IP Insight: The End of the Halloumi “BBQloumi” Saga

by Razvan Popa

Background

On 14 July 2000, the Foundation for the Protection of the Traditional Cheese of Cyprus (“FPTCC”) successfully registered the collective trade mark “HALLOUMI”.

On 9 July 2014, M.J. Diaries EOOD, a Bulgarian company, applied to register the following logo mark:

 (the “Application”)

Opposition

In November, the FPTCC opposed the Application. In January 2016, the Opposition Division rejected the opposition and ordered the FPTCC to pay the applicant’s costs.

APPEAL

FPTCC appealed the decision and on 16 March 2017, the Fourth Board of Appeal of the EUIPO dismissed the appeal stating there was no likelihood of confusion. Still unhappy with the decision, the FPTCC brought proceedings against the EUIPO before the General Court of Justice.

Proceedings against EUIPO in CJEU

The General Court decided that the trade mark was descriptive as it provided a description of the products, namely a type of cheese and there was no likelihood of confusion.

APPEAL NUMBER 2

The FPTCC once again appealed to the Court of Justice of the European Union. The Court of Justice held that the General Court was wrong in deciding that there was no likelihood of confusion simply because the trade mark had a weak distinctiveness. Therefore, the Court of Justice set aside the General Court’s decision and sent the case back to the General Court to adequately analyse whether there is a likelihood of confusion.

BACK TO THE CJEU

FPTCC claimed that the General Court should now amend its first decision and uphold its opposition or annul the first decision and send the case back to the Fourth Board of Appeal. The EUIPO and M.J. Diaries EOOD asked the General Court to dismiss the action.

FPTCC argued that the similarity should be assessed only regarding the word elements found in the “BBQLOUMI” application. It was further stated that “bbq” is a synonym for barbecue and “loumi” does not have its own meaning, but this is an abbreviation of “halloumi”. However, the General Court stated that according to current case-law, the likelihood of confusion must be assessed globally “according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular, the interdependence between the similarity of the signs and that of the goods or services covered”. The court stated that the figurative element of the mark applied for plays a differentiating role since FPTCC’s mark is only a word mark. The element present in both the application and the trade mark, namely “loumi”, “contributes very little to the distinctiveness of the mark applied for”. This element was not dominant per se and the weak inherent distinctiveness cannot lead to the existence of a likelihood of confusion.

Therefore, the General Court held that there was no likelihood of confusion, dismissed FPTCC’s action and ordered it to pay the EUIPO’s costs.

Our Insight: Case T‑328/1 Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO relating to "BBQLOUMI"

Registering a trade mark can be a lengthy and complex process and legal advice is needed in order to avoid disputes with large organisations that own several trade marks.

In this particular case, it was shown the importance of logo marks and how they may be used to avoid conflicts with earlier word marks.

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