JUDGMENT OF THE GENERAL COURT (Third Chamber)
3 May 2023 (*)
(EU trade mark – Invalidity proceedings – EU word mark BBQLOUMI – Earlier EU collective word mark HALLOUMI – Relative grounds for invalidity – Likelihood of confusion – Detriment to reputation – Article 8(1)(b), Article 8(5) and Article 53(1)(a) of Regulation (EC) No 207/2009 (now Article 8(1)(b), Article 8(5) and Article 60(1)(a) of Regulation (EU) 2017/1001))
In Case T‑106/22,
Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi, established in Nicosia (Cyprus), represented by S. Malynicz and C. Milbradt, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
M. J. Dairies EOOD, established in Sofia (Bulgaria), represented by I. Pakidanska and D. Dimitrova, lawyers,
THE GENERAL COURT (Third Chamber),
composed of F. Schalin (Rapporteur), President, P. Škvařilová-Pelzl and I. Nõmm, Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 25 January 2023,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 14 December 2021 (Case R 656/2021-4) (‘the contested decision’).
Background to the dispute
2 On 23 September 2019, the applicant filed an application with EUIPO for a declaration of invalidity of the EU trade mark which had been registered following an application filed on 22 May 2014 for the word sign BBQLOUMI.
3 The goods and services covered by the contested mark in respect of which a declaration of invalidity was sought were in Classes 29, 30 and 43 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and corresponded, for each of those classes, to the following description:
– Class 29: ‘Dairy products and dairy substitutes; meat extracts; prepared dishes consisting wholly or substantially wholly of meat or dairy products’;
– Class 30: ‘Foodstuffs made from cereals; sandwiches; condiments; sauces’;
– Class 43: ‘Restaurant services; fast food restaurant services; cafeterias; catering’.
4 The application for a declaration of invalidity was based on the earlier EU collective word mark HALLOUMI, registered on 14 July 2000 and covering goods in Class 29 corresponding to the following description: ‘Cheese’.
5 The grounds relied on in support of the application for a declaration of invalidity were those set out in Article 53(1)(a) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), read in conjunction with Article 8(1)(b) and Article 8(5) of that regulation (now Article 60(1)(a), Article 8(1)(b) and Article 8(5) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
6 On 11 February 2021, the Cancellation Division dismissed the application for a declaration of invalidity in its entirety and ordered the applicant to pay the costs of the proceedings. More particularly, it considered, first, that there was no likelihood of confusion between the marks at issue, even for the goods covered by those marks that might be regarded as identical, and, secondly, that the applicant had not adduced sufficient evidence of the reputation of the earlier mark.
7 On 12 April 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division.
8 By the contested decision, the Board of Appeal dismissed the appeal in its entirety.
9 In respect of the application for a declaration of invalidity based on the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, the Board of Appeal found, in paragraph 16 of the contested decision, that the goods and services covered by the marks at issue were targeted at the public at large, whose level of attention when making purchases would be average at most.
10 In paragraph 25 of the contested decision, the Board of Appeal took the view that the application was not well founded as regards the goods covered by the marks at issue which were dissimilar, with the result that the examination of whether there was a likelihood of confusion was relevant only in respect of the goods and services designated by the contested mark which were similar to or identical with the ‘cheese’ covered by the earlier mark, namely the ‘dairy products and dairy substitutes; prepared dishes consisting wholly or substantially wholly of dairy products’ in Class 29, the ‘sandwiches; sauces’ in Class 30 and the ‘restaurant services; fast food restaurant services; cafeterias; catering’ in Class 43.
11 In paragraph 38 of the contested decision, the Board of Appeal took the view that the inherent distinctive character of the earlier mark was weak inasmuch as it designated ‘cheese’, on account of its descriptive meaning of a particular type of cheese produced in Cyprus according to a special recipe, and that the evidence adduced by the applicant fell far short of establishing any enhanced distinctive character acquired through use as at the relevant date of filing of the contested trade mark.
