Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO - Fontana Food (GRILLOUMI) (EU trade mark - Judgment) [2023] EUECJ T-168/22 (03 May 2023)

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(EU trade mark – Opposition proceedings – Application for the EU word mark GRILLOUMI – Earlier EU collective word mark HALLOUMI – Relative grounds for refusal – Likelihood of confusion – Detriment to reputation – Article 8(1)(b) and Article 8(5) of Regulation (EC) No 207/2009 (now Article 8(1)(b) and Article 8(5) 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 and C. Milbradt, lawyers,

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

composed of F. Schalin (Rapporteur), President, P. Škvařilová-Pelzl and I. Nõmm, 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 Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 3 January 2022 (Case R 1612/2021-5) (‘the contested decision’).

2 On 25 October 2016, Fontana Food AB filed an application with EUIPO for registration of the word sign GRILLOUMI as an EU trade mark.

3 The mark applied for covered services in Class 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, corresponding to the following description: ‘Services for providing food and drink; coffee-shop services; restaurants’.

4 On 2 February 2017, the applicant filed a notice of opposition to registration of the mark applied for in respect of the services referred to in paragraph 3 above.

5 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’.

6 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) (now Article 8(1)(b) and Article 8(5) of 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)).

7 On 15 May 2018, the Opposition Division rejected the opposition and ordered the applicant to pay the costs.

8 On 13 July 2018, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.

9 By decision of 29 May 2019 (Case R 1355/2018-4), 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. The Fourth Board of Appeal found, first, that the goods and services covered by the marks at issue were dissimilar, with the result that the opposition was unfounded with regard to Article 8(1)(b) of Regulation No 207/2009 and, secondly, that the applicant had failed to prove neither enhanced distinctiveness, acquired through use, and, a fortiori, reputation of the earlier mark, nor, even if only prima facie, that there was a future risk, which was not hypothetical, of unfair advantage being taken of the repute or the distinctive character of the earlier mark or of detriment to its repute or its distinctive character, with the result that the opposition, in so far as it was based on Article 8(5) of Regulation No 207/2009, also had to be rejected as being unfounded.

10 On 13 September 2019, the applicant filed a notice of appeal with the Court against the decision of the Fourth Board of Appeal of 29 May 2019.

11 By judgment of 21 April 2021, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO – Fontana Food (GRILLOUMI) (T‑555/19, not published, EU:T:2021:204), the Court annulled the decision of the Fourth Board of Appeal of 29 May 2019. It found, in essence, that the Fourth Board of Appeal had erred in finding that the goods and services covered by the marks at issue were dissimilar, which had led it to wrongly conclude that one of the cumulative conditions for a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 to exist was not satisfied. In those circumstances, the Fourth Board of Appeal was required, as it had done in the decision of 29 May 2019, to carry out an examination of the other factors that are capable of contributing towards the existence of such a likelihood of confusion, before, as the case may be, carrying out a global assessment of that likelihood of confusion.

12 Following the annulment of the decision of the Fourth Board of Appeal of 29 May 2019, the appeal before EUIPO was reassigned to the Fifth Board of Appeal which adopted the contested decision whereby it dismissed the appeal and ordered the applicant to pay an amount of EUR 850 to Fontana Food for both the opposition and appeal proceedings.

13 The Fifth Board of Appeal found, in essence, that the judgment of 21 April 2021, GRILLOUMI (T‑555/19, not published, EU:T:2021:204), had led to the annulment, with ex tunc effect, of the decision of the Fourth Board of Appeal. It therefore examined again the two pleas for annulment of the decision of the Opposition Division, alleging, respectively, infringement of Article 8(1)(b) of Regulation No 207/2009 and infringement of Article 8(5) of that regulation.

14 First, as regards the assessment of a likelihood of confusion under Article 8(1)(b) of Regulation No 207/2009, the Board of Appeal took the view that the services and goods covered by the marks at issue were aimed at the average consumer belonging to the general public of the European Union, who generally, when purchasing them, displayed an average level of attention. It contended that those services and goods had a low degree of similarity. In addition, it was of the opinion that the marks at issue displayed a below-average visual and phonetic degree of similarity and that there was a weak conceptual link. It found that the earlier mark, on account of its highly allusive character as a reference to a cheese from Cyprus, had an inherently weak distinctive character without showing that it had enhanced distinctiveness, acquired through use. The Board of Appeal concluded that, in the light of the relevant factors in the present case, in particular the weak distinctive character of the earlier mark, there was no likelihood of confusion between the marks at issue.

