Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO - Papouis Dairies (fino) (EU trade mark - Judgment) [2023] EUECJ T-558/21 (01 February 2023)

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(EU trade mark – Opposition proceedings – Application for the EU figurative mark fino Cyprus Halloumi Cheese – Earlier EU collective word mark HALLOUMI – Relative ground for refusal – Similarity of the signs – 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 C. Milbradt, lawyer, and S. Malynicz, Barrister,

European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,

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

Papouis Dairies Ltd, established in Nicosia (Cyprus), represented by A. Pomares Caballero and M. Pomares Caballero, lawyers,

composed, at the time of the deliberations, of V. Tomljenović, President, F. Schalin (Rapporteur) and P. Škvařilová-Pelzl, Judges,

1 By its action under Article 263 TFEU, the applicant, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 29 April 2021 (Case R 578/2019-2) (‘the contested decision’).

2 On 12 September 2012, the intervener, Papouis Dairies Ltd, filed an application for registration of an EU trade mark with 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)).

4 The goods and services in respect of which registration was sought are, following the restriction made in the course of the proceedings before EUIPO, in Class 29 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 to the following description: ‘Cheese made out of cow’s milk and/or sheep’s milk and/or goat’s milk (from any milk proportion and combination), rennet’.

5 The trade mark application was published in Community Trade Marks Bulletin No 223/2012 of 22 November 2012.

6 On 22 February 2013, the applicant 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 mark applied for in respect of the goods and services referred to in paragraph 4 above.

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

8 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (5) of Regulation No 207/2009 (now Article 8(1)(b) and (5) of Regulation 2017/1001).

9 On 9 September 2014, the Opposition Division rejected the opposition and ordered the applicant to pay the costs.

10 On 28 October 2014, the applicant filed a notice of 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.

11 By decision of 20 April 2017 (Case R 2759/2014-4), the Fourth Board of Appeal of EUIPO dismissed the appeal and ordered the applicant to pay the costs of the opposition and appeal proceedings.

12 The Fourth Board of Appeal found, inter alia, that, in accordance with the case-law, for the marks at issue there was an absolute threshold of similarity below which, since those marks were dissimilar, it was possible to eliminate the existence of a likelihood of confusion without regard to other factors.

13 According to the Fourth Board of Appeal, the signs at issue had to be regarded as not being similar, even to a certain degree as the Opposition Division had found, since it was not appropriate to take account of a single individual element of the sign applied for, namely the word ‘halloumi’, to compare it to the earlier sign. In the absence of similarity between the signs at issue, one of the conditions required by Article 8(1)(b) of Regulation No 207/2009 was not satisfied, so that the opposition brought on the basis of that provision was unfounded.

14 The Fourth Board of Appeal also took the view that the opposition based on Article 8(5) of Regulation No 207/2009 must be rejected, since the condition that the marks at issue be identical or similar was not satisfied.

15 In response to an action for annulment lodged by the applicant on 3 July 2017, the Court, by judgment of 23 November 2018, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO – Papouis Dairies (fino Cyprus Halloumi Cheese) (T‑416/17, not published, EU:T:2018:834), annulled the decision of the Fourth Board of Appeal of 20 April 2017.

16 In essence, the Court found that, contrary to the finding made by the Fourth Board of Appeal, the signs at issue must be considered to have a low degree of visual, phonetic and conceptual similarity. Thus, the finding that there was no similarity between those signs, which made it unnecessary to complete the overall comparison of those signs taking into account the interdependence of all relevant factors, was incorrect.

17 Following the annulment of the decision of the Fourth Board of Appeal of 20 April 2017, the appeal before EUIPO was reallocated to the Second Board of Appeal, which adopted the contested decision.

18 By the contested decision, the Second Board of Appeal dismissed the appeal. After noting that the decision of the Fourth Board of Appeal of 20 April 2017 had become final in so far as it had dismissed the appeal on the basis of Article 8(5) of Regulation No 207/2009, the Second Board of Appeal noted that the scope of the appeal now brought before it was restricted to the opposition based on Article 8(1)(b) of Regulation No 207/2009.

