Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO-Papouis Dairies(Papouis Halloumi) (EU trade mark - Judgment) [2018] EUECJ T-702/17 (23 November 2018)

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(EU trade mark — Opposition proceedings — Application for EU figurative mark Papouis Halloumi — 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 S. Malynicz QC and V. Marsland, Solicitor,

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

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

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

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 3 August 2017 (Case R 2782/2014-4) concerning opposition proceedings between the Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi and Papouis Dairies,

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

having regard to the application lodged at the Court Registry on 12 October 2017,

having regard to the response of EUIPO lodged at the Court Registry on 22 December 2017,

having regard to the response of the intervener lodged at the Court Registry on 19 January 2018,

having regard to the decision of 5 December 2017 joining Cases T‑416/17 and T‑702/17 for the purposes of the oral part of the procedure,

1 On 12 September 2012, the intervener, Papouis Dairies Ltd, 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 mark for which registration was sought is the following figurative sign in colour:

3 The goods and services for which registration was sought, after the restriction applied during the proceedings before EUIPO, fall 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 consist of the following: ‘Cheese made out of cow’s milk and/or sheep’s milk and/or goat’s milk (from any milk proportion and combination), rennet’.

4 The trade mark application was published in European Union Trade Marks Bulletin No 9/2013 of 14 January 2013.

5 On 3 April 2013, the applicant, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi, filed, under Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001), a notice of opposition 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 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 19 September 2014, the Opposition Division rejected the opposition and ordered the applicant to pay the costs.

9 On 17 November 2014, 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 3 August 2017 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal and ordered the applicant to pay the costs of the opposition and appeal proceedings.

11 First of all, the Board of Appeal recalled that, in accordance with the case-law, for the marks at issue there is an absolute threshold of similarity below which, since those marks are dissimilar, it is possible to eliminate the existence of a likelihood of confusion without regard to other factors.

12 With regard to the relevant public, the Board of Appeal stated that it was made up of average end consumers, given that cheese was a product that everyone consumed almost daily.

13 Next, after having analysed the elements of which the mark applied for was composed, in order to determine which were the distinctive and dominant elements forming it, the Board of Appeal made a comparison of the marks at issue and concluded that there was no visual, phonetic or conceptual similarity.

14 Finally, the Board of Appeal also stated that it was appropriate to confirm the findings of the Opposition Division with regard to low inherent distinctiveness of the earlier mark and that, since the latter was not geographically descriptive, it could not fall within the exception referred to in Article 66(2) of Regulation No 207/2009 (now Article 74(2) of Regulation 2017/1001) which authorises, as an exception, the registration of an EU collective mark which is descriptive.

15 With regard to the enhanced distinctiveness acquire through use of the earlier mark, the evidence adduced by the applicant is not relevant, since it shows use only of the term ‘halloumi’ as a generic name designating a speciality cheese of Cyprus, but not as an EU collective mark. Those findings also apply as regards the intensity of the use in the United Kingdom and in Cyprus, and even in Greece. Furthermore, the conclusions which the applicant sought to draw from the distinctiveness of the earlier mark as an EU collective mark run counter to the findings of the Court that the term ‘halloumi’ designates a type of Cypriot cheese, as set out in the judgment of 7 October 2015, Cyprus v OHIM (XAΛΛOYMI and HALLOUMI) (T‑292/14 and T‑293/14, EU:T:2015:752).

16 Recognition of a certain degree of distinctiveness in the earlier mark by virtue of the case-law arising from the judgment of 24 May 2012, Formula One Licensing v OHIM (C‑196/11 P, EU:C:2012:314) does not prevent the Board of Appeal from finding that that distinctiveness is weak, rather than average or high, and, in any event, that would be irrelevant to any similarity between the marks at issue connected with the presence in the contested mark of a weakly distinctive and therefore non-dominant element which, moreover, is the sole element forming the earlier mark.

17 The Board of Appeal also found 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.

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

20 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. That plea consists of four parts. Firstly, the applicant complains that the Board of Appeal wrongly assessed the results of the visual, conceptual and phonetic comparisons of the earlier mark from the perspective of relevant consumers of the earlier mark. 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 EU 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. Fourthly, the Board of Appeal failed correctly to assess the likelihood of confusion.

