerie (Darjeeling), T‑624/13, EU:T:2015:743, paragraph 24 and the case-law cited).

26 In addition, in accordance with the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).

27 In the present case, it is necessary to uphold, in that they appear well founded in the light of the evidence in the file, the Board of Appeal’s findings as set out in paragraph 20 of the contested decision as regards the relevant public in relation to the goods at issue. The marks at issue are essentially registered for identical products, in this case cheese. Since they are everyday consumer goods, it must be held that they are aimed at the average consumer, who is deemed to be reasonably well informed and reasonably observant and circumspect (see, to that effect, judgment of 25 October 2006, Castell del Remei v OHIM — Bodegas Roda (ODA), T‑13/05, not published, EU:T:2006:335, paragraph 46). Moreover, since the earlier mark is registered in the EU, the Board of Appeal found that the assessment had to be based on the perception of the general public in the EU. In the light of the goods in question, those findings, which, moreover, are not disputed by the parties, appear well founded.

The first and second parts, alleging an incorrect assessment of the characteristics and nature of EU collective marks

28 The applicant submits that the Board of Appeal followed the reasoning of the General Court in the case that gave rise to the judgment of 13 June 2012, HELLIM (T‑534/10, EU:T:2012:292), even though the General Court committed an error in its assessment of the particularities of the earlier EU collective word mark at issue in that case HALLOUMI by failing to take sufficient account of the fact that, if the cheese designated by that mark originated from certain undertakings which were members of the organisation which owned that mark, it also had a specific geographical origin associated with a specific place of production and a special recipe based on milk from Cyprus. In so doing, the General Court allegedly underestimated the distinctive character of the trade mark in question which, in that case, should have been considered to be at least average. It also stated that the ordinary conditions of distinctiveness are relaxed only at the stage of registration of that mark, and that the latter did not benefit from a presumption of distinctiveness.

29 Firstly, the error committed by the Board of Appeal relates to a failure to take full account of the relationship between, on the one hand, the degree of distinctiveness of EU collective marks and, on the other, the effect that the protection conferred by the mark has on third parties, since Article 66(2) of Regulation No 207/2009 (now Article 74(2) of Regulation 2017/1001) struck a balance between the degree of their descriptive character and the adverse effects on third parties resulting from their being registered despite that character, in that a later user of a sign or indication referring to a geographical name may be prohibited from using such a sign only if he does so in disregard of honest practices in industrial or commercial matters.

30 Secondly, EU collective marks differ from conventional trade marks, since they refer to a number of traders and to a product that may designate a geographical area. However, there are no special provisions allowing later marks to adopt similar geographically descriptive signs. Accordingly, there are no provisions in Regulation No 207/2009 that require EU collective marks to have a reduced scope of protection when it comes to the registration of later EU or national trade marks, since the former are to benefit from a presumption of validity, in the absence of any application for a declaration of invalidity, and are to possess a certain degree of distinctiveness.

31 The judgment of 7 October 2015, XAΛΛOYMI and HALLOUMI (T‑292/14 and T‑293/14, EU:T:2015:752), was wrongly relied on in the contested decision in so far as the case in question concerned an ordinary EU trade mark, which was caught by an absolute ground for refusal relating to a lack of ordinary distinctive character, as these considerations are irrelevant as regards a collective mark.

33 Article 66 of Regulation No 207/2009 provides for the possibility of registering EU collective marks. Under Article 66(1), ‘[an EU] trade mark which is described as such when the mark is applied for and is capable of distinguishing the goods or services of the members of the association which is the proprietor of the mark from those of other undertakings’ may constitute such a mark. That provision states that such marks may be applied for by ‘associations of manufacturers, producers, suppliers of services, or traders which, under the terms of the law governing them, have the capacity in their own name to have rights and obligations of all kinds, to make contracts or accomplish other legal acts and to sue and be sued, as well as legal persons governed by public law’. Article 66(3) of Regulation No 207/2009 also states that the provisions of that regulation are to apply to EU collective marks, ‘unless Articles 67 to 74 [thereof] provide otherwise’.

34 Article 66(2) of Regulation No 207/2009 also permits registration ‘of signs or indications which may serve, in trade, to designate the geographical origin of the goods or services’ as EU collective marks within the meaning of paragraph 1 of that article and by way of derogation from the EU individual trade mark system, as governed by Article 7(1)(c) of that regulation (now Article 7(1)(c) of Regulation 2017/1001), according to which trade marks composed exclusively of such signs or indications may not be registered, having regard to their descriptive character.

