The protective Foundation for Halloumi Cheese from Cyprus won before the CFI in a trademark dispute over two EU word marks: Halloumi v Grilloumi. The focus was on the question of whether there was a complementary connection between the services claimed – in restaurants and cafés.
Once again, the Cyprus cheese Halloumi foundation took legal action against a trademark application, in this case the EU word mark Grilloumi, filed in 2016 by intervener Fontana Food AB (Sweden) – for “services for providing food and drink; coffee shop services; restaurants” in Nice Class 43.
Word mark Grilloumi – for services in restaurants
The Foundation from Cyprus filed an opposition against this trade mark registration, relying on its own earlier EU word mark Halloumi, protected as a collective word mark since July 2000 for the product “Cheese” in Nice Class 29.
The Opposition Division and also the Board of Appeal rejected the opposition, mainly because the services claimed by the word mark Grilloumi could possibly be considered similar to foodstuffs, but this had not been proven in relation to cheese.
Complementary connection between the services claimed?
In this respect, the main issue before the European Court of Justice (CFI), before which this case has now been decided, was also whether there was similarity based on their complementarity between grilloumi and halloumi – and not on factors such as their nature, intended use or method of use.
According to case-law, goods and services may be complementary if there is a close connection between them in the sense that one is indispensable or important for the use of the other (see Hartmann v OHIM – Protecsom (DIGNITUDE), T-504/11).
And it is precisely such a connection between grilloumi and halloumi that has now been confirmed by the CFI.
Cheese (Class 29) also in restaurants/cafés (Class 43)?
On the one hand, cheese could be offered to the clientele of many restaurants or also of cafés – namely as an ingredient in dishes – and, on the other hand, it could be sold in its unaltered form, even without being processed as an ingredient, in particular also in restaurants.
Therefore, contrary to the Board of Appeal’s view, the complementary link between cheese and services for the provision of food and drink, restaurant services and coffee shop services must be presumed to exist.
Therefore, the CFI held, there was a certain degree of similarity between, on the one hand, ‘services for providing food and drink; coffee shop services; restaurants’ in class 43 covered by the mark applied for and, on the other hand, ‘cheese’ in class 29 covered by the earlier mark.
The CFI therefore upheld the action from Cyprus and annulled the decision of the EUIPO Board of Appeal of 29 May 2019 (Case R 1355/2018-4) concerning opposition proceedings between the Foundation for the Protection of the Traditional Cheese of Cyprus called Halloumi and Fontana Food AB.
Comparison to the Halloumi case against BBQLOUMI
The Foundation for the Protection of Halloumi Cheese from Cyprus repeatedly takes legal action against trade mark registrations. Unlike the case against the trademark registration of BBQLOUMI, which the Cyprus Foundation lost, in this case the CFI ruled in favour of the plaintiff from Cyprus.
The court even referred to the BBQLOUMI case itself, pointing out that at the time the Cyprus Foundation had not challenged the same Board of Appeal’s finding that there was no similarity between ‘restaurant services; fast food services; cafeterias; catering’ in class 43 on the one hand and ‘cheese’ in class 29 on the other. However, the CFI emphasised that this had been decided on the case at hand and had no impact on the present case. Like the registrability of a sign as an EU trade mark, the comparison between the goods and services covered by competing rights must be assessed exclusively on the basis of the EU Regulation and its interpretation by the courts of the European Union, the CFI stated – and not on the basis of a previous practice of the Boards of Appeal.
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