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

The first part, alleging an incorrect assessment of the similarity of the signs

22 As a preliminary point, the applicant sets out certain characteristics of EU collective marks, which are capable of affecting the assessment of the likelihood of confusion, that is to say, the fact that they never indicate a single commercial origin and that their distinctiveness is not diminished by the designation of a geographical origin, such designation being required, however, to leave open the possibility for any person whose goods or services come from the geographical area concerned to become a member of the association holding the marks at issue and to use them. The applicant emphasises the importance for the Court to maintain a distinction between certification marks, collective marks and individual EU trade marks.

23 With regard to the comparison of the signs at issue, the applicant submits that, in order to find that there was no similarity, the Board of Appeal must have made a comparison on the basis of a dominant element of the mark applied for, which was possible only if all the other elements were insignificant, in particular the term ‘halloumi’, which should have been removed from the comparison. However, although the Board of Appeal could rightly take the view that the elements ‘papouis dairies ltd’ and ‘since 1967’ were insignificant having regard to their size and their position in the mark applied for, that conclusion is absurd as regards the term ‘halloumi’.

24 At the visual level, the Board of Appeal, in the view of the applicant, failed to take into consideration the prominence and distinctive character of the word ‘halloumi’, while the figurative element ‘pap’ and the term ‘papouis’, in this case a Greek or Cypriot patronym, are merely used as a marker describing the commercial origin of the goods, placed beside the EU collective mark HALLOUMI. The term ‘halloumi’, as the prominent element of the contested mark, should have been taken into account by the Board of Appeal in its analysis of the visual similarity.

25 On the phonetic level, the Board of Appeal, taking as its basis the difference in the number of syllables of which the signs at issue are composed, greatly distorted the facts by holding that there was no similarity between those signs, whereas they had in common the element ‘halloumi’, consisting of three syllables.

26 On the conceptual level, the Board of Appeal failed to take into consideration the meaning of the earlier mark in the eyes of consumers and consumers’ understanding of the contested mark. The fact that the term ‘halloumi’ designates a ‘type of cheese from Cyprus’ is entirely coherent with the nature and function of an EU collective mark. Furthermore, the fact that the term ‘halloumi’ is not a geographically descriptive term does not authorise the Board of Appeal to find that the rules for use of the earlier mark, in that they require the product to be manufactured in Cyprus and to comply with the regulations governing its composition and qualities, makes the mark less distinctive to a certain extent. The Board of Appeal was also incorrect to hold that the extensive evidence which was adduced merely show that the earlier mark HALLOUMI is generic.

27 EUIPO responds that it does not share the applicant’s view that the finding of a lack of similarity of the signs at issue, as set out in the contested decision, could arise only from a comparison based on a dominant element in the mark applied for, with the result that all the other elements were regarded as insignificant. On the contrary, the comparison was made by taking account of the overall impression produced by the signs at issue, and the presence of the word ‘halloumi’ in each of the marks, in accordance with the case-law of the Court. However, some features of the mark applied for, in particular the presence in that mark of the elements ‘pap’ and ‘papouis’ and its figurative stylisation, precluded the signs at issue, looked at in their entirety, being found to be similar.

28 EUIPO, which cites in that respect the case-law arising from three cases, adds that the presence of a sequence of letters common to the marks at issue does not automatically mean that those marks are similar, since the final finding on similarity depends in particular on the overall impression produced by those marks.

29 With regard to the phonetic comparison, the Board of Appeal was correct to rule out any similarity between the signs at issue, since the common syllables, which correspond to the word ‘halloumi’, are preceded in the mark applied for by three syllables which are without equivalent in the earlier mark and which, in addition, appear at the start of the mark, so that they are likely to attract more attention from the public. Thus, the signs at issue are sufficiently different to exclude the public perceiving them as similar.