15 Secondly, as regards the assessment of the risk of unfair advantage being taken of the distinctive character or the repute of the earlier mark or of detriment to its distinctive character or repute pursuant to Article 8(5) of Regulation 2017/1001, the Board of Appeal was of the opinion that it had not been shown that the earlier mark had a reputation, with the result that one of the cumulative conditions necessary for the application of the provision in question was absent.

18 In view of the date of submission of the application for registration at issue, namely 25 October 2016, 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.

19 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 in their written pleadings to Article 8(1)(b), Article 8(5) or Article 74(2) of Regulation 2017/1001 must be understood as referring to Article 8(1)(b), Article 8(5) or Article 66(2) of Regulation No 207/2009, which are identical in terms of their wording.

20 In support of the action, the applicant relies, in essence, on two pleas in law.

21 The first plea alleges infringement of Article 8(1)(b) of Regulation No 207/2009 and comprises two parts.

22 By the first part of the first plea, the applicant argues that the Board of Appeal carried out an incorrect assessment of the distinctive character of the earlier mark, both because it erred in applying that criterion to a collective mark and because it treated the earlier mark as a mere generic term rather than regarding it as a duly registered and prima facie valid collective mark.

23 By the second part of the first plea, the applicant claims that the Board of Appeal erred in concluding that there was no likelihood of confusion between the marks at issue. According to the applicant, that conclusion is illogical in the light of, in particular, the Board of Appeal’s findings concerning the similarity of the signs at issue, as regards especially their meaning and the effect of the prefix ‘grill’ in the mark applied for.

24 The second plea alleges infringement of Article 8(5) of Regulation No 207/2009. In that respect, the applicant relies on an infringement of the right to a fair trial and on a failure to state reasons for the contested decision, in so far as the Board of Appeal arbitrarily dismissed the appeal without providing reasons inasmuch as it was based on an infringement of Article 8(5) of Regulation No 207/2009, while disregarding the evidence which had been submitted in order to show the reputation of the earlier mark.

25 EUIPO contends that the two pleas of the action should be rejected as being unfounded.

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

26 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.

27 Where the earlier mark is an EU collective mark, 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).

28 Moreover, in the event of opposition by the proprietor of a collective mark, although, as a result, the essential function of that type of mark, as set out in Article 66(1) of Regulation No 207/2009 (now Article 74(1) of Regulation 2017/1001), must be taken into account in order to understand what is meant by 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 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).

29 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 September 2016, Sun Cali v EUIPO – Abercrombie & Fitch Europe (SUN CALI), T‑512/15, EU:T:2016:527, paragraph 45 and the case-law cited).

30 It is in the light of those considerations that it must be examined whether the Board of Appeal was right in finding that there was no likelihood of confusion on the part of the relevant public, within the meaning of Article 8(1)(b) of Regulation No 207/2009.

31 As regards the definition of the relevant public, in paragraph 23 of the contested decision, by referring to the grounds of the judgment of 21 April 2021, GRILLOUMI (T‑555/19, not published, EU:T:2021:204, paragraph 37), the Board of Appeal noted that the mark applied for covered commonly used services and that the earlier mark, for its part, was registered in respect of everyday consumer goods, namely cheese, and that those services and goods were all aimed at the general public, who generally, when purchasing them, displays an average level of attention. Furthermore, in paragraph 20 of the contested decision, the Board of Appeal correctly found, in the light of the principles referred to in paragraph 27 above and the fact that the earlier mark was an EU collective mark, that the relevant public was that of the whole of the European Union.

32 The findings of the Board of Appeal as regards the definition of the relevant public must be upheld, since the Court has already had occasion to rule on that point by a final decision and those findings are, moreover, not disputed by the parties.

