The matter at hand

Subject of this matter is the validity of the word and figurative mark BBQLOUMI, registered as an EU trade mark for – among others – dairy products and dairy substitutes (class 29, 30, 43). More specific, corresponding to the description: cheese.

On 12 November 2014 the Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi (‘The Halloumi Foundation’) filed a notice of opposition against the registration of the above stated trade mark based on their EU collective mark HALLOUMI, registered for dairy products and also corresponding to the description cheese.

The EUIPO dismissed the opposition on the basis that there was no likelihood of confusion between BBQLOUMI and the earlier collective mark HALLOUMI. Both the Board of Appeal and the General Court confirmed the decision of the Opposition Division. The General Court held that there could be no likelihood of confusion since the existence of a low degree of similarity from a visual, phonetic and conceptual point of view is not – in the case of an earlier mark having a descriptive meaning and therefore having weak distinctive character – sufficient to establish the existence of a likelihood of confusion.

The judgment of the ECJ

The ECJ holds, with reference to The Tea Board (C-673/15 P – C-676/15 P) and Der Grüne Punkt (C-143/19 P) that in the case where an earlier mark is a collective mark of which the essential function in accordance with Article 66(1) of Regulation No 207/2009 consists of distinguishing the goods or services from the members of the association from that of other undertakings, the likelihood of confusion must be applied in the same way as for individual marks: the likelihood of confusion is the risk that the public might believe that the goods or services covered by the earlier trade mark and the requested trade mark all originate from members of the association which is the proprietor of that mark or from undertakings that are economically linked to those members, or to that association (paragraph 64).

It follows that in the event of an opposition based on a collective mark the essential function of collective marks must be taken into account in order to understand what is meant by ‘likelihood of confusion’ within the meaning of Article 8(1) of this regulation. This does not, however, mean that the criteria with regard to EU individual marks are not applicable to cases concerning an earlier collective mark (paragraph 65). In fact, none of the characteristics of collective EU trade marks justifies that for an opposition on the basis of such a mark shall be derogated from the assessment criteria resulting from the EU case-law of the likelihood of confusion (paragraph 66).

Furthermore, the argument of the proprietor of the collective mark that the requirement of distinctive character must be assessed differently where the earlier mark is an EU collective mark was rejected by the General Court. The ECJ notes that the requirement of distinctiveness applies to EU collective marks also. Articles 67 to 74 of the regulation, which concern EU collective marks, do not contain any provisions to the contrary. Consequently, those marks must in any event, whether intrinsically or through use, be distinctive.

The ECJ continues that even where an association applies for registration, as an EU collective mark, of a sign which may designate a geographical origin, it must ensure that sign has elements which enable the consumer to distinguish the goods or services of its members from those of other undertakings. The ECJ mentions that Article 66(2) of the regulation is not an exception to the requirement of distinctiveness. Although the provision permits, by way of derogation from Article 7(1)(c) of the regulation, registration as EU collective marks of signs which may serve to designate the geographical origin of goods or services, it does not, on the other hand, allow the signs thus registered to be devoid of distinctiveness (paragraph 73).

Subsequent, the ECJ states that the General Court did not err in law by assessing the degree of distinctiveness of the earlier mark HALLOUMI and by including that factor in the assessment of the existence of a likelihood of confusion (paragraph 75).

As to the assessment of the likelihood of confusion the ECJ states – in accordance with the ECJ case-law – that a global assessment which takes account of all the relevant factors and the interdependence between them had to be carried out.

In this manner the ECJ holds that the General Court erred in law by relying on the premiss that, in the case of an earlier mark of weak distinctive character, the existence of a likelihood of confusion must be ruled out as soon as it is clear that the similarity of the marks at issue are not, in itself, enough to establish a likelihood of confusion. It follows that this ruling of the General Court was incorrect since the weak distinctive character of an earlier mark does not preclude the existence of a likelihood of confusion. Therefore, it was for the General Court to examine whether the low degree of similarity of the marks at issue is offset by a higher degree of similarity, or even identity of the goods covered by those marks (paragraph 81, 82). Hence, the General Court has not fulfilled the requirement of an overall assessment taking into account and duly considers the interdependence of the relevant factors.

Finally, the ECJ sets aside the judgment and refers the case back to the General Court for further examination of the existence of a likelihood of confusion.