Cyprus has lost again before the CFI in the assertion of rights due to its own trade mark HALLOUMI – this time against an EU figurative mark Halloumi from Greece. Cyprus had even claimed bad faith by applying for this figurative mark Halloumi – but in vain.
Cyprus repeatedly fights in court for its own trademark HALLOUMI for the cheese traditionally produced in Cyprus. In this case, which the European Court of Justice (ECJ) has now decided against the action from Cyprus, it was about the trademark application for an EU figurative mark Halloumi from Greece. Cyprus had brought an action against this trademark registration.The figurative mark has a rather complex character, because apart from the highly visible term Halloumi, many other words appear in the figurative mark. The disputed EU figurative mark Halloumi from Greece is called “Halloumi χαλλούμι Vermion grill cheese/grill est/grill kase M BELAS PREMIUM GREEK DAIRY SINCE 1927”.
This trademark was registered at the European Trade Mark Office in 2013 and the applicant is Filotas Bellas & Yios AE (Greece). Cyprus brought an action against this trade mark registration in 2015, more precisely the action is led by the Halloumi Foundation (Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi (Cyprus). The Halloumi Foundation from Cyprus invoked its own earlier EU collective mark HALLOUMI. However, the action was unsuccessful; the Invalidity Division and the Board of Appeal of the EUIPO dismissed the Cyprus action.
Neither an enhanced distinctiveness nor the reputation of the earlier mark in relation to production standards had been proven, the Board of Appeal found. Consumers buying halloumi cheese would not be able to distinguish the certified quality, the Board of Appeal found, so there could be no detriment to the earlier mark.
It is true that, in addition to the first word halloumi, the word ‘χαλλούμι’ also appears in the disputed figurative mark, and ‘χαλλούμι’ is understood by the relevant Greek public to mean ‘halloumi’. Moreover, the third word ‘vermion’ is a well-known place in Greece.
But the impact on the overall impression of the disputed figurative mark was minor, the Board of Appeal decided. The two marks only coincided in the element “halloumi” – which was hardly distinctive because the word halloumi is descriptive of the product – while they clearly differed in the distinctive elements of the contested mark, namely the words “vermion” and “belas”.
These findings were confirmed by the CFI as “apparently correct” – apart from the fact that they were not even expressly challenged by the Halloumi Foundation from Cyprus.
Cyprus had instead based its action before the CFI on two points:
“Halloumi” descriptive of cheese- wrongly decided?
The Board of Appeal wrongly decided that ‘halloumi’ was descriptive, the applicant from Cyprus argued, as the Board referred to two CFI judgments which, however, concerned applications for individual marks and not collective marks. The CFI judgments in question were those of 2015, Cyprus v OHIM (XAΛΛOYMI and HALLOUMI, EU: T:2015:752) and 2018, Cyprus v EUIPO – Papouis Dairies (Pallas Halloumi) (T-825/16)).
And relying on the Union collective mark Halloumi, Cyprus was successful before the highest European court in 2020 – we reported. In that case, the ECJ had ruled, among other things, that EU collective marks must have distinctive character per se or through use. However, the EU collective mark HALLOUMI must still fulfil its essential function, namely to distinguish the goods or services of the members of the association which is the proprietor of that mark from those of other undertakings. In other words, according to CFI, it is not the Cypriot geographical origin of the goods covered by the collective mark that must be made clear, but the production by members of the Halloumi Foundation.
However, this was not the case in the present case, the CFI made clear its doubts, especially with regard to the evidence from Cyprus. However, it was undisputed that the earlier mark consisted exclusively of the word “Halloumi”. This word, however, corresponds to the generic name for a type of cheese produced in Cyprus – this was also part of the ECJ’s 2020 judgment.
Therefore, the CFI ruled, the earlier EU collective mark halloumi was inherently weak in distinctive character, given the descriptive nature of the single word of which it is composed. The word ‘halloumi’ therefore did not contribute, as it were, to the distinctive character of the contested mark, but this was the main element giving rise to the similarity between the conflicting signs.
Application for the Halloumi figurative mark – malice?
The Halloumi Foundation was also unsuccessful with its claim of bad faith against the trademark application from Greece.
When examining the possible maliciousness of a trademark application, the intention of the applicant of this trade mark is decisive. Although this is a subjective factor, the court explained, it must nevertheless be determined objectively by the competent administrative or judicial authorities, and only the trademark law context must be taken into account.
The question of whether the applicant knew or should have known that a third party had been using an identical or similar sign for an identical or similar product for a long time in at least one member state was not in itself sufficient to allege bad faith, the court specified.
In this respect, malice only existed if the application for a trademark was not filed with the aim of successfully competing, but rather to impair another trademark owner. This was not the case in the present case, the CFI ruled.
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