33 As regards the comparison of the goods and services covered by the marks at issue, in paragraph 26 of the contested decision, by referring to the grounds of the judgment of 21 April 2021, GRILLOUMI (T‑555/19, not published, EU:T:2021:204, paragraph 57), the Board of Appeal found that, on account of a complementary connection, there was a low degree of similarity between the services covered by the mark applied for and the goods covered by the earlier mark.

34 The findings of the Board of Appeal must be upheld as regards the comparison of the goods and services covered by the marks at issue, to the extent that those findings correspond to the findings already carried out by the Court and that they are also not disputed by the parties.

35 It must be borne in mind that, in 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, paragraphs 70, 72 and 73), the Court of Justice noted that the degree of distinctiveness of an earlier mark determines the extent of the protection conferred by it and that EU collective marks must be distinctive, whether intrinsically or through use, since Article 66(2) of Regulation No 207/2009 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 incumbent on the association 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.

36 In that regard, the Court has already held that 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).

37 Furthermore, although, by analogy with the solutions adopted in the judgments of 24 May 2012, Formula One Licensing v OHIM (C‑196/11 P, EU:C:2012:314, paragraphs 43 to 47), and of 5 October 2020, Eugène Perma France v EUIPO – SPI Investments Group (NATURANOVE) (T‑602/19, not published, EU:T:2020:463, paragraph 65), in respect of validly registered earlier rights such as a national trade mark or an international registration designating the European Union, an EU collective mark should be acknowledged as having a certain degree of distinctiveness merely because it has been registered, it is for the proprietor of such a mark to demonstrate the level of distinctiveness since he or she intends to rely on that distinctiveness in opposition 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).

38 As regards the inherent distinctive character of the earlier mark, in paragraphs 46 and 52 of the contested decision, the Board of Appeal noted that the Court had repeatedly held that the inherent distinctive character of the word ‘halloumi’ was weak, because it described the type and origin of a speciality cheese from Cyprus, with the result that, in essence, the earlier mark which consists of that single word, displayed a highly allusive character as a reference to that type of cheese and, consequently, an inherently weak distinctive character.

39 In addition, in paragraph 44 of the contested decision, the Board of Appeal listed all the evidence produced by the applicant before the Opposition Division, intended to show enhanced distinctiveness of the earlier mark, acquired through use, as well as its reputation. In paragraphs 48 to 51 of the contested decision, the Board of Appeal carried out an analysis of that evidence and found that most of it referred to halloumi cheese, but very little to the earlier mark and that, consequently, the applicant had not demonstrated an enhanced distinctive character, acquired through use, of the earlier mark, or even a reputation of that mark.

40 In the present case, first of all, it is common ground that the earlier mark consists exclusively of the word ‘halloumi’. That word corresponds to the generic name of a type of cheese produced in Cyprus. Therefore, in view of the descriptive character of the single word of which it is composed, the earlier mark has an inherent distinctive character which must be regarded as weak.

41 In that regard, in paragraph 71 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), the Court of Justice observed that the distinctive character of the EU collective word mark HALLOUMI, which also corresponds to the earlier mark in the present case, did not have to be assessed in a particular way on the ground that it was a collective mark and, in paragraph 76 of that judgment, that there was no need to call into question the assessment made by the General Court in the 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, EU:T:2018:594), that that mark’s degree of distinctiveness had been regarded as low. In those circumstances, the Board of Appeal, when assessing the inherent distinctiveness of the earlier mark, correctly referred to decisions of the Court which concerned earlier rights also composed of the single word ‘halloumi’ in opposition or cancellation proceedings, since the assessment of the distinctiveness of the rights in question fulfilled criteria which could be perfectly transposed to the present case.

42 Contrary to what is claimed, in essence, by the applicant, the Board of Appeal’s approach does not amount to denying the very existence of the distinctive character of a validly registered mark, or to disregarding the rights which it confers on its proprietor, by unduly placing on the proprietor the burden of proving the inherent distinctive character of that mark, but merely to finding that it cannot confer more rights than those which it objectively derives from its distinctive character. Moreover, it must be borne in mind that, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion, in particular where the goods or services in question are identical and the signs at issue are similar (see judgment of 13 April 2011, Sociedad Agricola Requingua v OHIM – Consejo Regulador de la Denominación de Origen Toro (TORO DE PIEDRA), T‑358/09, not published, EU:T:2011:174, paragraph 45 and the case-law cited).