35 However, although EU collective marks may refer to a geographical origin, under Article 4 of Regulation No 207/2009 (now Article 4 of Regulation 2017/1001) which is applicable to them pursuant to Article 66(3) of that regulation, only signs which are capable of distinguishing the commercial origin of the goods or services to which they are affixed may constitute EU trade marks. In that regard, the Court has repeatedly held that the essential function of a trade mark is to guarantee the origin of the goods to consumers, in the sense that it served to identify the goods or services covered by the trade mark as originating from a particular undertaking and thus to distinguish those goods or services from those of other undertakings (judgment of 20 September 2017, The Tea Board v EUIPO, C‑673/15 P to C‑676/15 P, EU:C:2017:702, paragraphs 51 and 52).

36 On that basis, it must be observed that although, unlike an individual mark, the EU collective mark does not designate goods or services from a single undertaking, it does enable, under Article 66(1) of Regulation No 207/2009, identification of the commercial origin of the goods or services which it covers in so far as they come from members of the association which is the proprietor of that mark.

37 Article 8(1)(b) of Regulation No 207/2009 is, in the absence of any provision to the contrary laid down in Articles 67 to 74 of that regulation, applicable to EU collective marks by virtue of Article 66(3) of that regulation. It provides that, upon opposition by the proprietor of an earlier trademark, the trademark applied for is not to be registered if, because of its identity with or similarity to the earlier trademark and the identity or similarity of the goods or services covered by the trademarks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected (judgment of 20 September 2017, The Tea Board v EUIPO, C‑673/15 P to C‑676/15 P, EU:C:2017:702, paragraph 46).

38 In the light of the case-law, under the provisions of Article 8(1)(b) of Regulation No 207/2009, in conjunction with Article 66(3) of that regulation, that mark enjoys, like any other EU mark, protection against any infringement resulting from the registration of an EU trade mark that involves a likelihood of confusion (judgment of 9 June 2010, Muñoz Arraiza v OHIM — Consejo Regulador de la Denominación de Origen Calificada Rioja (RIOJAVINA), T‑138/09, EU:T:2010:226, paragraph 22).

39 Having regard to the principles set out above and with specific regard to the complaint alleging an under-estimation of the distinctive character of the earlier mark due to the specific place of production and the special recipe based on milk from Cyprus of the cheese to which it refers, the Board of Appeal was right to find, in paragraph 11 of the contested decision, based on the judgment of 13 June 2012, HELLIM (T‑534/10, EU:T:2012:292), that, although a collective mark could be registered notwithstanding a descriptive character relating to a geographical origin, the fact remained that it should be inherently distinctive.

40 Indeed, as the Court has already held, registration as a collective mark cannot per se give rise to a presumption that the mark has average distinctive character (judgment of 13 June 2012 in HELLIM, T‑534/10, EU:T:2012:292, paragraph 52).

41 By analogy with the solution adopted in the judgment of 24 May 2012, Formula One Licensing v OHIM (C‑196/11 P, EU:C:2012:314, paragraphs 43 to 47), with regard to validly registered national trade marks, it is certainly possible to acknowledge that a validly registered EU collective mark has a certain degree of distinctiveness. However, it is for the holder of such a mark to show what level of distinctive character it has, since he intends to rely on it in support of opposition proceedings. It must indeed be recalled that, in accordance with Article 76(1) of Regulation No 207/2009 (now Article 95(1) of Regulation 2017/1001), the burden of proof, before EUIPO, lies in that regard with the opponent concerned (see, to that effect, judgment of 6 December 2017, Tulliallan Burlington v EUIPO — Burlington Fashion (BURLINGTON), T‑123/16, not published, EU:T:2017:870, paragraph 60 and the case-law cited).

42 However, after the Board of Appeal carried out, in paragraph 15 of the contested decision, an analysis of the evidence produced by the applicant as regards the perception of the earlier mark by the relevant public, including, inter alia, data relating to exports, sales, marketing and communication efforts, publications in various journals and works, it concluded that they all related to the word ‘halloumi’ in that it denoted a particular type of cheese produced according to certain features and had done so for a long time, but not to its belonging to anyone who marketed the product in question to a special association of producers or traders, so that those elements were not relevant to the demonstration of the inherent distinctiveness of the earlier mark. That analysis, which concords with that of the General Court in the judgment of 7 October 2015, XAΛΛOYMI and HALLOUMI (T‑292/14 and T‑293/14, EU:T:2015:752, paragraph 21), must be accepted, and it must be noted that that judgment has not been the subject of an appeal.