12 In paragraphs 41 to 43 of the contested decision, the Board of Appeal found that the signs at issue were visually and phonetically similar to a low degree and that conceptually they were similar to a very low degree.
13 In paragraph 49 of the contested decision, the Board of Appeal took the view that, taking into account the weak distinctive character of the earlier mark, the differences between the marks at issue were sufficient to safely distinguish them, even where they designated identical goods and, a fortiori, where they designated goods and services that were similar or similar to a low degree.
14 As regards the application for a declaration of invalidity based on the existence of a risk that the use without due cause of the contested mark takes unfair advantage of or is detrimental to the distinctive character or the reputation of the earlier mark, the Board of Appeal was of the opinion, in paragraph 53 of the contested decision, that the evidence adduced by the applicant was insufficient to prove the enhanced distinctiveness, acquired through use, let alone the reputation, of the earlier mark, with the result that one of the cumulative conditions necessary for the application of Article 8(5) of Regulation No 207/2009 was not satisfied.
Forms of order sought
15 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO and the intervener, M. J. Dairies EOOD, to pay the costs.
16 EUIPO and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
17 Given the date on which the application for registration at issue was filed, namely 22 May 2014, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited).
18 Consequently, in the present case, as regards the substantive rules, the references to the provisions of Regulation 2017/1001 made by the Board of Appeal in the contested decision and by the parties in their written pleadings must be understood as referring to the identical provisions of Regulation No 207/2009.
19 In support of the action, the applicant puts forward six pleas in law, alleging, first, manifest errors on the part of the Board of Appeal, in paragraph 14 of the contested decision, in the definition and assessment of the essential function of an EU collective mark; secondly, infringement of Article 66(2) of Regulation No 207/2009 (now Article 74(2) of Regulation 2017/1001), in so far as there had been no reason to consider that the scope of the earlier mark was limited by its geographical descriptiveness; thirdly, an error of assessment of the likelihood of confusion inasmuch as the case-law of the Court of Justice and the relevant factors in the present case, other than the distinctive character of the earlier mark, which was incorrectly elevated to the status of a ‘super-factor’, were not duly taken into account; fourthly, that the burden of proving the required level of distinctiveness was incorrectly placed on the applicant; fifthly, failure to state reasons for the finding that the earlier mark lacked distinctive character; and, sixthly, serious errors in the assessment of the inherent distinctive character and the reputation of the earlier mark, which affected the overall conclusion in that regard.
20 EUIPO and the intervener contend that the six pleas should be rejected as being unfounded.
The application for annulment of the contested decision, in so far as it is based on pleas in law challenging the dismissal of the application for a declaration of invalidity of the contested mark on the basis of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation
21 Under Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation, on application by the proprietor of an earlier mark, a registered EU trade mark is to be declared invalid if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
22 Where the earlier mark is an EU collective mark, the likelihood of confusion must be understood as being the risk that the public might believe that the goods or services covered by the earlier trade mark and those covered by the contested mark all originate from members of the association which is the proprietor of the earlier trade mark or, where appropriate, from undertakings economically linked to those members or to that association (judgment of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, C‑766/18 P, EU:C:2020:170, paragraph 64).
23 Furthermore, in the event of an application for a declaration of invalidity based on the existence of a likelihood of confusion and brought by the proprietor of a collective mark, although account must be taken of the essential function of that type of mark, as set out in Article 66(1) of Regulation No 207/2009 (now Article 74(1) of Regulation 2017/1001), in order to understand what is meant by likelihood of confusion, within the meaning of Article 8(1)(b) of that regulation, the fact remains that the case-law establishing the criteria with regard to which the existence of such a likelihood must be assessed in practice is applicable to cases concerning an earlier collective mark (see, by analogy, judgment of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, C‑766/18 P, EU:C:2020:170, paragraph 65).
24 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 September 2016, Sun Cali v EUIPO – Abercrombie & Fitch Europe (SUN CALI), T‑512/15, EU:T:2016:527, paragraph 45 and the case-law cited).