43 Next, although it is correct that, as the applicant states, the Board of Appeal mentioned, in paragraph 29 of the contested decision, that ‘for the purpose of assessing the distinctive character of an element of a mark, an assessment [had to] be made of the greater or lesser capacity of that element to identify the goods for which the mark [had been] registered as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings’, it must be stated that those considerations are part of the analytical comparison of the elements of which the marks at issue consist.

44 It is thus a question of assessing the distinctive character of the elements which, taken individually, make up a mark, in order to identify, among those elements, the elements which play a predominant role in the comparison with another mark. Contrary to what the applicant claims, that step consists solely in comparing the marks at issue in the light of all the elements of which they consist (see paragraph 48 below) but not in any way in denying the specificity of EU collective marks inasmuch as, in accordance with Article 66(1) of Regulation No 207/2009, their function is to distinguish the goods or services of the members of the association which is the proprietor of the mark from those of other undertakings. In that respect, it must be recalled that the case-law establishing the criteria, in the light of which it must be specifically assessed whether a likelihood of confusion exists, is applicable to cases concerning an earlier collective mark (see paragraph 27 above).

45 Lastly, it must be held that there is nothing in the applicant’s arguments capable of calling into question the finding, set out in paragraph 50 of the contested decision, that, among the evidence produced by the applicant, only some of it refers to the earlier mark as a collective mark, without, moreover, mentioning the applicant or one of its members. The examination of the file produced before the Board of Appeal shows that the other evidence which has been provided contains almost only references to the word ‘halloumi’ as a speciality cheese from Cyprus. That evidence does not therefore make it possible to take the view that consumers, faced with the earlier mark, will associate it with something other than halloumi cheese, in view of the fact that it refers to the generic name of that type of cheese, rather than to the commercial origin of the goods in so far as they come 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.

46 It must also be pointed out, as regards the need to protect EU collective marks which, under the provisions of Article 66(2) of Regulation No 207/2009, are expressly authorised to refer to the geographical origin of the goods or services to which they relate, that the Court of Justice noted, in paragraph 74 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), that, even if it were assumed that the EU collective mark HALLOUMI implicitly refers to the Cypriot geographical origin of the goods covered, it must nevertheless fulfil its essential function, namely to distinguish the goods or services of the members of the association that owns it from those of other undertakings. The generic nature of the word ‘halloumi’, since that word makes up by itself the earlier mark, necessarily limits the effects of that mark as regards that function.

47 In those circumstances, the first part of the first plea must be rejected as being unfounded and it must be held that the Board of Appeal was right to find that, on account of its descriptive meaning, the earlier mark had a weak inherent distinctive character and that there was nothing to support the finding that it had acquired enhanced distinctiveness through use on account of its long-standing use.

48 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. 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 that 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).

49 It must be observed that the earlier mark consists of the word ‘halloumi’, whereas the mark applied for consists of the word ‘grilloumi’.

50 As regards the visual comparison of the signs at issue, it is stated, in paragraph 34 of the contested decision, that, even though the word ‘grilloumi’ does indeed correspond to a combination of the word ‘grill’ and the letter group ‘oumi’, a letter group which is also present at the end of the word ‘halloumi’, it is a word with a certain degree of originality, although low, but in which the word ‘grill’ will not be disregarded by the public, in particular because the beginning of a word mark is more likely to attract the attention of the consumer than the rest of the mark. In paragraph 35 of the contested decision, the Board of Appeal found that the signs at issue were visually similar to a below-average degree.

51 In the present case, it is appropriate to uphold the assessment of the Board of Appeal that the word ‘grilloumi’ corresponds to a combination of the word ‘grill’ and the letter group ‘oumi’, since that letter group is also present at the end of the word ‘halloumi’.

