‘Likelihood of confusion’ of a collective EU trade mark must assessed from a global standpoint

9 mayo 2020

The Court of Justice of the European Union («CJEU») has set aside the General Court decision in the case Halloumi v. EUIPO and EOOD (C-766/18 P) as it holds doubts about the likelihood of confusion between the sing «HALLOUMI» (greek cheese) and the sign ‘BBQLOUMI’ that a Bulgarian producer demanded as EU trade mark («TM») as the assessment of the likelihood of confusion was not global. Therefore, the case is referred back to the General Court which will have to examine whether there is a likelihood of confusion for consumers as regards the origin of the goods covered by the sign «BBQLOUMI».

The case ruled by the decision as of March 5th 2020, dealt with M.J. Dairiews EOOD, a company established in Bulgaria that applied to EUIPO requesting the registration of a sign («BBQLOUMI») as figurative EU TM:

Clases requested for the goods and services covered by the sign were 29, 30 and 43 of the Nice Agreement. The TM was published in the European Unión Trade Marks Bulletin on August 12, 2014. On November, the Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi («Halloumi» or the «Appelant»), filed a notice of opposition against the registration of that TM in respect of those classes on the grounds of artículo 8.1.b) and 8.5 of Regulation 207/2009 («TMR»). That opposition was rejected two times by the EUIPO at both stages, on the grounds, briefly, that there was no likelihood of confusion and that the term «halloumi» was generic (§16 and 17).

Halloumi sought annulment of the decision before the General Court but the action was dismissed. The GCEU did not uphold any of the plaintiff’s arguments (mainly that the appreciation by the GCEU about a collective trade mark was wrong as it cannot be treated as just a TM; that consideration of «halloumi» as generic was wrong too; and that there was a clear likelihood between both TM).

The case went to the CJEU. Appellation of Halloumi was based in the following grounds: (1) collective marks cannot be assessed in the same way as individual TM; (2) the GCEU introduced an inappropriate burden of proof as it relied on the premiss of weak distinctive character of the TM and required the appellant to refute this premiss; (3) infringement of art. 8.1.b) TMR failing to take into account in the decision the criterion of likelihood of confusion on the part of the public; and (4) misinterpretation of the case-law of the CJEU in this field. EUIPO and EOOD stood on the weak ability of ‘Halloumi’ to be distinctive and noted that, as per an individual TM, the essential function of a collective TM is to indicate the commercial origin of the goods and services that it designates.

The CJEU held all grounds of the appellant should be dismissed. However, it stressed a few important issues. First, that the existence of likelihood of confusion is not precluded in those cases where the distinctiveness of the TM is weak (§70). Second, that it cannot be accepted that a collective TM ought to be assessed differently to an individual TM (§71). And third, and most important, the GCEU did not neither err in law when assessing the degree of distinctiveness nor on the appreciation of CJEU’s case-law (§75 – 77). Without prejudice to the foregoing, the GCEU failed to carry out a global assessment of the likelihood of confusion (as settled by the CJEU’s case-law), among other things, because it-wrongly-stated that «there was no phonetic or conceptual similarity between the marks at issue» and precisely the GCEU found that those TM, albeit to a low degree, similar visually as well as phonetically and conceptually (§79). Moreover, the GCEU (§70) held that ‘halloumi’ had a weak distinctive character and then (§71) stated that the goods covered by the TM at issue are «in part identical and in part similar to some degree» (§80).

Therefore, the CJEU sets aside the GCEU ruling and refers back the case to it so that a global assessment of the likelihood of confusion could be carried out in the light of the interdependence existing between those factors and the TM at issue (§81).

Imagen: GreekBoston