25 It is in the light of those considerations that it is necessary to examine whether the Board of Appeal was right in finding that the application for a declaration of invalidity, based on the existence of a likelihood of confusion, had to be dismissed, in so far as such a likelihood did not exist on the part of the relevant public, within the meaning of Article 8(1)(b) of Regulation No 207/2009.
The relevant public
26 As regards the definition of the relevant public, in paragraph 16 of the contested decision, the Board of Appeal noted that, in the territory of the European Union, the marks at issue covered goods and services which were all targeted at the public at large, which, when purchasing them, would display at most an average level of attention.
27 The Board of Appeal’s findings as regards the definition of the relevant public must be upheld, since those findings appear to be consistent with the evidence in the case file and are not, moreover, disputed by the parties.
The comparison of the goods and services covered by the marks at issue
28 In paragraphs 20 to 23 of the contested decision, the Board of Appeal found, with regard to the goods in Class 29 covered by the contested mark, namely ‘dairy products’, on the one hand, and ‘dairy substitutes’ and ‘prepared dishes consisting wholly or substantially wholly of dairy products’, on the other hand, that they were respectively identical with and similar to the ‘cheese’ covered by the earlier mark. By contrast, it took the view that the ‘meat extracts’ and the ‘prepared dishes consisting wholly or substantially wholly of meat products’ in Class 29 and the ‘foodstuffs made from cereals’ and the ‘condiments’ in Class 30 covered by the contested mark were dissimilar to the ‘cheese’ covered by the earlier mark. It also found that the ‘sandwiches’ and the ‘sauces’ in Class 30 covered by the contested mark displayed a low degree of similarity with the ‘cheese’ covered by the earlier mark.
29 In paragraph 24 of the contested decision, the Board of Appeal found that, on account of the existence of a complementary connection, the ‘restaurant services; fast food restaurant services; cafeterias; catering’ in Class 43 covered by the contested mark displayed a very low degree of similarity with the ‘cheese’ covered by the earlier mark.
30 Furthermore, in paragraph 25 of the contested decision, the Board of Appeal concluded, on an interim basis, that, as regards the goods covered by the contested mark which should be regarded as being dissimilar to the ‘cheese’ covered by the earlier mark, the application for a declaration of invalidity was unfounded.
31 The findings of the Board of Appeal concerning the comparison of the goods and services covered by the marks at issue are not disputed by the applicant.
32 For its part, EUIPO contends that, in the absence of any challenge, the contested decision has become final inasmuch as it found that the ‘meat extracts; prepared dishes consisting wholly or substantially wholly of meat products’ and the ‘foodstuffs made from cereals; condiments’ in Class 29 and Class 30 respectively and designated by the contested mark were dissimilar to the ‘cheese’ covered by the earlier mark.
33 In the present case, in so far as the action concerns, inter alia, the Board of Appeal’s finding that there was no likelihood of confusion between the marks at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009 and that that finding was made following a global assessment of the likelihood of confusion taking into account all the relevant factors, including the findings of the Board of Appeal as regards the comparison of the goods and services covered by the marks at issue, it is appropriate to carry out a review of those findings, to the extent that they are capable of affecting the legality of the contested decision.
34 In that regard, it must be borne in mind, as the Court of Justice held in paragraph 48 of the judgment of 18 December 2008, Les Éditions Albert René v OHIM (C‑16/06 P, EU:C:2008:739), that, where it is called upon to assess the legality of a decision of a Board of Appeal of EUIPO, the General Court cannot be bound by an incorrect assessment of the facts on the part of that board, since that assessment is part of the findings whose legality is being disputed before it.
35 It appears that the Board of Appeal’s comparison of the goods and services covered by the marks at issue contains two errors.
36 First, contrary to the finding made by the Board of Appeal, it must be held that the ‘meat extracts; prepared dishes consisting wholly or substantially wholly of meat products’ in Class 29 covered by the contested mark must be regarded as displaying a low degree of similarity with the ‘cheese’ covered by the earlier mark.