52 Likewise, the Board of Appeal’s finding that the word ‘grilloumi’ has a low degree of originality must be upheld, to the extent that it is composed of the word ‘grill’, which will be known to all of the relevant public, inasmuch as that word exists as such or in a similar manner in many EU languages to describe an appliance or a mode of cooking on a grill, whose use is very widespread throughout the territory of the European Union. In addition, the attention of the relevant public will primarily be directed towards the word ‘grill’ in the beginning of the mark applied for, bearing in mind that the beginning of a word mark is more likely to attract the attention of the consumer than the rest of that mark (see, to that effect, judgment of 8 December 2021, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO – Fontana Food (GRILLOUMI BURGER), T‑595/19, not published, EU:T:2021:866, paragraph 88). In the light of those considerations, and notwithstanding the presence of the letter group ‘oumi’ in each of the signs at issue, it must be held that the degree of visual similarity between those signs is low.

53 That finding is consistent with that of the Board of Appeal that the signs at issue display a visual degree of similarity which is below average. Since the degree of similarity between the signs can be low, average or high, the fact that the signs at issue display a visual ‘below-average degree of similarity’ must be understood as necessarily referring to a below-average, that is to say, low degree of similarity. The grounds in paragraph 34 of the contested decision make it possible to understand the reasoning which led to that finding. In that regard, it must be observed that the Board of Appeal expressly referred to paragraph 59 of the judgment of 25 September 2018, Cyprus v EUIPO – M. J. Dairies (BBQLOUMI), (T‑384/17, not published, EU:T:2018:593), in which the Court had taken the view that, in the figurative mark, consisting in particular of the word element ‘bbqloumi’, more weight had to be attached to the beginning of that element, in the present case ‘bbq’, rather than its ending ‘loumi’, with the result that the sign at issue, which coincided with the sign HALLOUMI only in that ending, displayed a low degree of visual similarity with that sign.

54 As regards the phonetic comparison of the signs at issue, the Board of Appeal also found, in paragraphs 36 and 37 of the contested decision, that they displayed a below-average degree of similarity, in so far as they each contained three syllables, of which the last two were identical, but of which the first was very different and that, phonetically, the attention of the relevant public was usually directed in particular towards the beginning of a word sign.

55 The Board of Appeal’s analysis which is based on a separation of the syllables of the signs at issue, appears as being correctly reasoned and well founded. The identity inferred by the presence of the two identical syllables at the end of the words of which the signs at issue consist is very significantly diminished by the presence of the different first syllable at the beginning of each of the signs, whose pronunciation makes it possible to distinguish them very clearly.

56 Consequently, like the visual comparison, it must be held that the finding of a below-average degree of similarity, as carried out by the Board of Appeal, must be understood as referring to a low degree of similarity between the signs at issue.

57 Conceptually, the Board of Appeal found, in paragraphs 38 and 39 of the contested decision, that the signs at issue had a weak link, inasmuch as the mark applied for could, at least for part of the relevant public, allude to grilled halloumi cheese and that, for those consumers, the signs had a certain conceptual link, which was however considerably diminished by the fact that the reference to the cheese produced in Cyprus was highly allusive and weak with respect to the goods and services at issue.

58 It should be noted that, in accordance with the finding of the Board of Appeal, the mark applied for is likely, at least for the consumers who are familiar with that product, to refer to the concept of grilled halloumi cheese. As for the earlier mark, it consists exclusively of the word ‘halloumi’, which is the generic name of a type of cheese produced in Cyprus. In those circumstances, it must be held that the Board of Appeal properly set out the grounds enabling it to find that the signs at issue, in so far as they were likely to refer to halloumi cheese, had a weak conceptual link, which corresponds to the finding of a low degree of conceptual similarity.

59 In the light of the foregoing findings, it appears that the Board of Appeal did not make an error in concluding that the signs at issue should be regarded, in essence, as displaying a low degree of visual, phonetic and conceptual similarity. In addition, contrary to what the applicant claims, the grounds setting out the finding carried out on that basis have been clearly stated by the Board of Appeal, which cannot be criticised for having failed to fulfil its obligation to state the reasons for the contested decision.

60 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 by those marks. 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).

