[co-author: Leela Wignaraja]
The High Court has recently upheld the UKIPO’s decision that GRILLOUMI and GRILLOUMAKI can be registered as trade marks, despite opposition from the owners of the collective mark HALLOUMI. This decision highlights the limitations of descriptive terms, particularly when used for collective marks, and raises questions about whether geographical indication protection may offer a broader and more effective alternative.
Background
Since 2000, the Foundation for the Protection of the Traditional Cheese of Cyprus — an association representing halloumi producers in Cyprus — has held the UK collective trade mark for the word HALLOUMI for cheese in Class 29[1]. Unlike standard trade marks, collective marks do not signify goods or services from a single trader but rather from a group of traders, often linked by membership in an association.
In September 2021, Fontana Food AB, filed UK trade mark applications for GRILLOUMI in Class 43 (services for providing food and drink, coffee shop services and restaurants) and GRILLOUMAKI in class 29 (various meat, dried fruit, jam, egg and milk products) and class 30 (coffee and tea, various flour and cereal products, condiments and spices). The Foundation opposed both UK applications under s.5(2)(b) of the Trade Marks Act 1994 (“TMA”) (likelihood of confusion) and s.5(3) TMA (unfair advantage). The UKIPO rejected the opposition, and the Foundation appealed to the High Court.
In 2021 and 2023, in parallel proceedings, the EU General Court dismissed appeals against the Board of Appeal’s rejection of oppositions[2] from the Republic of Cyprus and the Foundation against Fontana’s EUTM applications for GRILLOUMI and GRILLOUMI BURGER in Class 43.
Grounds for appeal
The Foundation’s main grounds in this appeal were threefold:
- In relation to GRILLOUMI, the UKIPO Hearing Officer did not compare the goods and services properly, found a lack of distinctiveness in the HALLOUMI mark, did not consider Fontana’s intention to allude to HALLOUMI, and was overly cautious in her view of “indirect confusion”.
- In relation to GRILLOUMAKI, the Foundation criticised the Hearing Officer’s minimal consideration of “aki” being a Greek diminutive of the mark and therefore the overall comparison of the marks.
- The Hearing Officer failed to assess how both applications took unfair advantage of the HALLOUMI mark.
However, the High Court (Tom Mitcheson KC, sitting as a Deputy Judge of the High Court) ultimately dismissed the appeal, largely agreeing with the UKIPO Hearing Officer.
S5(2): Likelihood of confusion
Similarity between goods and services
The Court upheld the finding of the Hearing Officer that there was a low degree of similarity between “cheese” in Class 29 and “services for providing food and drink” in Class 43. The average consumer is unlikely to assume that a restaurant providing food and drink services is also responsible for the production of cheese sold in that restaurant. Although well-known restaurants chains like Starbucks and Nando’s may also offer branded food products, such cases are exceptions rather than the norm. The Court concluded that it remains "very unlikely" that consumers would choose a restaurant over a supermarket to purchase cheese so the degree of complementarity between these goods/ services remains minimal. Consumers do not typically associate restaurants with being primary sources of retail goods like cheese.
Distinctiveness of the “Halloumi” collective mark and indirect confusion
The Court agreed with the Hearing Officer's conclusion that “Halloumi” is “weakly distinctive”, given that the word directly describes a type of cheese and there was little evidence of acquired distinctiveness through use. This meant there was no likelihood of indirect confusion between HALLOUMI and GRILLOUMI because the public would not believe that the goods or services originated from the same undertaking. Importantly, the Court emphasized that the issue is not whether the public thinks of (or calls to mind) halloumi, the type of cheese, when they encounter the mark GRILLOUMI, but whether they believe GRILLOUMI originates from the Foundation. This distinction was key in untangling the descriptive nature of “halloumi” from the collective trade mark rights held by the Foundation. Despite the change of element from “Hal” to “Grill,”, the marks were just too different for there to be such confusion in this case.
The Court reached a similar conclusion regarding GRILLOUMAKI. The Court swiftly dismissed the argument that the average consumer would recognise the Greek diminutive “-aki” and create an association with the “Halloumi” mark. There was “insufficient evidence” to demonstrate that the average consumer would possess the necessary understanding of Greek to make this connection.
Irrelevance of intention
The judge rejected the relevance of intention to any analysis of likelihood of confusion and confirmed that a party may sail as close to the wind as they can, as long as they remain on the right side of the line.
S5(3): Mark with a reputation and unfair advantage
The Court agreed with the Hearing Officer’s ruling that HALLOUMI had no reputation within the general public as a collective mark. Whilst the Foundation had criticised the Hearing Officer for failing to consider Fontana’s intention to sell haloumi cheese by using the GRILLOUMI mark, the weak distinctiveness of the ‘Halloumi’ mark and subsequent lack of reputation, made it difficult to establish an unfair advantage.
Trade mark protection vs. geographical indications
This case highlights the well-established difficulties in registering and enforcing descriptive terms as trade marks. Even if registration is obtained as in this case, the scope of protection may be very limited.
This raises the question as to whether the protection offered by geographical indications (“GIs”) would be more appropriate for terms like HALLOUMI. HALLOUMI has been registered as an EU PDO (Protected Designation of Origin) since 2021. There have been a series of unsuccessful challenges against the PDO but, so far, the EU has determined that HALLOUMI is not generic[3].
There hasn’t yet been an application to register a GI in the UK, which is necessary because the EU protection was only granted post-Brexit. The UK GI scheme mirrors the EU scheme as at 2021 and seeks to protect a product’s characteristics, reputation, origin and authenticity where the product has a geographical connection or is made using traditional methods. Producers can make and sell a registered GI product, provided that they are verified to do so, follow the product’s specifications and use the product’s name and logo correctly.
Once obtained, the protection afforded by a GI appears to be broader than trade mark rights. A GI can be infringed if the use of a sign ‘evokes the name protected’, which is broader than the ‘likelihood of confusion’ test under trade mark law. As per the Queso Manchego case (C-614/17), the purpose of evocation protection is to protect the product ‘against parasitic acts’ rather than to protect the consumer against ‘misleading conduct’ as to the origin of the product. This can even be through indirect evocation, whereby the infringing product simply ‘calls to mind’ the protected product through a chain of visual, phonetic or conceptual associations, even if the true origin of the product is indicated so there is no confusion. In this respect, could GRILLOUMI evoke HALLOUMI because the average consumer links to the two products without being confused about their origin?
Footnotes
[1] UK00901082965
[2] T-556/19, T-593/19, T-595/19, T-415/22
[3] Registration of CAMEMBERT was previously rejected, forcing the group of cheese producers to register CAMEMBERT DE NORMANDIE instead
[View source.]