37 In this respect, it should be borne in mind that, in paragraphs 47 and 48 of the judgment of 8 December 2021, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO – Fontana Food (GRILLOUMI BURGER) (T‑595/19, not published, EU:T:2021:866), the Court has already held that the ‘meat, fish, poultry and game; meat extracts’ in Class 29 were of animal origin and derived from wild or farmed animals’ muscular tissues and that, although they were admittedly not identical to ‘cheese’, the Court had already held in previous decisions that such products, in particular those which, like meat, ham, cold meats, cold dishes and preserved meat, belonged to the category of cold cuts products, could be regarded as similar to a low degree to cheese and dairy products on account of their identical nature and purpose and their similar distribution channels.
38 Secondly, contrary to what the Board of Appeal found, it should be noted that the ‘restaurant services; fast food restaurant services; cafeterias; catering’ in Class 43 covered by the contested mark display a low degree of similarity with the ‘cheese’ covered by the earlier mark, and not a very low degree of similarity.
39 In that regard, it must be borne in mind that, in paragraphs 56 and 57 of the judgment of 8 December 2021, GRILLOUMI BURGER (T‑595/19, not published, EU:T:2021:866), the Court has already held that the goods in Class 29, inter alia, cheese, were necessarily used in the services for providing food and drink in Class 43, with the result that those services and goods were complementary and that the degree of similarity had to be classified as low, in so far as, first, the goods and services at issue are clearly different, because the former were fungible and the latter were not and, secondly, the ‘services for providing food and drink; coffee-shop services; restaurants’ in Class 43, could be complementary to a wide range of food products, of which cheese formed only a part.
40 As to the remainder, it is necessary to uphold the other findings of the Board of Appeal as regards the comparison of the goods and services covered by the marks at issue, since those findings appear to be consistent with the evidence in the file.
41 The possible consequences of the two errors made by the Board of Appeal in the light of the legality of the contested decision will be examined at the stage of the global assessment of the likelihood of confusion.
The comparison of the signs at issue
42 In paragraphs 41 to 43 of the contested decision, the Board of Appeal found that the signs at issue, which were characterised by the presence of the letter group ‘loumi’ in each of them, were visually and phonetically similar to a low degree and conceptually similar to a very low degree.
43 Those assessments are, in essence, identical to those relied on by the Court in the judgment of 20 January 2021, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO – M. J. Dairies (BBQLOUMI) (T‑328/17 RENV, not published, EU:T:2021:16), where it compared the word sign HALLOUMI and the figurative sign consisting both of the element ‘bbqloumi’ and of a picture of a dish of food, some of which showed signs of having been grilled, depicting a Mediterranean harbour scene in the background.
44 Although, in the judgment of 20 January 2021, BBQLOUMI (T‑328/17 RENV, not published, EU:T:2021:16), the Court had found that the signs at issue were conceptually similar to a low degree, whereas, in the present case, that degree had been classified by the Board of Appeal as ‘very low’, this is explained by the fact that a figurative element reinforced the conceptual similarity. The absence of such a figurative element in the contested mark warrants, in the present case, the Board of Appeal’s classification of the conceptual similarity between the marks at issue as being ‘very low’.
45 It must therefore be held that the Board of Appeal drew accurate conclusions from the comparison of the signs at issue, since those conclusions appear to be consistent with the evidence in the case file.
The distinctive character of the earlier mark
46 It must be borne in mind that, in the judgment of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO (C‑766/18 P, EU:C:2020:170, paragraphs 70, 72 and 73), the Court of Justice noted that the degree of distinctiveness of an earlier mark determines the extent of the protection conferred by it and that EU collective marks must be distinctive, whether intrinsically or through use, since Article 66(2) of Regulation No 207/2009 is not an exception to that requirement of distinctiveness. While that provision permitted, by way of derogation from Article 7(1)(c) of Regulation No 207/2009 (now Article 7(1)(c) of Regulation 2017/1001), registration as EU collective marks of signs which may serve to designate the geographical origin of goods or services, it did not, on the other hand, allow the signs thus registered to be devoid of distinctiveness. Accordingly, where an association applies for registration, as an EU collective mark, of a sign which may designate a geographical origin, it is incumbent on the association to ensure that that sign has elements which enable the consumer to distinguish the goods or services of its members from those of other undertakings.
