Imitation is not always flattering
15th September 2021
Are cheese products complementary to restaurant services? The General Court thought so in its recent decision in Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v European Union Intellectual Property Office (EUIPO) (Case T-555/19).
This case involved an EU trademark application for the word mark GRILLOUMI, covering “services for providing food and drink; coffee-shop services; restaurants”, and opposition thereto by the Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi (‘the foundation’) based on its earlier EU collective trademark HALLOUMI (No 1082965), covering “cheese” in Class 29. The opposition was rejected in the first instance and the subsequent appeal dismissed by the Fourth Board of Appeal of the EUIPO.
The decision of the General Court centred on the foundation’s claim that the Board of Appeal made an error of assessment by holding that the services covered by the mark applied for and the “cheese” covered by the HALLOUMI mark were dissimilar, thus ruling out a likelihood of confusion. Although the Board of Appeal conceded that the services covered by the mark applied for could arguably be considered similar to foodstuffs, particularly where restaurants provided take away services, this did not apply to cheese. The foundation argued that there was a complementary connection between the respective goods and services and that the Board of Appeal had incorrectly applied a criterion of mutual indispensability between the services and goods at issue, whereas it would have been sufficient to note that they could be used or offered together.
When considering the complementary nature of the goods and services, the General Court confirmed that goods and services are complementary where there is a close connection between them, whereby one is indispensable or important for the use of the other, with the result that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services.
In contrast to the Board of Appeal, the General Court was of the view that, as cheese is used in the serving of food and drink, such goods and services are complementary. The General Court pointed out that cheese is offered in many restaurants and coffee shops either as an ingredient for dishes or as is, and that the goods and services are as a result closely connected. The General Court concluded that, contrary to the finding of the Board of Appeal, the complementary connection between cheese and services for providing food and drink, restaurant services and coffee shop services must lead to a finding that there is a certain degree of similarity between the aforementioned goods and services.
The Board of Appeal was held to have erred in finding that those goods and those services were dissimilar and in finding that, therefore, one of the cumulative conditions for a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 207/2009 (now Regulation 2017/1001) was not satisfied. Consequently, the first part of the plea was held to be well founded, the contested decision annulled and the applicant ordered to pay costs.
In a previous similar case (BBQLOUMI (Case T-328/17)), the Board of Appeal had also held that there was no similarity between, on the one hand, “restaurant services; fast-food restaurant services; cafeterias, catering” in Class 43 and, on the other hand, “cheese” in Class 29, and the Board of Appeal noted that the foundation had not challenged this finding in the BBQLOUMI case. However, the General Court held that there was nothing to preclude the foundation from calling such a finding into question in the present case, stating that to deny it that opportunity would be tantamount to holding it to be bound by the findings which the Board of Appeal made in a previous case.
So good news for the Halloumi brand. However, whether the GRILLOUMI and HALLOUMI marks will ultimately be held to be confusingly similar, notwithstanding the complementary nature of the goods and services, is yet to be determined.
The foundation received more good news last month. As of 12 April 2021, the European Commission registered Halloumi as a protected designation of origin (PDO). This means that, going forward, only Cypriot-made Halloumi can be marketed abroad under the Halloumi name. The registration of the Halloumi PDO will surely enhance the protection of this valuable name and will be another tool for the foundation in preventing the misuse of the Halloumi name across the European Union.
For further information on this, and all other trade enquiries, please feel free to reach out to any of our trade mark attorneys.
*This article first appeared on WTR Daily, part of World Trademark Review, in May 2021. For further information, please go to www.worldtrademarkreview.com.
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