Judgments nº T-328/17 RENV of Tribunal General de la Unión Europea, January 20, 2021

• Resolution Date: January 20, 2021
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-328/17 RENV

(EU trade mark - Opposition proceedings - Application for EU figurative mark BBQLOUMI - Earlier EU collective word 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-328/17 RENV,

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. Barran, Barrister,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by D. Gája and V. Ruzek, acting as Agents,

defendant,

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, avocate,

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

THE GENERAL COURT (Second Chamber),

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

Registrar: A. Juhász-Tóth, Administrator,

having regard to the written part of the procedure and further to the hearing on 29 September 2020,

gives the following

Judgment

Background to the dispute

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 in respect of 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 Community 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 mark applied for in respect of all of the goods and services referred to in paragraph 3 above.

6 The opposition was in particular 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: ‘cheese’.

7 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).

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 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.

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 distinctiveness had to have been acquired through use as a trade mark.

12 However, according to the Board of Appeal, the inherent distinctiveness of the earlier mark was weak in that the term ‘halloumi’ designated a particular type of cheese produced in a certain way in Cyprus and having particular characteristics associated with its composition and taste, so there was longstanding use of that term as a generic name.

13 The Board of Appeal 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, it 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, the Board of Appeal considered 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 in question could be similar to some degree. However, the services in Class 43 covered by the mark applied for were different from cheese.

15 As regards the comparison of the signs, the Board of Appeal found that the visual similarity was low because (i) the signs coincided only in the group of the letters ‘l’, ‘o’, ‘u’, ‘m’ and ‘i’, (ii) they were phonetically dissimilar and (iii) 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 cheese.

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 distinctiveness of the earlier mark.

18 The Board of Appeal therefore concluded that there was no likelihood of confusion given the weak distinctiveness of the earlier mark, the low degree of visual similarity between the signs in question, the lack of phonetic and conceptual similarity of those signs 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 distinctiveness or the repute of the earlier mark, or was detrimental to them.

Procedure before the General Court and the Court of Justice

20 By application lodged at the General Court Registry on 26 May 2017, the applicant brought an action for the annulment of the contested decision. The applicant put forward a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009; that plea is divided into four parts.

21 First, the applicant criticised the Board of Appeal for having erroneously 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). Second, it submitted that the Board of Appeal had 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 did not, by their nature, serve to distinguish a single commercial origin, but could, in any event, indicate geographical origin. Third, the Board of Appeal had wrongly considered that the earlier mark was generic, thus depriving it of any distinctiveness. Fourth, as a result of the finding of a lack of distinctiveness, it had wrongly considered that the differences between the marks at issue were sufficient to avoid a likelihood of confusion.

22 By judgment of 25 September 2018, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO - M. J. Dairies (BBQLOUMI) (T-328/17, not published, ‘the original judgment’, EU:T:2018:594), the General Court dismissed the action and ordered the applicant to pay the costs.

23 In essence, the General Court considered that the Board of Appeal had not erred either in its assessment of the characteristics and nature of EU collective marks or in its assessment of the distinctiveness of the earlier mark.

24 First of all, the General Court held that the evidence produced by the applicant as regards the perception of the earlier mark by the relevant public, consisting of the general public of the European Union whose level of attention was, in essence, average, related to the word ‘halloumi’ which denoted a particular type of...