19 In that regard, referring, inter alia, to the grounds of the judgment of 23 November 2018, fino Cyprus Halloumi Cheese (T‑416/17, not published, EU:T:2018:834), first of all, the Second Board of Appeal concluded that, in the relevant territory consisting of the entire European Union, the goods covered by the marks at issue were, in essence, identical and aimed at the average consumer belonging to the general public who displayed an average level of attention when purchasing those goods. Next, it found, in essence, that all the elements making up the mark applied for had weak distinctiveness and that, of those elements, the word element ‘fino’ had to be regarded as the dominant element, without, however, rendering the other elements insignificant. Lastly, it concluded that the signs at issue had a low degree of visual, phonetic and conceptual similarity and that the earlier mark had weak, or even very weak, inherent distinctiveness, and that enhanced distinctiveness acquired through use had not been demonstrated.

20 On the basis of the overall analysis of the likelihood of confusion, the Second Board of Appeal considered that, in view of the low degree of similarity between the marks at issue, the low, or even very low, degree of inherent distinctiveness of the earlier mark, the absence of any demonstration of enhanced distinctiveness of that mark acquired through use, and the identity of the goods covered by those marks, in respect of which the relevant public would display an average level of attention, it had to be concluded that there was no likelihood of confusion.

23 In support of the action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. That plea is divided into four parts. According to the applicant: (i) the Second Board of Appeal erred in assessing the earlier mark as if it were an individual mark; (ii) it gave undue importance to the criterion relating to the distinctiveness of the earlier mark, which distorted the comparison between the marks at issue; (iii) it wrongly placed the burden of proving the distinctiveness of the earlier mark on the proprietor of that mark; and (iv) it wrongly considered that the system of protection under the protected designation of origin rules, which are intended to protect geographical indications, was capable of undermining the protection conferred by the EU trade mark system.

24 Furthermore, the applicant explains that the contested decision was served on it belatedly, on 28 June 2021, and submits that EUIPO should explain in writing, or at the hearing, the delay in service of the contested decision.

25 When invited, at the hearing, to provide written explanations for the conditions under which the contested decision was served, EUIPO, by letter of 5 October 2022, stated, in essence, that the time limit for service was consistent with that for similar cases. The applicant and the intervener did not submit observations on EUIPO’s explanations.

26 EUIPO and the intervener contend that the applicant’s single plea must be rejected.

27 Given the date on which the application for registration at issue was filed, namely 12 September 2012, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited). Furthermore, since, in accordance with settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the present proceedings are governed by the procedural provisions of Regulation 2017/1001.

28 Consequently, in the present case, so far as concerns the substantive rules, the references made by the Board of Appeal in the contested decision and by the parties to the proceedings to Article 8(1)(b) of Regulation 2017/1001 must be understood as referring to Article 8(1)(b) of Regulation No 207/2009, the wording of which is identical.

The first part of the plea, alleging that the Second Board of Appeal erred in analysing the earlier mark as an EU collective mark

29 The applicant submits that the Second Board of Appeal erred in not taking account of the fact that the earlier mark is a collective mark. According to the applicant, the purpose of such a mark is not only to indicate a commercial origin, but also to distinguish one of the multiple members of the association which is the proprietor of the trade mark, who generally use the trade mark in parallel with their own trade mark. Thus, the collective character of an earlier mark could result in additional criteria being added to those applicable to individual marks, without departing from them or without resulting in a different overall factual assessment against the same legal criteria. The applicant claims that that error on the part of the Second Board of Appeal resulted in an incorrect assessment of the likelihood of confusion in so far as the actual manner of use of the earlier mark was not taken into account.

31 Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, an 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 likelihood of confusion includes the likelihood of association with the earlier trade mark.