30 With regard to the conceptual comparison, EUIPO states that it supports the Board of Appeal’s reasoning that, although the word ‘halloumi’ designates a type of Cypriot cheese, no argument can be drawn from the presence of that term in a mark in the context of the application of Article 8(1)(b) of Regulation No 207/2009, which is consistent with the principle of a comparison of the signs based on the overall impression produced by them, taking account, in particular, of their distinctive and dominant components. In addition, the Court has previously held that a term forming part of a complex mark could be perceived differently according to whether it was used alone or in combination with other elements.

31 With regard to the distinctiveness of the earlier mark, although it is true that it does not form part of the analysis of the similarity of the marks at issue and, in any event, assessment of it cannot lead to a denial of its existence, that does not prevent the Board of Appeal from finding that the term ‘halloumi’ describes in each of the marks at issue the goods designated by them and that, accordingly, those marks are dissimilar not only conceptually but also visually and phonetically, having regard to the principle that the comparison of the marks rests on the overall impression which they produce.

32 The intervener states that, in accordance with the case-law of the Court, the term ‘halloumi’ should be regarded as weakly distinctive, since it corresponds to the name of a specific cheese coming from Cyprus and that it has a descriptive meaning.

33 The marks at issue are totally different, having regard to the presence of the term ‘papouis’ in the mark applied for, included within it in the expression ‘pap papouis’. That term has no descriptive meaning and allows identification of the goods designated by that mark, unlike the term ‘halloumi’, which merely enables the customer to understand of what the goods in question consist. The expression ‘pap papouis’ should be regarded as the dominant element in the mark applied for, the singularity of which is reinforced by its design and the additional information on the manufacturer and its long-standing presence on the market as provided by the word elements ‘papouis dairies ltd’ and ‘since 1967’. In addition, the term ‘halloumi’, including as an EU collective mark, does not have pronounced distinctive character and does not enable authorised users to be distinguished from those which are not so authorised.

34 According to the intervener, the Board of Appeal validly took the view, in paragraph 26 of the contested decision, that the term ‘halloumi’ was descriptive and that the public would not perceive it as a collective mark or as a mark enabling authorised users from those which are not so authorised. Furthermore, the applicant does not show that the expression ‘pap papouis’ or that the term ‘papouis’ as a Greek or Cypriot patronymic would be used as a mark describing the origin of the goods at issue rather than as a distinctive element and it is not possible to make such a deduction in the light of the terms of Article 3 of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (OJ 2015 L 336, p. 1).

35 The intervener submits that there is no similarity between the signs at issue and, accordingly, no likelihood of confusion, which is confirmed by a separate comparison of them leading to a finding of no visual, phonetic or conceptual similarity. The presence of the term ‘halloumi’ in the mark applied for does not affect its visual aspect, while the element ‘pap papouis’ is visually dominant, both in its size and the graphic element which increases its dominance. Phonetically, the difference arises from the different number of syllables in each of the signs at issue. Finally, conceptually, the applicant’s arguments are not substantiated and do not enable a finding of similarity between those signs to be made.

36 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, account being taken, in particular, of their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

37 For the purposes of assessing the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods for which the mark has been registered (judgments of 13 June 2006, Inex v OHIM — Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35, and of 13 December 2007, Cabrera Sánchez v OHIM — Industrias Cárnicas Valle (el charcutero artesano), T‑242/06, not published, EU:T:2007:391, paragraph 51).

38 With regard to the assessment of the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the complex mark (judgments of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35, and of 8 February 2007, Quelle v OHIM — NARS Cosmetics (NARS), T‑88/05, not published, EU:T:2007:45, paragraph 58).

39 The assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited).

40 It is only if all the other components of the mark are insignificant that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components of the mark are insignificant in the overall impression created by that mark. Moreover, the fact that an element is not insignificant does not mean that it is dominant, just as the fact that an element is not dominant in no way means that it is insignificant (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraphs 43 and 44).