61 In the present case, it must be recalled that, in paragraph 56 and 58 of the contested decision, the Board of Appeal found that there was no likelihood of confusion between the marks at issue, on the ground that their similarity was not sufficiently significant to compensate for the weak similarity between the goods and services which they covered and, accordingly, to create a likelihood of confusion. In that respect, the Board of Appeal emphasised the low degree of distinctiveness of the earlier mark and the fact that, as regards the mark applied for, consumers would focus on the play on words relating to the presence of the element ‘ll’ of the word ‘grilloumi’, which referred both to the words ‘grill’ and ‘halloumi’.

62 First, as regards the factor concerning the similarity of the signs at issue, that factor is connected with the presence in each of those signs of the letter group ‘loumi’, which gives rise to a low degree of visual, phonetic and conceptual similarity.

63 Those findings must however be put into perspective with the fact that where the relevant public will be faced with the mark applied for, it will understand that mark as being a combination of the word ‘grill’ and the letter group ‘oumi’ (see paragraph 52 above), since its attention will be attracted more by the element ‘grill’, positioned at the beginning of the sign, than by its ending ‘oumi’.

64 The letter group ‘loumi’, which is the dominant element giving rise to the similarity of the signs at issue, will not therefore be perceived by the relevant public as a distinctive element of the mark applied for, since the attention of that public will primarily be directed towards the word ‘grill’ in the beginning of that mark, while the letter group ‘oumi’ will only weakly contribute to the distinctiveness of that mark, whereas the earlier mark, for its part, had only a weak inherent distinctiveness.

65 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), on account, in particular, of a similarity between the signs and between the goods or services covered (see, to that effect, judgment of 8 November 2016, BSH v EUIPO, C‑43/15 P, EU:C:2016:837, paragraph 44), 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).

66 In those circumstances, the low degree of similarity of the signs at issue is unlikely to contribute to the existence of a likelihood of confusion, since they only share the letter group ‘loumi’ which, as such, is not perceived by the relevant public as a distinctive element of the mark applied for and, in addition, the letter group ‘oumi’ will be perceived in the mark applied for by a large part of that public as being inherently weakly distinctive, inasmuch as that same public will understand it as a possible reference to halloumi cheese.

67 In addition, it must be held that the presence of the word ‘grill’ in the mark applied for was indeed taken into account in the comparison of the signs at issue but that, in itself, it does not constitute a factor likely to alter the findings of the Board of Appeal in respect of the assessment of the likelihood of confusion.

68 Secondly, according to the case-law, the degree of distinctiveness of the earlier mark, which determines the extent of the protection conferred by it, is one of the relevant factors which must be taken into account in the present case (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).

69 As regards the distinctiveness of the earlier mark, it cannot be assessed in a specific way on the ground that it is a collective mark and there is no need to call into question the Board of Appeal’s assessment that the degree of inherent distinctiveness of that mark is low (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 71 and 76).

70 In that respect, it should be noted, as has been stated in paragraph 48 above, that most of the evidence submitted by the applicant does not make it possible to take the view that consumers, faced with the earlier mark, will associate it with something other than halloumi cheese.

71 Thus, the degree of protection conferred by the earlier mark, having regard to its low degree of inherent distinctiveness, must itself be low.

72 Thirdly, it is necessary to take into consideration the fact that the services covered by the mark applied for display only a low degree of similarity with the goods covered by the earlier mark. On that basis, it should be borne in mind that those goods and services are everyday consumer goods and services, during the purchase of which the relevant public will display an average level of attention.

73 It could be inferred that there is a likelihood of confusion only if the relevant public was likely to be misled as to the commercial origin of the services covered by the mark applied for.

74 In the present case, that likelihood does not appear to be demonstrated, in so far as, faced with the mark applied for, the relevant public will not perceive the letter group ‘loumi’, but only ‘oumi’ as one the elements making up that mark which will be unlikely to attract the public’s attention in view of the secondary position it occupies in that mark. Consequently, the relevant public will not establish a link between the marks at issue, because, first, it will at most establish a link between the earlier mark and the goods it covers, namely halloumi cheese and, secondly, the marks at issue display, considered overall, only a low degree of similarity.

75 In view of all of the foregoing considerations, it must be held that, in the present case, the Board of Appeal was fully entitled to find that there was no likelihood of confusion. Therefore, the second part and, accordingly, the first plea must be rejected.