43 Thus, in the light of the foregoing, it appears that the Board of Appeal did not err in its assessment of the characteristics and the nature of the EU collective marks or in its assessment of the distinctive character of the earlier mark. Accordingly, the first and second parts must be rejected as unfounded.

The third part, alleging an error of assessment by the Board of Appeal in that it wrongly considered the earlier mark to be generic

44 According to the applicant, at every stage of its reasoning, the Board of Appeal, while not totally denying that the earlier mark has a degree of distinctiveness, nevertheless failed to have regard to that distinctiveness, in that it stated that the mark was generic and was the name of a type of cheese from Cyprus.

45 In so doing, while the validity of the earlier mark was not called into question in cancellation proceedings, the Board of Appeal made the same error as that made by the General Court in the judgment of 17 February 2011, Formula One Licensing v OHIM — Global Sports Media (F1-LIVE) (T‑10/09, EU:T:2011:45), which the Court of Justice set aside in the judgment of 24 May 2012, Formula One Licensing v OHIM (C‑196/11 P, EU:C:2012:314). Thus, the failure to have regard to the degree of distinctiveness which must be accorded to a duly registered collective mark amounts to an infringement of the limits of power conferred by Article 8(1)(b) of Regulation No 207/2009.

47 Although, as stated in paragraph 41 above, it must be held that a validly registered EU collective mark can benefit from a presumption of inherent distinctiveness, as is apparent by analogy from the case-law resulting from the judgment of 24 May 2012, Formula One Licensing v OHIM (C‑196/11 P, EU:C:2012:314, paragraphs 43 to 47), the fact remains that it is for the holder of such a mark to show the degree of distinctiveness which he claims, since that degree is one of the elements taken into account in support of opposition proceedings, even more so as regards the degree of distinctive character acquired through use.

48 Contrary to the applicant’s submissions, that does not amount to denying the very existence of the distinctive character of a validly registered trade mark, or to depriving that mark of the rights which it confers on its proprietor, but simply to finding that it cannot confer more rights than those it draws objectively from its distinctive character.

49 In that regard, it must be borne in mind that, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of the identity of the goods in question and of the similarity between the signs at issue (see judgment of 13 April 2011, Sociedad Agricola Requingua v OHIM — Consejo Regulador de la Denominación de Origen Toro (TORO DE PIEDRA), T‑358/09, not published, EU:T:2011:174, paragraph 45 and the case-law cited).

50 In the present case, the conclusions drawn by the Board of Appeal in paragraphs 15 and 41 of the contested decision as regards the inherent distinctive character of the earlier mark are based on the finding that the evidence adduced by the applicant, in particular the advertising material attached to the various statements, articles and official records referring to the tradition of the production of Halloumi cheese, can, at most, establish use of the word ‘halloumi’ as a generic name for a cheese produced in Cyprus. By contrast, the Board of Appeal did not take the view that the earlier mark should as such be regarded as generic.

51 Moreover, the applicant does not show in any way that the Board of Appeal erred in its assessment of the evidence placed on the file, since it all relates, as EUIPO argues, to sales and consumption of halloumi cheese, but without it being possible to establish any link between that evidence and the collective mark HALLOUMI.

52 As regards the distinctive character acquired through use, examined by the Board of Appeal in the context of the overall likelihood of confusion, the Board made an identical finding in paragraph 41 of the contested decision, as regards all EU countries apart from Cyprus and Greece, noting, inter alia, that the advertising material attached to the various statements, articles and records produced by the applicant also relate to the generic name of halloumi cheese. The same finding is made in paragraph 42 of the contested decision as regards the level of use in Cyprus and Greece, since no document produced relates to the perception of the earlier EU collective word mark HALLOUMI by consumers. The appellant does not show at all that the analysis of the evidence by the Board of Appeal is vitiated by an error or was incomplete.

53 It thus appears that the Board of Appeal did not err in its assessment of the degree of distinctive character which the earlier mark must be acknowledged to have, as a validly registered collective trade mark. The third part must therefore be rejected as unfounded.

The fourth part, alleging an error in the assessment of the likelihood of confusion

54 The applicant submits that the Board of Appeal’s failure to acknowledge that the earlier mark has a distinctive character — considering it to be no more than the generic name of a type of cheese — on any view, renders nugatory the assessment of the likelihood of confusion based on similarities and differences between the marks at issue. However, the applicant notes that the Board of Appeal also committed discrete errors in its comparison of the signs at issue and that, in particular, it did not examine whether there was any conceptual similarity between those signs, thereby failing in its assessment to take into account the word ‘halloumi’ or any similarity based on that word because it was generic, which led to the incorrect conclusion that there was no likelihood of confusion. The Board of Appeal also failed to take into consideration the figurative elements of the mark applied for, which clearly depict grilled barbequed cheese.