41 It should also be noted that where some elements of a trade mark are descriptive of the goods and services in respect of which that mark is protected or of the goods and services covered by the application for registration, those elements are recognised as having only a weak, or even very weak, distinctive character (see, to that effect, judgments of 12 September 2007, Koipe v OHIM — Aceites del Sur (La Española), T‑363/04, EU:T:2007:264, paragraph 92, and of 13 December 2007, el charcutero artesano, T‑242/06, not published, EU:T:2007:391, paragraph 52 and the case-law cited). Most often, it will be possible to recognise those elements as having distinctive character only because of their combination with the other elements of the mark. Owing to their weak, or even very weak, distinctive character, descriptive elements of a trade mark are not generally regarded by the public as being dominant in the overall impression conveyed by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on consumers and to be remembered by them (see judgment of 13 December 2007, el charcutero artesano, T‑242/06, not published, EU:T:2007:391, paragraph 53 and the case-law cited). That does not mean, however, that the descriptive elements of a mark are necessarily insignificant in the overall impression conveyed by that mark. In that regard, it is appropriate, in particular, to ascertain whether other elements of the mark are likely to dominate, alone, the image of the mark which the relevant public will remember (judgment of 20 September 2016, Excalibur City v EUIPO — Ferrero (MERLIN’S KINDERWELT), T‑566/15, not published, EU:T:2016:517, paragraph 28).

42 In the present case, the Board of Appeal, in paragraph 16 of the contested decision, analysed the mark applied for. It noted that it was a complex sign in colour which included the words ‘papouis’ and ‘halloumi’, presented on two lines, in outline letters of roughly equal font size and that, above those letters, there was a combination of what could be interpreted as being a series of the three letters ‘p’, ‘a’ and ‘p’, the last of those letters being mirrored, on a dark blue background with a border composed of a golden or yellow margin. The expressions ‘papouis dairies ltd’ and ‘since 1967’ are integrated into that combination, in a much smaller font which makes them hardly perceptible.

43 The Board of Appeal noted that, on a visual level, the word elements ‘pap’, ‘papouis’ and ‘halloumi’ were equally dominant, in the sense of eye-catching, as each other, while the other word elements, in this case ‘papouis dairies ltd’ and ‘since 1967’ could pass unnoticed. The word ‘papouis’ has inherent distinctiveness, irrespective of the fact that it is a personal name of Greek or Cypriot origin. The element ‘pap’ is also distinctive, irrespective of the fact that it refers to the first three letters of the element ‘papouis’.

44 According to the Board of Appeal, the marks at issue are therefore not similar, since the majority of the distinctive elements of the mark applied for have no resemblance to the earlier mark and there is no need, in the light of the case-law, to isolate a single element of the mark applied for to compare it with the sole element of the earlier mark, since all the other elements forming the mark applied for are just as, if not more, important and dominant.

45 In the first place, with regard to the determination of the distinctive element(s) making up the mark applied for, it must be noted that, where a mark consists of word and figurative elements, the word element of the mark is, in principle, more distinctive than the figurative element, because the average consumer will more readily refer to the goods in question by citing their name than by describing the figurative element (see judgment of 9 September 2008, Honda Motor Europe v OHIM —Seat (MAGIC SEAT), T‑363/06, EU:T:2008:319, paragraph 30 and the case-law cited).

46 In the present case, it appears that the figurative elements forming the mark applied for are not very original, in particular the dark blue background aged with a golden or yellow border on which appears the element ‘pap’, and that they mainly contribute to the enhancement of the word elements which compose the mark and have more distinctive character. The Board of Appeal was able to take the view, without committing any error, in paragraph 18 of the contested decision, that, among the word elements, the term ‘papouis’ was inherently fully distinctive, irrespective of the fact that it is perceived as a family name in certain parts of the European Union, such as Cyprus or Greece, family names having, in principle, inherent distinctiveness. The element ‘pap’ must also be regarded as distinctive, even though it is likely to be identified as the first three letters of the term ‘papouis’. In that regard, the fact that the last of the letters which it comprises is mirrored is an element likely to reinforce its distinctiveness. The distinctive character of those two word elements does not, however, appear to be particularly original and it may be regarded as being average.

47 The other word elements composing the mark applied for, namely ‘papouis dairies ltd’, ‘since 1967’ and ‘halloumi’, appear however very weakly distinctive since they are descriptive with regard to the goods at issue and, as regards the second, with regard to the legal form of the entity ‘papouis’ which markets the goods.