The second plea in law, alleging infringement of Article 8(5) of Regulation No 207/2009

76 Article 8(5) of Regulation No 207/2009 provides that upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2 thereof, the trade mark applied for is not to be registered where it is identical with, or similar to, the earlier trade mark and it is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, it has a reputation in the European Union and, in the case of an earlier national trade mark, it has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

77 For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation No 207/2009, a number of conditions must, therefore, be satisfied. First, the earlier trade mark and the mark applied for must be identical or similar. Secondly, the earlier trade mark must have a reputation in the European Union, in the case of an earlier EU trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Thirdly, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. As those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (see judgment of 31 May 2017, Alma-The Soul of Italian Wine v EUIPO – Miguel Torres (SOTTO IL SOLE ITALIANO SOTTO il SOLE), T‑637/15, EU:T:2017:371, paragraph 29 and the case-law cited).

78 In paragraph 62 of the contested decision, the Board of Appeal stated that the applicant had not shown that the earlier mark had a reputation, with the result that one of the cumulative conditions necessary for the application of Article 8(5) of Regulation No 207/2009 was not satisfied and that the opposition had to be rejected in so far as it was based on that provision.

79 In the present case, it must be noted from the outset that although the applicant claims that there was an infringement of the right to a fair trial, such as might arise from Article 47 of the Charter of Fundamental Rights of the European Union, the Court has ruled out the possibility of relying on that right before the Boards of Appeal of EUIPO, since proceedings before the Boards of Appeal are administrative and not judicial in nature (see judgment of 29 June 2022, Hochmann Marketing v EUIPO (bittorrent), T‑337/20, not published, EU:T:2022:406, paragraph 55 and the case-law cited).

80 The second plea must therefore be understood as solely alleging a failure to state reasons for the contested decision, inasmuch as the Board of Appeal purportedly dismissed the action without any reason, in so far as it was based on an infringement of Article 8(5) of Regulation No 207/2009 and it failed to take into consideration the evidence submitted by the applicant in order to establish the reputation of the earlier mark.

81 It must be held that, contrary to what the applicant claims, the Board of Appeal rightly decided to dismiss the action on the basis of Article 8(5) of Regulation No 207/2009 in finding that the condition relating to the reputation of the earlier mark was not satisfied, after having examined and analysed in detail, in paragraphs 44 and 48 to 51 of the contested decision, the evidence submitted by the applicant in order to establish both the enhanced distinctiveness of the earlier mark, acquired through use, and its reputation (see paragraph 39 above).

82 In that respect, the Board of Appeal observed that, among the various documents which had been produced, very few concerned HALLOUMI as an EU collective mark. It found that all of the other documents related to halloumi cheese as a speciality cheese produced in Cyprus and merely proved use of the word ‘halloumi’ in relation to that cheese, without it being possible to infer therefrom that the relevant public would have perceived it otherwise than as a description of the characteristics of a particular type of cheese.

83 It must also be noted, as EUIPO contends, that the presence in the evidence of the word relating to the earlier mark does not necessarily mean that that word corresponds to the use of the mark (see, to that effect, judgment of 14 April 2016, Henkell & Co. Sektkellerei v EUIPO – Ciacci Piccolomini d’Aragona di Bianchini (PICCOLOMINI), T‑20/15, EU:T:2016:218, paragraphs 42 to 50).

84 In the light of the foregoing, it must be held that the Board of Appeal duly gave reasons for the contested decision in finding, after having examined all the evidence submitted by the applicant, that the earlier mark did not have a reputation in the European Union, with the result that one of the cumulative conditions necessary for the application of Article 8(5) of Regulation No 207/2009 was not satisfied in the present case.

85 Consequently, the second plea must be rejected as being unfounded and the action must therefore be dismissed in its entirety.

86 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.

87 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, in accordance with the form of order sought by EUIPO.

2. Orders Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi to pay the costs.

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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 - Fontana Food (GRILLOUMI) (EU trade mark - Judgment) [2023] EUECJ T-168/22 (03 May 2023) URL: http://www.bailii.org/eu/cases/EUECJ/2023/T16822.html Cite as: ECLI:EU:T:2023:231, EU:T:2023:231, [2023] EUECJ T-168/22

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