32 In accordance with Article 66(1) of Regulation No 207/2009 (now Article 74(1) of Regulation 2017/1001), the essential function of a collective mark is to distinguish the goods or services of the members of the association which is the proprietor of that mark from those of other undertakings (judgments of 20 September 2017, The Tea Board v EUIPO, C‑673/15 P to C‑676/15 P, EU:C:2017:702, paragraph 63, and of 12 December 2019, Der Grüne Punkt v EUIPO, C‑143/19 P, EU:C:2019:1076, paragraph 52).

33 In the event of opposition based on a collective mark, the Court of Justice has recalled that the likelihood of confusion must be understood as being the risk that the public might believe that the goods or services covered by the earlier trade mark and those covered by the trade mark applied for all originate from members of the association which is the proprietor of the earlier trade mark or, where appropriate, from undertakings economically linked to those members or to that association (judgment of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, C‑766/18 P, EU:C:2020:170, paragraph 64).

34 Although the essential function of a collective mark, as set out in Article 66(1) of Regulation No 207/2009, must be taken into account in order to understand what is meant by a likelihood of confusion, within the meaning of Article 8(1)(b) of that regulation, the fact remains that the case-law establishing the criteria with regard to which the existence of such a likelihood of confusion must be assessed in practice is applicable to cases concerning an earlier collective mark (judgment of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, C‑766/18 P, EU:C:2020:170, paragraph 65).

35 None of the characteristics of EU collective marks justifies derogation, in the event of opposition based on such a mark, from the assessment criteria of the likelihood of confusion which emerge from that case-law (judgment of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, C‑766/18 P, EU:C:2020:170, paragraph 66).

36 In the present case, in paragraphs 43 to 45 of the contested decision, the Second Board of Appeal recalled the principles established in case-law with regard to taking into account the nature of an EU collective mark when it is relied on in support of opposition proceedings based on Article 8(1)(b) of Regulation No 207/2009.

37 Those principles are identical to those referred to in paragraphs 32 to 35 above and, contrary to what the applicant claims, there is no need to add additional criteria to those applicable to individual marks. On the contrary, the Court of Justice has expressly observed, first, that the case-law establishing the criteria with regard to which the existence of such a likelihood of confusion had to be assessed in practice was applicable to cases concerning an earlier collective mark (see paragraph 34 above) and, second, that, when assessing the distinctiveness of the EU collective word mark HALLOUMI, which was the same as the trade mark on which the opposition was based in the present case, that distinctiveness did not have to be assessed in a particular way on the ground that it was a collective mark (see, to that effect, judgment of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, C‑766/18 P, EU:C:2020:170, paragraph 71).

38 In the present case, the applicant has neither claimed nor demonstrated that the Second Board of Appeal disregarded the usual criteria when assessing the likelihood of confusion between the marks at issue, since it incorrectly maintains that, in addition to those criteria, it was for the Second Board of Appeal to apply additional criteria to those applicable to individual marks, without departing from those criteria.

39 Consequently, it is apparent that, in the opposition proceedings concerning the registration of the mark applied for, contrary to what the applicant claims, the Second Board of Appeal did not disregard the fact that the earlier mark is an EU collective mark. Furthermore, as is apparent from the considerations set out below relating to the examination of the second and third parts of the single plea in law raised by the applicant, the Second Board of Appeal made no error regarding the fact that the earlier mark is a collective mark when it determined the factors to be weighed up in the overall assessment of the likelihood of confusion.

The second and third parts of the plea, alleging that the Second Board of Appeal overestimated the importance of the criterion relating to the distinctiveness of the earlier mark, distorted the comparison of the marks at issue and reversed of the burden of proof with regard to the demonstration of the distinctiveness of the earlier mark

41 The applicant submits that the Second Board of Appeal attached undue importance to the criterion relating to the distinctiveness of the earlier mark, first of all by analysing it independently, then by taking it into consideration again in the visual, phonetic and conceptual comparison of the signs at issue and, lastly, in the overall assessment of the likelihood of confusion. According to the applicant, that approach is not consistent with the principles established by the case-law. The applicant further submits that, contrary to what is stated in the contested decision, there is no evidence to suggest that the word ‘halloumi’ is nothing more than the name of a cheese or a generic term.