47 In that regard, the General Court has already held that registration of a sign as a collective mark cannot, per se, give rise to a presumption that the mark has average distinctive character (judgment of 13 June 2012, Organismos Kypriakis Galaktokomikis Viomichanias v OHIM – Garmo (HELLIM), T‑534/10, EU:T:2012:292, paragraph 52).
48 Furthermore, although, by analogy with the solutions adopted in the judgments of 24 May 2012, Formula One Licensing v OHIM (C‑196/11 P, EU:C:2012:314, paragraphs 43 to 47), and of 5 October 2020, Eugène Perma France v EUIPO – SPI Investments Group (NATURANOVE) (T‑602/19, not published, EU:T:2020:463, paragraph 65), in respect of validly registered earlier rights such as a national trade mark or an international registration designating the European Union, an EU collective mark should be acknowledged as having a certain degree of distinctiveness merely because it has been registered, it is for the proprietor of such a mark to demonstrate the level of distinctiveness since he or she intends to rely on that distinctiveness in opposition or even cancellation proceedings. It must also be recalled that, in accordance with Article 95(1) of Regulation 2017/1001, the burden of proof before EUIPO lies in that regard with the opponent concerned (see, to that effect, judgment of 6 December 2017, Tulliallan Burlington v EUIPO – Burlington Fashion (BURLINGTON), T‑123/16, not published, EU:T:2017:870, paragraph 60 and the case-law cited).
49 As regards the inherent distinctive character of the earlier mark, in paragraphs 27 and 38 of the contested decision, the Board of Appeal noted that the Court had repeatedly held that the inherent distinctive character of the word ‘halloumi’ was weak, because it described the type and origin of a speciality cheese from Cyprus, in particular for the Cypriot public, with the result that, in essence, the earlier mark, on account of its descriptive meaning, had a weak inherent distinctive character.
50 In addition, in paragraphs 30 to 37 of the contested decision, the Board of Appeal listed all the evidence submitted by the applicant before the Opposition Division, and the evidence which had been submitted subsequently, which was intended to demonstrate the enhanced distinctiveness of the earlier mark, acquired through use, as well as its reputation, then the Board of Appeal analysed that evidence and found that most of it post-dated the relevant period which ended on 22 May 2014, and that the evidence mostly referred to halloumi cheese, including inasmuch as it was aimed at the professional public, but very little to the earlier mark, and that, consequently, it had to be concluded that the applicant had not demonstrated an enhanced distinctive character, acquired through use, of the earlier mark, or even a reputation of that mark.
The first plea in law, alleging manifest errors in the definition and assessment of the essential function of an EU collective mark
51 In the present case, it is true, as the applicant observes, that, in paragraph 14 of the contested decision, the Board of Appeal stated that the essential function of the earlier mark, as an EU collective mark, was to distinguish the goods and services of an association of producers or traders, the proprietor of that mark, from those of other undertakings. Under Article 66 of Regulation No 207/2009, the essential function of a collective mark is to indicate that the goods or services which it designates originate in a multiplicity of members belonging themselves to the association which is the proprietor of the mark.
52 However, although the wording of paragraph 14 of the contested decision contains an error, it appears that, on several occasions in the contested decision, in particular starting from paragraph 15, the Board of Appeal examined the particular features of the earlier mark, without committing any error, making clear that it was in fact a collective mark distinguishing the goods or services of the members of the association which was the proprietor of that mark or, as the case may be, of undertakings economically linked to those members or to that association from those of other undertakings.
53 As a result, the error made by the Board of Appeal must be regarded as being purely formal and entails no consequence on the legality of the contested decision. Therefore, the first plea must be rejected as being unfounded.
