On 24th October 2005 Garmo AG filed an application to register the word mark HELLIM as a Community trademark (CTM). The applicant sought protection under Class 29 of the Nice Classification, and the description of the goods and services of the mark included “milk and milk products".
Organismos Kypriankis Galaktokomikis Viomichanias filed a notice of opposition against registration of the mark based on its earlier and fully registered collective CTM HALLOUMI (CTM 1082965). The opposition was based on the likelihood of confusion (now Article 8(1)(b) of the EU Community Trademark Regulation (207/2009).
The opposition was dismissed on 10th March 2010, despite the fact that the goods concerned were identical and/or similar. It was held that there was no visual or phonetic similarity between the two marks. In support of the finding of no likelihood of confusion, the decision also stated that the HALLOUMI CTM had a weak distinctive character in Cyprus, as the term 'halloumi' designates a specialty cheese from Cyprus.
OHIM Board of Appeals
The Opposition Division's decision was appealed pursuant to Articles 58 to 64 of the regulation, but the appeal was subsequently dismissed by the Board of Appeals of the Office for Harmonisation in the Internal Market (OHIM).
It was held that the mere fact that the HALLOUMI mark was a collective mark did not mean that it was of average rather than weak distinctive character. Thus, the board held that the HALLOUMI mark was weak and, given minor visual similarities, there was no likelihood of confusion, despite the fact the marks were for similar and/or identical goods. Conceptually, it held in Paragraph 23 of the contested decision that as Turkish is not an official EU language, the possible meaning of the word ‘hellim’ in Turkish was not conclusive for the purposes of assessing the likelihood of confusion. It had a purely descriptive meaning and could not be used as a basis for comparison of the signs.
The applicant filed a request with the General Court for the OHIM Board of Appeals' decision to be annulled.
The General Court held that the appeals board had acted correctly in concluding that there was no likelihood of confusion. The applicant argued that the mark was of at least average distinctiveness, due to its collective status. This argument was rejected by the court, which held that the mere fact that HALLOUMI is a collective mark does not automatically make it a mark of great or even average distinctiveness:
"It is true that Article 66(2) of Regulation No 207/2009 allows registration of collective marks, notwithstanding the fact that they could fall within the scope of Article 7(1)(c) of that regulation, the second sentence of Article 66(2) states expressly that a collective mark cannot entitle the proprietor to prohibit a third party from using, in the course of trade, such signs or indications, on condition that that third party uses them in accordance with honest practices in industrial or commercial matters; in particular, such a mark may not be invoked against a third party who is entitled to use a geographical name.”
The appeals board took a different view, holding in Paragraph 23 of its decision that the conceptual comparison was neutral. In Paragraph 46 of the judgment the General Court elaborated on the matter:
"In paragraphs 25 to 27 of the contested decision, the Board of Appeal found, in essence, that the distinctive character of the earlier mark was diluted by the descriptive meaning of the word ‘halloumi’, with the result that the earlier mark described the product in question, that is to say, cheese. That sign describes, according to paragraph 27 of the contested decision, ‘the nature and type of cheese thus designated and not its geographical origin or other characteristics marked by regional particularities’. Therefore it is vital to examine the likelihood of confusion (phonetic & visual).”
The General Court found that there was a degree of conceptual similarity.By quoting several cases, the court stated that conceptually, the Turkish translation of the word ‘halloumi’ is ‘hellim’. Therefore, in contrast with the appeals board’s analysis, it could not be disputed that the average consumer in Cyprus, where both Greek and Turkish are official languages, would understand that the words ‘halloumi’ or ‘hellim’ both refer to the same specialty cheese from Cyprus.
The General Court issued its judgment on 13th June 2012.
European Court of Justice
An appeal was filed at the European Court of Justice. The grounds on which the appeal was based were as follows:
- The fact that the HALLOUMI mark was a collective mark was not taken into consideration to the extent that it should have been, and thus the conclusion that the mark was of a weak character was unsafe.
- The court of first instance had infringed Article 8(1)(b).
The appeal was dismissed and the HELLIM mark was approved for registration.
Therefore, 'Halloumi' is more than just a generic name and constitutes part of a country’s historic background, which is worthy of protection.
This decision should be considered in light of the 10 years that Greece spent attempting to secure the exclusive right to use the mark FETA for cheese. As many people say that halloumi is to Cyprus what feta is to Greece, this shows that the protection available to geographical indications and heritage is lacking. There is clearly a weakness in the law governing this area.
Should a party be allowed, based on minor visual differences, to register a mark which is based on the geographic indication or heritage of another party? This would allow it to take advantage of someone else’s heritage unfairly and unjustly.
This article first appeared in IAM magazine. For further information please visit www.iam-magazine.com.