42 Moreover, according to the applicant, the Board of Appeal erred in placing the burden of proof in relation to the distinctiveness of the earlier mark on the proprietor of that mark even though it enjoys a presumption of validity by virtue of its registration and a presumption of some degree of inherent distinctiveness. The applicant submits that, on the contrary, the burden of proof rests with the parties who intend to challenge the rights conferred by the earlier mark before EUIPO.

44 As a preliminary point, it should be noted that, by the judgment of 23 November 2018, fino Cyprus Halloumi Cheese (T‑416/17, not published, EU:T:2018:834), the Court has already had occasion to rule on the relevant factors to be weighed up in the overall analysis of the likelihood of confusion, and the Court found the approach taken by the Fourth Board of Appeal to be unlawful only in so far as it ultimately failed to carry out that overall analysis. Since that judgment has become final, it is appropriate to refer, as the Second Board of Appeal did, to the grounds thereof when examining the second and third parts of the plea, especially with regard to the definition of the relevant public and the comparison of the signs at issue in the light, in particular, of the distinctive and dominant elements of which they are composed.

45 In that regard, in paragraphs 30 to 32 of the judgment of 23 November 2018, fino Cyprus Halloumi Cheese (T‑416/17, not published, EU:T:2018:834), to which the Board of Appeal referred in paragraphs 23 and 24 of the contested decision, the Court held that both the mark applied for and the earlier mark designated consumer products, in essence ‘cheese’, aimed at the general public throughout the European Union, whose level of attention was generally average when purchasing those products.

46 With regard to the identification of the distinctive and dominant elements of the marks at issue, in paragraphs 51 to 56 of the judgment of 23 November 2018, fino Cyprus Halloumi Cheese (T‑416/17, not published, EU:T:2018:834), to which the Board of Appeal referred in paragraphs 32 to 37 of the contested decision, in the first place, the Court held, first, that the figurative elements comprising the mark applied for were not very original and that, among the word elements which make up that mark, although the word ‘fino’ had distinctiveness, it could only be low, or even very low.

47 Next, the Court considered that the series of the three other words making up the mark applied for, namely ‘cyprus halloumi cheese’, was very weakly distinctive and that it could not be ruled out that each of the words in question would be considered individually by a part of the relevant public.

48 Lastly, the Court held that, individually, all the elements comprising the mark applied for were weakly, or even very weakly, distinctive and that the mark applied for, taken as a whole, also had weak, or even very weak, distinctiveness.

49 In the second place, the Court held that the word ‘fino’ had to be regarded as the dominant element of the mark applied for, but that the string of words ‘cyprus halloumi cheese’ was not insignificant and had to be taken into account in the comparison of the overall impression produced by the mark applied for.

50 It is apparent that, contrary to what the applicant claims, the approach taken by the Second Board of Appeal, relying on the grounds of the judgment of 23 November 2018, fino Cyprus Halloumi Cheese (T‑416/17, not published, EU:T:2018:834), is entirely consistent with the case-law according to which, for the purposes of Article 8(1)(b) of Regulation 2017/1001, the likelihood of confusion between two marks at issue should not be assessed on the basis of a comparison, in the abstract, of the signs at issue and the goods or services which they cover, but instead on the basis of 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).

51 That approach is intended to enable, at a later stage, a comparative analysis of the marks at issue, taking into account the relative importance of the elements making up those marks, but it does not amount, contrary to what the applicant claims, to carrying out, as a first stage, an overall and autonomous assessment of the distinctiveness of the earlier mark that would be decisive in the visual, phonetic and conceptual comparison of the marks at issue. The applicant’s complaint alleging, in essence, that the distinctiveness of the earlier mark was made a ‘super-factor’ that was decisive in the comparison of the marks at issue must therefore be rejected as unfounded at the stage of the individual analysis of the marks at issue.

52 The applicant challenges the outcome of the visual, phonetic and conceptual comparison of the marks at issue, as set out in the contested decision, but only in so far as, in essence, the factor relating to the distinctiveness of the elements making up the mark applied for was taken into account incorrectly. However, that factor was not taken into account incorrectly in the present case, since, as follows from the foregoing, the Second Board of Appeal validly assessed the factor relating to the distinctiveness of the elements making up the earlier mark, so that it was necessary to take it into account in the visual, phonetic and conceptual comparison of the signs at issue.