The second plea in law, alleging limitation of the scope of the earlier mark with regard to its purported descriptive character from a geographical point of view
54 It should be observed that, contrary to what the applicant claims, the contested decision does not contain grounds allowing for any limitation of the earlier mark with regard to its descriptive character from a geographical point of view.
55 In this respect, it must also be held, as regards the need to protect EU collective marks which, under the provisions of Article 66(2) of Regulation No 207/2009, are expressly entitled to designate the geographical origin of the goods or services to which they relate, that the Court of Justice noted, in paragraph 74 of the judgment of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO (C‑766/18 P, EU:C:2020:170), that, even supposing that the EU collective mark HALLOUMI implicitly refers to the Cypriot geographical origin of the goods covered, it must nevertheless still fulfil its essential function, namely to distinguish the goods or services of the members of the association which is the proprietor of that mark from those of other undertakings. In the present case, the generic nature of the word ‘halloumi’, since that word alone constitutes the earlier mark, necessarily limits the effects of the mark as regards that function, whatever the descriptive character of that mark from a geographical point of view.
56 Accordingly, it appears that the applicant’s arguments are unfounded, with the result that the second plea must be rejected.
The fourth and fifth pleas in law, alleging reversal of the burden of proof as regards demonstrating the required level of distinctiveness and failure to state reasons
57 In the present case, it is common ground that the earlier mark consists exclusively of the word ‘halloumi’. That word corresponds to the generic name of a type of cheese produced in Cyprus. Therefore, in view of the descriptive character of the single word of which it is composed, the earlier mark has an inherent distinctive character which must be regarded as weak.
58 In that regard, in paragraph 71 of the judgment of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO (C‑766/18 P, EU:C:2020:170), the Court of Justice observed that the distinctive character of the EU collective word mark HALLOUMI, which also corresponds to the earlier mark in the present case, did not have to be assessed in a particular way on the ground that it was a collective mark and, in paragraph 76 of that judgment, that there was no need to call into question the assessment made by the General Court in the judgment of 25 September 2018, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO – M. J. Dairies (BBQLOUMI) (T‑328/17, not published, EU:T:2018:594), that that mark’s degree of distinctiveness had been regarded as low. In those circumstances, the Board of Appeal, when assessing the inherent distinctiveness of the earlier mark, correctly referred to decisions of the Court which concerned earlier rights also composed of the single word ‘halloumi’ in opposition or cancellation proceedings, since the assessment of the distinctiveness of the rights in question fulfilled criteria which could be perfectly transposed to the present case.
59 Contrary to what is claimed, in essence, by the applicant, the Board of Appeal’s approach does not amount to denying the very existence of the distinctive character of a validly registered mark, or to raising the criterion of distinctiveness to ‘super-factor’, or even to disregarding the rights which such a mark confers on its proprietor, by unduly placing on the proprietor the burden of proving the inherent distinctive character of that mark, but merely to finding that it cannot confer more rights than those which it objectively derives from its distinctive character. Moreover, it must be borne in mind that, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion, in particular, where the goods or services in question are identical and the signs at issue are similar (see judgment of 13 April 2011, Sociedad Agricola Requingua v OHIM – Consejo Regulador de la Denominación de Origen Toro (TORO DE PIEDRA), T‑358/09, not published, EU:T:2011:174, paragraph 45 and the case-law cited).
60 Moreover, although the distinctive character of the earlier mark has been the subject of an assessment which, in the contested decision, appears before the comparison of the signs, this has no bearing on the validity of that comparison. It should be noted that, in the present case, the relevant criteria, which are necessary for the purposes of the global assessment of the likelihood of confusion, had been determined before that global assessment was carried out, and there is nothing to suggest that the comparison of the signs at issue was altered by the prior assessment of the distinctive character of the earlier mark.