56 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgment of 29 September 1998, Canon, C-39/97, EU:C:1998:442, paragraph 17, and judgment of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

57 As is apparent from recital 8 of Regulation No 207/2009 (now recital 11 of Regulation 2017/1001), the assessment of the likelihood of confusion depends on numerous elements, in particular the public’s recognition of the trade mark on the market in question. The more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24; of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18; and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20).

58 Conversely, a finding that the earlier mark has a weak distinctive character does not preclude a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 13 December 2007, Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 70 and the case-law cited).

59 Since the global assessment of the likelihood of confusion implies, having regard to their interdependence, an examination of the various elements taken into account, it is necessary, as a preliminary step, to examine how the Board of Appeal assessed the various elements, in particular when carrying out the comparison of the signs at issue.

60 In the first place, as regards the visual comparison, it must be pointed out that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have graphic form capable of creating a visual impression (see judgment of 4 May 2005, Chum v OHIM — Star TV (STAR TV), T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited).

61 The earlier mark is composed of the word ‘halloumi’. The mark applied for is a figurative mark in the shape of a rectangle, which consists of the word ‘bbqloumi’, written in stylised characters and in white capital letters edged in red, placed in the upper third of the rectangle which contains, in the background, the picture of a port with vessels, houses, a restaurant patio, a blue sky and, in the foreground, in the lower part of the rectangle, a dish of food, showing some marks of grilling.

62 In accordance with the case-law, where a trade mark is composed of word and figurative elements, the word element of the mark is, in principle, more distinctive than the figurative element, since the average consumer will more easily refer to the goods in question by citing the name rather than describing the figurative element (see judgment of 9 September 2008, Honda Motor Europe v OHIM — ESAW (MAGIC SEAT), T‑363/06, EU:T:2008:319, paragraph 30 and the case-law cited). In the light of the graphic form of the mark applied for, it appears that the term ‘bbqloumi’ will attract the public’s attention, but that, however, the public will also focus on the representation of the dish of food due to its presence in the foreground. In that regard, the Board of Appeal was correct to find that the figurative representation was visually co-dominant and that, as regards the word element, more weight should be given to its initial part, namely ‘bbq’, rather than its final part ‘loumi’. Thus, in so far as ‘loumi’ does not constitute a separate element in the word ‘bbqloumi’ and as it is the element in which the signs at issue coincide, the visual similarity was considered to be weak. That assessment, which appears in paragraph 32 of the contested decision and which, moreover, is not expressly disputed by the parties, appears to be correct and must be upheld.

63 In the second place, as regards the phonetic comparison, the Board of Appeal found in paragraph 33 of the contested decision, that the pronunciation of the signs at issue coincided in the sound of the group of their last five letters ‘loumi’ but that, in view of the different pronunciation of the elements ‘hal’, on the one hand, and ‘bbq’, on the other, the usual acronym of the word ‘barbecue’, and the greater number of syllables in the sign applied for, the signs had to be considered phonetically different.

64 That assessment cannot be followed. The common presence of the group of five letters ‘loumi’ in the earlier mark and in the word element of the mark applied for leads to a certain degree of phonetic similarity. Admittedly, the final position of that group of letters in the sign applied for and the different number of syllables composing the signs at issue are such as to render its presence less acute in the pronunciation of those signs, but, since the word element of the mark applied for is pronounced, it nevertheless leads to phonetic similarity, which it is appropriate to regard as low.

65 In the third place, as regards the conceptual comparison, the Board of Appeal examined, in paragraphs 34 and 35 of the contested decision, the possible similarity between the signs at issue. Firstly, it stated that the earlier sign conveyed the concept of a type of cheese from Cyprus. Next, it analysed the sign applied for and took the view that the group of three letters ‘bbq’ would be understood as the abbreviation of the word ‘barbecue’, that the group of the last five letters ‘loumi’ does not have any meaning and that, taken as a whole, the word ‘bbqloumi’ had no meaning, not even in Greek or English. The figurative elements forming the mark at issue, whether the scene representing a Mediterranean environment or the dish of food, which could easily be seen as grilled meat or toasted bread, clearly do not convey the meaning of ‘halloumi’ or even the concept of cheese, so that it must be concluded that the signs at issue were conceptually different. Lastly, the Board of Appeal considered that, since the concept of ‘halloumi’ referred to a cheese and not to a commercial origin, the applicant’s argument that the scene described in the sign applied for represented a Mediterranean environment which could be linked with the Cypriot cheese halloumi must be rejected. Thus, in the view of the Board of Appeal, the signs at issue are conceptually different.