53 In those circumstances, there are no grounds for considering that the findings made by the Second Board of Appeal with regard to the comparison of the marks at issue are incorrect. Those findings are, moreover, similar to those which the Court previously made in paragraphs 60 to 67 of the judgment of 23 November 2018, fino Cyprus Halloumi Cheese (T‑416/17, not published, EU:T:2018:834).

54 Consequently, it must be held, as the Second Board of Appeal found in paragraph 42 of the contested decision, that the signs at issue have a low degree of visual, phonetic and conceptual similarity.

55 It is settled case-law that the degree of distinctiveness of the earlier mark determines the extent of the protection conferred by it. Where the distinctiveness of the earlier mark is significant, such a circumstance is likely to increase the likelihood of confusion. That being so, the existence of a likelihood of confusion is not precluded where the distinctiveness of the earlier mark is weak (see, to that effect, judgment of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, C‑766/18 P, EU:C:2020:170, paragraph 70 and the case-law cited).

56 With regard to EU collective marks, the Court of Justice has noted, first, that they must, whether intrinsically or through use, be distinctive and, second, that Article 66(2) of Regulation No 207/2009 (now Article 74(2) of Regulation 2017/1001) is not an exception to that requirement of distinctiveness. While that provision permitted, by way of derogation from Article 7(1)(c) of Regulation No 207/2009 (now Article 7(1)(c) of Regulation 2017/1001), registration as EU collective marks of signs which may serve to designate the geographical origin of goods or services, it did not, on the other hand, allow the signs thus registered to be devoid of distinctiveness. Accordingly, where an association applies for registration, as an EU collective mark, of a sign which may designate a geographical origin, it is therefore incumbent on it to ensure that that sign has elements which enable the consumer to distinguish the goods or services of its members from those of other undertakings (see, to that effect, judgment of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, C‑766/18 P, EU:C:2020:170, paragraphs 72 and 73 and the case-law cited).

57 Moreover, the Court has already held that the registration of a sign as a collective mark cannot, per se, give rise to a presumption that the mark has average distinctive character (judgment of 13 June 2012, Organismos Kypriakis Galaktokomikis Viomichanias v OHIM – Garmo (HELLIM), T‑534/10, EU:T:2012:292, paragraph 52).

58 It must also be recalled that, by analogy with the approach taken 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, a certain degree of distinctiveness must be acknowledged in an EU trade mark, including a collective mark, in respect of which registration has not been met with an absolute ground for refusal (see, to that effect, judgment of 24 March 2021, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO – Filotas Bellas & Yios (Halloumi), T‑282/19, not published, EU:T:2021:154, paragraph 50).

59 In the present case, as regards the inherent distinctiveness of the earlier mark, the Second Board of Appeal found, in paragraph 46 of the contested decision, that it was common ground that that mark consisted exclusively of the word ‘halloumi’ and that that word corresponded to the generic name for a type of cheese produced in Cyprus, with the result that, given the descriptive character of the single word of which it was composed, the earlier mark had an inherent distinctive character which had to be regarded as weak, or even very weak.

60 As regards a possible enhanced distinctiveness acquired through use, in paragraphs 49 to 51 of the contested decision, the Second Board of Appeal noted that the evidence produced by the applicant was the same as that produced in the case that gave rise to the judgment of 24 March 2021, Halloumi (T‑282/19, not published, EU:T:2021:154), and that, among those items of evidence, only one referred to the earlier mark as a collective mark, without, moreover, referring to the applicant or one of its members. The other items of evidence, for their part, contained almost exclusively references to the word ‘halloumi’ as a speciality cheese from Cyprus. They did not therefore make it possible to conclude that consumers, faced with the earlier mark, would associate it with something other than halloumi cheese, in view of the fact that it referred to the generic name of that type of cheese, rather than to the commercial origin of the goods in so far as they came from members of the association which is the proprietor of that mark or, as the case may be, from undertakings economically linked to those members or to that association.

