Judgments nº T-825/16 of Tribunal General de la Unión Europea, July 13, 2018

• Resolution Date: July 13, 2018
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-825/16

(EU trade mark - Opposition proceedings - Application for EU figurative mark Pallas Halloumi - Prior United Kingdom word certification mark HALLOUMI - Relative ground for refusal - No likelihood of confusion - Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))

In Case T-825/16,

Republic of Cyprus, represented by S. Malynicz, QC, and V. Marsland, Solicitor,

applicant,

v

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

defendant,

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

Papouis Dairies Ltd, established in Nicosia (Cyprus), represented by N. Korogiannakis, lawyer,

ACTION brought against an appeal brought before the Fourth Chamber of the Board of Appeal of EUIPO of 22 September 2016 (Case R 2065/2014-4), relating to opposition proceedings between the Republic of Cyprus and Papouis Dairies,

THE GENERAL COURT (Second Chamber),

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

Registrar: X. Lopez Bancalari, Administrator,

having regard to the application lodged at the Court Registry on 24 November 2016,

having regard to the response of EUIPO lodged at the Court Registry on 15 February 2017,

having regard to the response of the intervener lodged at the Registry of the General Court on 10 March 2017,

having regard to the decision of 15 October 2017 joining Cases T-825/16 and T-847/16 for the purposes of the oral part of the procedure,

further to the hearing on 5 February 2018,

gives the following

Judgment

Background to the dispute

1 On 12 September 2012, the intervener, Papouis Dairies Ltd, acting under its previous company name Halloumis POC Farmers Milk Industry Ltd, or Halloumis, filed an application for registration of a European Union trade mark with the European Union Intellectual Property Office (EUIPO) under 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 mark registration of which was sought is the figurative sign comprising the colour indications ‘yellow, red, blue, white, grey’ and corresponding to the following representation:

3 The goods for which registration was sought come within 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, following the limitation notified to EUIPO by letter of 11 October 2016and accepted by EUIPO, corresponding 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), salt, rennet’.

4 The EU trade mark application was published in the European Union Trade Marks Bulletin No 190/2012 of 4 October 2012.

5 On 3 January 2013, the Republic of Cyprus filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation No 2017/1001) to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

6 The opposition was based on, inter alia, the earlier United Kingdom certification word mark HALLOUMI, registered on 22 February 2002 under number 14511888 (‘the earlier mark’), designating goods in Class 29 and corresponding to the following description: ‘Cheese made from sheep’s and/or goat’s milk; cheese made from blends of cow’s milk; all included in Class 29’.

7 The opposition was also based on earlier Cypriot certification word marks XAΛΛOYMI and HALLOUMI, respectively registered under numbers 36675 and 36766. Those marks were, however, considered unsubstantiated both by the Opposition Division and the Board of Appeal and the Republic of Cyprus did not rely on them further in support of the opposition, which the Board of Appeal interpreted as a withdrawal. Those marks were not taken into consideration in this case and the Republic of Cyprus further confirmed in its application that it would not rely on them in these proceedings.

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

9 On 7 July 2014, the Opposition Division rejected the opposition and ordered the Republic of Cyprus to pay the costs.

10 On 8 August 2014, the Republic of Cyprus 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.

11 By decision of 22 September 2016 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal and ordered the Republic of Cyprus to pay the costs incurred for the purposes of the opposition and appeal proceedings.

12 First of all, the Board of Appeal stated that, notwithstanding the fact that the earlier mark was a national certification mark, the condition set out in Article 8(1)(b) of Regulation No 207/2009 relating to the similarity of the signs at issue applied to all earlier marks covered by Article 8(2) of Regulation No 207/2009 (now Article 8(2) of Regulation 2017/1001).

13 The Board then considered 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. It took the view that the inherent distinctive character of the term ‘halloumi’ was weak, pointing out first of all that the General Court, in its judgment of 7 October 2015, Cyprus v OHIM (XAΛΛOYMI and HALLOUMI) (T-292/14 and T-293/14, EU:T:2015:752), had considered that, in the eyes of the Cypriot public, the word designated a particular type of cheese produced in Cyprus, then stating that that finding must be extended to the public in the United Kingdom which is relevant in this case. That word is older than all the trade marks at issue and, as such, is, to the relevant public, descriptive of the characteristics and composition of the product and does not refer to whether the user of the earlier mark belongs to a group of licensees authorised to use the mark.

14 With regard to the similarity of the signs at issue, the Board of Appeal considered that, since the dominant element of the mark applied for is the word ‘pallas’, there is only low visual similarity between the marks, average phonetic similarity and no relevant conceptual similarity. As regards the global assessment of the likelihood of confusion, it found that the Republic of Cyprus had not succeeded in proving any enhanced distinctive character of the earlier mark, or that it would be perceived by the United Kingdom public as a reference to any certification. Thus, having regard to its assessment of the inherent distinctive character of the earlier mark, the Board of Appeal found that the differences between it and the dominant element of the mark applied for, in this case the word ‘pallas’, were sufficient to obviate any likelihood of confusion.

15 Finally, the Board of Appeal found that the conditions for implementing Article 8(5) of Regulation No 207/2009 were not satisfied. The reputation of the earlier mark was not proven by the Republic of Cyprus. The detriment to the reputation of the earlier mark could, moreover, not be assessed in relation to the rules under the certification regime but, in the context of Regulation No 207/2009, only in relation to the perception of the goods by the relevant public.

Forms of order sought

16 The Republic of Cyprus claims that the Court should:

- annul the contested decision;

- order EUIPO and the intervener to pay the costs.

17 EUIPO and the intervener contend that the Court should:

- dismiss the action in its entirety;

- order the Republic of Cyprus to pay the costs.

Law

Admissibility of the action

18 Under Article 177(2) of the Rules of Procedure of the General Court, where the applicant was not the only party to the proceedings before the Board of Appeal, the application should also contain the names of all the parties to those proceedings and the addresses which they had given for the purposes of notifications.

19 In the present case, in the application, the Republic of Cyprus has designated in error Pancyprian Organisation of Cattle Farmers (POCF) Ltd as proprietor of the mark Pallas Halloumi and the other party to the proceedings before the Board of Appeal. Such erroneous identification of the intervener in the present case would still not lead to the inadmissibility of the application, since the latter contains elements which make it possible unambiguously to identify the other party to the proceedings before the Board of Appeal and, following a measure of organisation of procedure of 25 September 2017, the Republic of Cyprus stated that it had no objection to the amendment of that designation. In such a situation, it is appropriate to regard that other party as the intervener, even though its name was not initially referred to in the application.

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

20 In support of its action, the Republic of Cyprus puts forward a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. That plea is divided into three parts. Firstly, it complains that the Board of Appeal erred in its assessment of the distinctive character of the earlier mark, in particular, in finding, wrongly, that the inherent distinctive character of that mark was weak. Secondly, it submits that the Board of Appeal incorrectly assessed the visual and conceptual similarity of the signs at issue. Thirdly, it submits that the Board of Appeal erred in finding, following its overall assessment...