48 In the second place, with regard to the determination of the dominant element(s) composing the mark applied for, it appears that the elements ‘pap’, ‘papouis’ and ‘halloumi’, having regard in particular to their stylisation and their size, are the dominant elements of the mark applied for, as the Board of Appeal stated in paragraph 17 of the contested decision. The element ‘pap’, in that it is placed in the upper part of the mark and is written entirely in capital letters, is, furthermore, likely to have slightly greater dominance.

49 In the light of the principles of case-law recalled in paragraph 41 above, according to which the descriptive elements of a mark may play a certain role in the overall impression reduced by that mark, particularly if another element of the mark is unlikely alone to dominate the image of that mark, it cannot, however, be ruled out that it is necessary to take account of the presence of the term ‘halloumi’ in the overall impression produced by the mark applied for. In that regard, it must be noted that the Board of Appeal has not established that that overall impression was dominated by the single element ‘pap’, nor by that element associated with the term ‘papouis’, but, on the contrary, it took the view that the term ‘halloumi’ was one of the three dominant word elements of the mark applied for.

50 In order to explain the approach of the Board of Appeal in taking the view that the common presence of the word ‘halloumi’ in the marks at issue was not likely to give to similarity, EUIPO refers to the solution adopted in the judgments of 20 September 2016, MERLIN’S KINDERWELT (T‑566/15, not published, EU:T:2016:517); of 14 October 2009, Ferrero v OHMI — Tirol Milch (TiMi KiNDERJOGHURT) (T‑140/08, EU:T:2009:400); and of 4 March 2015, Three-N-Products v OHIM — Munindra (PRANAYUR) (T‑543/13, not published, EU:T:2015:134).

51 However, in those three judgments, the word element which is common to the earlier marks and the disputed marks, namely ‘kinder’ in the first two cases and ‘ayur’ in the third, was incorporated into a word element, namely ‘kinderwelt’, ‘kinderjoghurt’ and ‘pranayur’, which could be considered as constituting an inseparable unit (judgment of 20 September 2016, MERLIN’S KINDERWELT, T‑566/15, not published, EU:T:2016:517, paragraph 42).

52 In the present case, the configuration of the earlier mark is different, however, since the word ‘halloumi’ does not form part of a larger word element, or even of a series of words, and so it retains its autonomy and, consequently, its visibility to the public. Contrary to EUIPO’s submissions, the solution arising from the three judgments to which it refers cannot be transposed to the present case and it cannot be ruled out that, in the overall impression produced by the mark applied for, the word ‘halloumi’ can be taken into consideration.

53 The Board of Appeal found, in paragraphs 20 and 21 of the contested decision, That the signs at issue were visually different since, even if all the elements of the contested sign were to be given identical weight, they would coincide only in the word element ‘halloumi’, placed in third position in that sign, and in that the figurative presentation of that mark, although frankly not in itself very distinctive, strengthens the differences from the earlier mark.

54 That conclusion of the Board of Appeal cannot be followed, in particular in the light of its findings, as set out in paragraph 17 of the contested decision, that the elements ‘pap’, ‘papouis’ and ‘halloumi’ are equally apparent and that they are also equally dominant, in the sense that they are ‘eye-catching’. Indeed, the word element ‘halloumi’, situated in third position in that sign, is also situated in a central position, written in white letters surrounded by blue and gold, enabling it to be perceived easily and immediately. The figurative elements of the mark applied for do not alter that impression, because they are not very original and do not modify the visibility of the word element ‘halloumi’.

55 In those circumstances, it must be concluded that there is a similarity between the signs at issue due to the presence of the word ‘halloumi’ in the mark applied for, but as it is the sole component of the earlier mark, that similarity must be regarded as weak.