61 The assessments made by the Second Board of Appeal are free of error and must be upheld.

62 First, the inherent distinctiveness of the earlier mark must be assessed by taking into account the fact that that mark is composed of a single word, namely ‘halloumi’, in respect of which it cannot seriously be disputed that it designates a speciality cheese from Cyprus. In that regard, it must be recalled that the Court of Justice, in paragraph 76 of the judgment of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO (C‑766/18 P, EU:C:2020:170), approved, in essence, the analysis that ‘the term “halloumi”, the sole element of which [the] earlier mark [consisted], [designated] a particular type of cheese produced according to a special recipe and that the distinctiveness of such a mark, which [was] restricted to designating a type of product, [was] weak’.

63 The applicant’s complaint that, in essence, the Second Board of Appeal erred in finding that the word ‘halloumi’ necessarily had to be understood as referring to a speciality cheese from Cyprus and that this constituted a well-known fact must therefore be rejected as unfounded.

64 Moreover, as EUIPO and the intervener submit, other sources accessible to the public, in particular texts of secondary legislation, also make it possible to establish the clear link between the term ‘halloumi’ and a cheese produced in Cyprus, such as Commission Implementing Regulation (EU) 2021/591 of 12 April 2021 entering a name in the register of protected designations of origin and protected geographical indications (‘Χαλλούμι’ (Halloumi)/‘Hellim’ (PDO)) (OJ 2021 L 125, p. 42).

65 Second, none of the evidence put forward by the applicant calls into question the Second Board of Appeal’s analysis of the evidence produced before it, which was intended to demonstrate a possible enhanced distinctiveness of the mark applied for acquired through use. Moreover, that evidence has already been analysed to that effect by the Court in the case that gave rise to the judgment of 24 March 2021, Halloumi (T‑282/19, not published, EU:T:2021:154).

66 Furthermore, although, as recalled in paragraph 58 above, with regard to validly registered national trade marks, it is indeed possible to acknowledge a certain degree of distinctiveness of a validly registered EU collective mark, it is however for the proprietor of such a mark to show what level of distinctiveness it has, since he or she intends to rely on it in support of opposition proceedings or even cancellation proceedings. It must also be recalled that, in accordance with 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).

67 In those circumstances, the third part of the plea must be rejected as unfounded, in so far as, contrary to what the applicant claims, the Second Board of Appeal did not reverse the burden of proof by finding, first, that the earlier mark was not devoid of inherent distinctiveness, but that its inherent distinctiveness was weak, or even very weak, and that there was no evidence to call that finding into question, and, second, that the demonstration of enhanced distinctiveness of the earlier mark, acquired through use, which was incumbent on the applicant as proprietor of that mark, had not been achieved in the light of the evidence submitted in the proceedings.

68 It should also be noted that such a line of argument had already been raised by the applicant in the case that gave rise to the judgment of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, C‑766/18 P, EU:C:2020:170, paragraph 65), and that, in paragraph 76 of that judgment, the Court of Justice had, in essence, rejected it.

69 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 (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and 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).

70 The Second Board of Appeal found, in paragraph 65 of the contested decision, that there was no likelihood of confusion. First, it based that finding, in paragraph 58 of the contested decision, on the fact that the low degree of similarity between the signs at issue was unlikely to contribute to the existence of a likelihood of confusion, since those signs coincided in an element, the word ‘halloumi’, which was not, as such, dominant in the mark applied for and was, moreover, inherently weakly distinctive for the relevant public who would understand it at most as a reference to a particular type of cheese from Cyprus. Second, in paragraphs 59 and 60 of the contested decision, the Second Board of Appeal noted that the earlier mark had a weak, or even very weak, degree of inherent distinctiveness and that the existence of enhanced distinctiveness acquired through use had not been demonstrated. Third, in paragraphs 61 to 64 of the contested decision, the Second Board of Appeal stated that the goods designated by the marks at issue, although identical, were everyday consumer goods, during the purchase of which the relevant public would display an average level of attention. Accordingly, the relevant public, faced with the mark applied for and assuming that it also directed its attention to the element ‘halloumi’ contained in that mark, which was unlikely in view of its secondary position and the fact that that element was not very distinctive and was descriptive in relation to the goods marketed, would not establish a link between that mark and the earlier mark, since, first, it would at most establish a link between that mark and the product which it designated, namely a particular type of cheese from Cyprus and, second, the marks at issue, considered as a whole, were similar only to a low degree.