66 However, nor can that analysis by the Board of Appeal be followed. Although it is true that the earlier mark conveys the concept of a type of Cypriot cheese, halloumi cheese in this case, it cannot be ruled out that, to a certain extent, the mark applied for conveys a similar concept. In that regard, the Board of Appeal’s argument that the concept of ‘halloumi’ represents a cheese and not the commercial origin of the product designated or of the proprietor of the mark is ineffective, since it is relevant only at the stage of assessing the likelihood of confusion and not at that of the conceptual comparison. It is, at this stage, a question of assessing whether the mark applied for conveys a concept and, if so, of determining whether there is a link with the concept conveyed by the earlier mark, regardless of the commercial origin of the goods in question.

67 The word element making up the sign applied for consists of the group of the three letters ‘bbq’, which, as the Board of Appeal pointed out, will be understood by the public as the abbreviation of the word ‘barbecue’. However, it seems wrong to consider that the group of the last five letters ‘loumi’ is meaningless, in the same way as, taken as a whole, the word ‘bbqloumi’. In fact, for that section of the public which is familiar with halloumi cheese, in this case a not insignificant part of the general public of the European Union since the information in the file have enabled a finding that significant quantities of halloumi were sold in a number of Member States, the group of the last five letters ‘loumi’ can be understood as referring to halloumi cheese. For that section of the public, the association of that group of letters with the abbreviation ‘bbq’ is therefore likely to refer to the concept of halloumi cheese cooked or grilled on a barbecue.

68 In addition, while it is true that, where a mark is composed of word and figurative elements, the average consumer will more easily refer to the goods in question by citing the name rather than describing the figurative element (see, to that effect, judgment of 9 September 2008, MAGIC SEAT, T‑363/06, EU:T:2008:319, paragraph 30 and the case-law cited), it must be recalled that the Board of Appeal found that there was a visual co-dominance of the word and figurative elements. However, the figurative elements of the mark applied for, composed in the background of a Mediterranean environment, introducing a link with the geographical position of Cyprus as a Mediterranean island, and in the foreground of a dish of food showing marks of grilling, clearly reinforce the concept conveyed by the word element of the sign applied for, even if it is not possible to state categorically that the foods represented are pieces of halloumi cheese. The signs at issue are therefore not totally conceptually different but, on the contrary, present a degree of similarity which can be classified as low.

69 It must therefore be held that the Board of Appeal has made two errors when comparing the signs at issue, namely in the assessment of the phonetic and conceptual similarity. Any impact of those errors on the lawfulness of the contested decision will be examined below at the stage of the global assessment of the likelihood of confusion.

70 As regards the assessment of the inherent distinctiveness of the earlier mark, the Board of Appeal found, in paragraph 39 of the contested decision, that it was low, since the word ‘halloumi’ designated a type of cheese and the evidence submitted was, furthermore, insufficient to establish intensive use as a trade mark designating cheeses. Those conclusions, in the light of the analysis that has already been carried out in the context of the examination of the third plea, must be accepted, so that it is also necessary to reject as unfounded the applicant’s argument that the Board of Appeal did not acknowledge that the earlier mark had any distinctive character.

71 Despite the fact that, with the exception of the services covered by the mark applied for, the goods covered by the marks at issue are in part identical and in part similar to some degree, there cannot be any likelihood of confusion on the part of the relevant public since the existence of a visual, phonetic and conceptual similarity is not, in the case of an earlier descriptive mark with low distinctive character, sufficient to give rise to a presumption of a likelihood of confusion (see, to that effect, judgment of 13 June 2012, HELLIM, T‑534/10, EU:T:2012:292, paragraphs 54 and 55).

72 It follows that the Board of Appeal was correct in finding that there was no likelihood of confusion.

73 Thus, the fourth part must be rejected and, thus, the single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009, with the result that the action must be dismissed in its entirety.

74 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

75 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

2. Orders Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi to pay the costs.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO - M. J. Dairies (BBQLOUMI) (EU trade mark - Judgment) [2018] EUECJ T-328/17 (25 September 2018) URL: http://www.bailii.org/eu/cases/EUECJ/2018/T32817.html Cite as: [2018] EUECJ T-328/17, EU:T:2018:594, ECLI:EU:T:2018:594

Court of Justice of the European Communities (including Court of First Instance Decisions)