56 On the phonetic level, the Board of Appeal found that the signs at issue were also different. It noted, in paragraphs 22 and 23 of the contested decision, that, in the sign applied for, the expressions ‘papouis dairies ltd’ and ‘since 1967’ would not be pronounced, unlike the expression ‘pap papouis dairies’ which, however, has no resemblance to the word ‘halloumi’ which forms the earlier mark, because it is clearly longer, includes distinctive elements which have no equivalent in the earlier mark and coincides with that mark only at the level of its final part, to which generally less attention is paid. In its view, that finding would remain unchanged if the view had to be taken that the third letter of the element ‘pap’ should not be pronounced.

57 Nor can that finding of the Board of Appeal’s finding be followed. In fact, it cannot be excluded that part of the relevant public reads the three dominant elements which form the mark applied for in full. On that basis, despite the length of the expression ‘pap papouis halloumi’, the first to the terms of which have no equivalent in the earlier mark, and the final position occupied by the word ‘halloumi’, the view must be taken that the fact that the earlier mark is contained within the mark applied for inevitably results in a phonetic similarity when the three elements forming the expression ‘pap papouis halloumi’ are pronounced. The degree of that similarity, having regard to the difference in the number of syllables in each of the signs, must be regarded as low.

58 On the conceptual level, the Board of Appeal also concluded in paragraph 24 of the contested decision that the signs at issue are not similar. The mere presence of the term ‘halloumi’ in the mark applied for is not such as to give rise to such similarity. The Board of Appeal highlights the inconsistency of the applicant’s assertion that the word ‘halloumi’ is neither used nor perceived in a generic context as designating a type of cheese, while the court has held the contrary in the judgment of 7 October 2015, XAΛΛOYMI and HALLOUMI (T‑292/14 and T‑293/14, EU:T:2015:752).

59 That analysis by the Board of Appeal does not appear to be accurate. Although it is undeniable that the earlier mark conveys the concept of a type of Cypriot cheese, in this case halloumi cheese, as the Court has already held in the judgment of 7 October 2015, XAΛΛOYMI and HALLOUMI (T‑292/14 and T‑293/14, EU:T:2015:752, paragraph 24), it cannot be excluded that, to some extent, the mark applied for conveys a similar concept. Indeed, although, among the three words which appear in that mark, ‘pap’, ‘papouis’ and ‘halloumi’, the last is only very weakly distinctive, it is precisely because it is linked with the goods designated by the mark applied for, but that does not, however, mean that it cannot be considered individually by the relevant public. It cannot therefore be held that there is a lack of conceptual similarity. The elements ‘pap’ and ‘papouis’ are indeed those in the mark applied for which are both distinctive and dominant, but the concept conveyed by the earlier mark in so far as it includes the word ‘halloumi’, in respect of which it cannot be totally ruled out that it may be considered individually, must lead to a finding that there is a low degree of conceptual similarity.

60 Thus, contrary to the finding in the contested decision, it must be held that the signs at issue have a low degree of visual, phonetic and conceptual similarity.

61 The Board of Appeal was therefore incorrect to find that there was no similarity between the signs at issue, which made it unnecessary to complete the overall comparison of those signs taking into account the interdependence of all relevant factors.

62 In that regard, it must be noted, as, moreover, EUIPO accepts (see paragraph 31 above), that the reasoning contained in the contested decision concerning the assessment of the distinctiveness of the earlier mark as an EU collective mark is irrelevant to the assessment of the lawfulness of the contested decision, since it has no effect on the finding of the Board of Appeal as regards the lack of similarity of the marks at issue.

63 In those circumstances, the contested decision must be annulled without it being necessary to examine the second, third and fourth parts of the plea in law.

64 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.

65 Since EUIPO has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant.

66 In accordance with Article 138(3) of the Rules of Procedure, the intervener must bear its own costs.

1. Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 3 August 2017 (Case R 2782/2014-4) concerning opposition proceedings between the Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi and Papouis Dairies Ltd;

2. Orders EUIPO to bear its own costs and to pay those incurred by the Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi;

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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(Papouis Halloumi) (EU trade mark - Judgment) [2018] EUECJ T-702/17 (23 November 2018) URL: http://www.bailii.org/eu/cases/EUECJ/2018/T70217.html Cite as: ECLI:EU:T:2018:832, EU:T:2018:832, [2018] EUECJ T-702/17

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