71 In the present case, since the goods covered by the mark applied for must be considered to be identical to the goods designated by the earlier mark, the existence of a likelihood of confusion cannot immediately be ruled out. However, the overall assessment of that likelihood must be carried out in the light of all the relevant factors.

72 First, as regards the factor relating to the similarity of the signs at issue, that factor relates, in particular, to the presence of the word ‘halloumi’ in the mark applied for, whereas that word also corresponds to the sole element of which the earlier mark is composed, which gives rise to a low degree of visual, phonetic and conceptual similarity between the signs at issue.

73 Those considerations must, however, be seen in the light of the fact that, when the public is faced with the word element of which the mark applied for consists, its attention will be drawn more to the dominant and most distinctive element of that mark, namely the word ‘fino’, even though it has weak, or even very weak, distinctiveness for the many consumers in the European Union who understand its meaning.

74 Furthermore, the general configuration of the mark applied for, as a figurative sign drawing its distinctiveness from the fact that the figurative elements highlight the word elements, or even the contrast between the words ‘cyprus’ and ‘cheese’, from the English language, and the words ‘fino’ and ‘halloumi’, which are not directly from English, also plays a significant role in differentiating it from the earlier mark, which is a word mark composed of a single word.

75 Thus, the word ‘halloumi’, the sole element giving rise to the similarity between the signs at issue, contributes very little to the distinctiveness of the mark applied for, since the element ‘fino’ of that mark was regarded as the element which would most attract the attention of the relevant public, on account of its more distinctive and dominant character, whereas the earlier mark, for its part, enjoyed only a low degree of inherent distinctiveness.

76 Although the finding that the earlier mark has weak distinctiveness does not in itself preclude a finding that there is a likelihood of confusion (see, to that effect, order of 27 April 2006, L’Oréal v OHIM, C‑235/05 P, not published, EU:C:2006:271, paragraphs 42 to 45), it appears, however, that where the elements of similarity between two signs arise from the fact that, as in the present case, they share a component which has a weak inherent distinctiveness, the impact of such elements of similarity on the global assessment of the likelihood of confusion is itself low (see, to that effect, judgments of 22 February 2018, International Gaming Projects v EUIPO – Zitro IP (TRIPLE TURBO), T‑210/17, not published, EU:T:2018:91, paragraph 73 and the case-law cited, and of 20 September 2018, Kwizda Holding v EUIPO – Dermapharm (UROAKUT), T‑266/17, EU:T:2018:569, paragraph 79).

77 In those circumstances, the low degree of similarity which exists in the present case between the signs at issue will be unlikely to contribute to the existence of a likelihood of confusion, since those signs coincide in a single element, the word ‘halloumi’, which is not, as such, dominant and which is, moreover, inherently weakly distinctive for the relevant public, which will understand it at most as a possible reference to a particular type of cheese from Cyprus.

78 Second, as regards the distinctiveness of the earlier mark, it has a low, or even very low, degree of inherent distinctiveness. Furthermore, the applicant has not demonstrated the existence of enhanced distinctiveness acquired through use, in so far as the evidence submitted does not make it possible to find that the relevant public, faced with the earlier mark, will associate it with something other than a particular type of cheese from Cyprus named ‘halloumi’, having regard to the fact that it refers to the generic name for that type of cheese, rather than to the commercial origin of the goods designated by that mark, in that they come from the members of the association which is the proprietor of that mark or, as the case may be, undertakings economically linked to those members or to that association.

