http://ipkitten.blogspot.com/2024/09/another-grating-decision-for-halloumi.html
In the latest instalment in the Halloumi saga, the High Court of England & Wales (the “Court”) handed down its judgment in Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v Fontana Food AB on 9 September 2024. This is the first decision from Tom Mitcheson KC since his appointment as Deputy Judge of the High Court.
Background
| A Kat enjoys a ball of string (cheese). Images from Pixabay. |
The case concerned two trade mark applications for the words “GRILLOUMI” and “GRILLOUMAKI” respectively. [Merpel: readers might recall that Cyprus lost its appeal against the parallel EU trade mark application for “GRILLOUMI” last year in the General Court of the European Union, see previous IPKat coverage here].
The applications were opposed by the Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi (the “Foundation”), which is the owner of a UK collective mark for the word “HALLOUMI” in Class 29 for “cheese” since 2000. The Foundation represents some – but not all – producers of the traditional cheese of Cyprus. The opposition was brought under ss.5(2)(b) and 5(3) of the UK Trade Marks Act 1994, i.e. confusing similarity and the protection of marks with a reputation. The Hearing Officer of the UKIPO had dismissed the oppositions, and the Foundation appealed.
Confusing Similarity
A key point of contention was the similarity of the goods or services. The GRILLOUMI application sought protection in Class 43 for “services for providing food and drink, coffee-shop services, restaurants”. Although some restaurants are responsible for providing the goods in the restaurant, the Court determined that the average consumer would be unlikely to assume that any cheese served in a restaurant had originated from the same undertaking as the restaurant services. Therefore, there was a low degree of similarity due to the shared channels of trade and complementarity (which was consistent with the General Court’s finding in T-555/19).
As for the signs, the HALLOUMI collective mark was considered weakly distinctive, as the term can be used descriptively or generically. This created a challenge for the issue of indirect confusion because:
The relevant test under s.5(2) is not to ask whether the use of GRILLOUMI calls to mind halloumi cheese per se (because this is the descriptive use), but whether because of the use of GRILLOUMI there is a “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….”
The Court agreed with the conclusion of the Hearing Officer (and the General Court in T-168/22) that there was no likelihood of confusion – neither direct nor indirect.
The same conclusion was reached for the GRILLOUMAKI application. The Foundation contended that the average consumer would recognise the “-AKI” ending as diminutive in the Greek language and ignore it, but the Court found that there was insufficient evidence that the average UK consumer would have such an understanding. Therefore, the HALLOUMI and GRILLOUMAKI marks were simply too different for there to be a likelihood of confusion, even though some of the goods were identical.
Reputation
As for s.5(3), the Court agreed with the Hearing Officer’s finding that HALLOUMI did not have a reputation among the general public as a collective trade mark. Given the differences between the goods and services and the insufficient reputation, the use of the GRILLOUMI or GRILLOUMAKI trade marks would not take unfair advantage of the reputation of the collective mark.
Concluding Thoughts
The Swedish applicants for the GRILLOUMI and GRILLOUMAKI marks are probably celebrating with a (generic) cheese platter as we speak, having succeeded where others have failed.
While Halloumi producers would be less thrilled with the outcome, it’s not all doom and gloom. The EU Commission registered Χαλλούμι/Halloumi/Hellim as a protected designation of origin (PDO) in 2021, which provides much stronger protection for the name. Of course, this registration was finalised after Brexit, so the PDO does not extend to the UK [Merpel: well… except for Northern Ireland…]. Once they’ve finished digesting this decision, perhaps the Halloumi producers will be seeking equivalent protection under the British GI laws?
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