79 Thus, the level of protection conferred by the earlier mark, having regard to its low, or even very low, degree of inherent distinctiveness, must itself be low.

80 Third, the fact that the goods covered by the mark applied for may be considered to be identical to those covered by the earlier mark must be taken into consideration.

81 In that regard, it should be borne in mind that the goods at issue are everyday consumer goods, during the purchase of which the relevant public will display an average level of attention.

82 A likelihood of confusion could be found to exist only if the relevant public were likely to be misled as to the commercial origin of the goods covered by the mark applied for.

83 In the present case, that likelihood does not appear to be established, even taking into account the fact that the goods covered by the marks at issue may be considered to be identical.

84 The relevant public, when faced with the mark applied for and assuming that it also directs its attention to the element ‘halloumi’ contained in that mark, which is unlikely in view of the fact that that element is not very distinctive and that it is descriptive in relation to the goods marketed, will not establish a link between that mark and the earlier mark since, first, it will at most establish a link between that mark and the product that it designates, namely a particular type of cheese from Cyprus, and, second, the marks at issue, considered as a whole, are similar only to a low degree.

85 In the light of all the foregoing considerations, it must be held that, in the present case, the Board of Appeal, in its overall assessment of the likelihood of confusion, first, validly took into account the factor relating to the distinctiveness, both inherent and acquired through use, of the earlier mark and, second, correctly concluded that there was no likelihood of confusion.

The fourth part of the plea, alleging that the Second Board of Appeal wrongly considered that the system of protection for protected designations of origin, intended to protect geographical indications, was capable of undermining the protection conferred by the EU trade mark system

87 The applicant submits that the Second Board of Appeal disregarded the rules on protected designations of origin by failing to take into account, in essence, the fact that the intellectual property rights falling within its jurisdiction often duplicate or supplement other rights, such as those arising under the system of protection for protected designations of origin, so that there is no need to separate them clearly.

89 According to settled case-law, heads of claim levelled at reasons which are included in a decision for the sake of completeness cannot result in the annulment of that decision and are therefore ineffective (see judgment of 3 July 2013, Cytochroma Development v OHIM – Teva Pharmaceutical Industries (ALPHAREN), T‑106/12, not published, EU:T:2013:340, paragraph 57 and the case-law cited).

90 In the present case, the considerations in the contested decision relating to the rules on protected designations of origin are set out in paragraph 52 thereof and are worded as follows:

‘For the sake of completeness, it should be noted, as was stated in the Opinion of Advocate General Kokott in the “BBQLOUMI (fig.) / HALLOUMI” judgment (05/03/2020, C‑766/18 P, BBQLOUMI (fig.) / HALLOUMI, EU:C:2020:170, [paragraph] 86), that the need for more extensive protection on the basis of EU trade mark law does not exist in the present case, since the rules governing protected designations of origin and protected geographical indications, as laid down in Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs (OJ 2012 L 343, p. 1), could provide sufficient protection outside the scope of trade mark law (24/03/2021, T‑282/19, Halloumi χαλλούμι Vermion / HALLOUMI, EU:T:2021:154, [paragraph] 58).’

91 It is undeniable that those considerations, prefaced by the expression ‘for the sake of completeness’, are an obiter dictum, so that the complaint made against them by the applicant, as set out in paragraph 87 above, even if it were well founded, is not capable of resulting in the annulment of the contested decision.

93 In the light of the foregoing considerations, since the four parts of the single plea in law have been rejected as unfounded, that plea must be rejected and, consequently, the action must be dismissed in its entirety.

94 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.

95 In the present case, since the applicant has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by EUIPO and the intervener, in accordance with the forms of order sought by those parties.

2. Orders Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO) and by Papouis Dairies Ltd.

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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 - Papouis Dairies (fino) (EU trade mark - Judgment) [2023] EUECJ T-558/21 (01 February 2023) URL: http://www.bailii.org/eu/cases/EUECJ/2023/T55821.html Cite as: ECLI:EU:T:2023:27, [2023] EUECJ T-558/21, EU:T:2023:27

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