61 It should also be observed that there is nothing in the applicant’s arguments capable of calling into question the finding, in paragraph 29 of the contested decision, that the evidence which it submitted makes it possible only to find that, in the Member States to which that evidence refers, the relevant public will understand the earlier mark, composed solely of the word ‘halloumi’, as describing a particular type of cheese produced in Cyprus. The examination of the evidence produced by the applicant shows that that evidence contains almost exclusively references to the word ‘halloumi’ as a speciality cheese from Cyprus. That evidence does not therefore make it possible to find that consumers, faced with the earlier mark, will associate it with something other than halloumi cheese, in view of the fact that it refers to the generic name of that type of cheese, rather than to the commercial origin of the goods in so far as they come from members of the association which is the proprietor of that mark or, as the case may be, from undertakings economically linked to those members or to that association.
62 In addition, it must be made clear that the Board of Appeal, in paragraphs 30 to 37 of the contested decision, carried out a specific and detailed analysis of the evidence produced by the applicant, that analysis making it possible to reach a substantiated finding of a failure to demonstrate an enhanced distinctiveness, acquired through use, and a reputation of the earlier mark, without confining itself, as the applicant wrongly claims, to referring to judgments of the Court which related to facts different from those of the present case. Consequently, the contested decision is not vitiated by any failure to state reasons in that regard.
63 In those circumstances, the fourth and fifth pleas must be rejected as being unfounded and it must be held that the Board of Appeal was right to find that, on account of its descriptive meaning, the earlier mark had a weak inherent distinctive character and that there was nothing to support the finding that it had acquired enhanced distinctiveness through use.
The third and sixth pleas in law, in so far as the sixth plea alleges errors in the global assessment of the likelihood of confusion
64 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered by those marks. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
65 In the present case, it must be borne in mind that, in paragraphs 47 to 49 of the contested decision, the Board of Appeal concluded that there was no likelihood of confusion between the marks at issue, on the ground that the similarity between those marks was not sufficiently high to offset the similarity, or even identity, of the goods and services covered respectively by those marks and thus to create a likelihood of confusion on the part of consumers. In that respect, the Board of Appeal emphasised the low degree of distinctiveness of the earlier mark, the fact that the review carried out by the applicant of compliance with the rules applying to the production of halloumi cheese had no effect on the perception of the word ‘halloumi’ by the relevant public and the fact that the similarity between the signs at issue was due solely to the presence of the letter group ‘loumi’ in each of them, whereas the relevant public would not artificially dissect those signs, which had different beginnings, namely the letter groups ‘hal’ and ‘bbq’.
66 First, as regards the factor relating to the similarity of the signs at issue, that factor is connected with the presence in each of those signs of the element ‘loumi’, which gives rise to a low degree of visual and phonetic similarity and a very low degree of conceptual similarity.
67 Those considerations must, however, be examined in the light of the fact that, where the relevant public is confronted with the contested mark, it will understand that mark as being a combination of the element ‘bbq’, which is an abbreviation of the word ‘barbecue’ designating, in certain languages of the European Union, a method of cooking on a grill, the use of which is very widespread throughout the territory of the European Union, and the letter group ‘loumi’. It should be recalled in that regard that although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, the consumer will break that sign down into elements which, for him or her, have a concrete meaning or resemble words known to him or her (see, to that effect, judgment of 19 September 2012, TeamBank v OHIM – Fercredit Servizi Finanziari (f@ir Credit), T‑220/11, not published, EU:T:2012:444, paragraph 38 and the case-law cited).
68 In addition, the attention of the relevant public will primarily be directed towards the element ‘bbq’ which is placed at the beginning of the contested mark, bearing in mind that the beginning of a word mark is more likely to attract the consumer’s attention than the rest of that mark (see, to that effect, judgment of 8 December 2021, GRILLOUMI BURGER, T‑595/19, not published, EU:T:2021:866, paragraph 88 and the case-law cited).
69 Furthermore, as the Board of Appeal correctly found, the signs at issue do not coincide in the word ‘halloumi’ in its entirety, but only in the letter group ‘loumi’. That letter group contributes only to a very low degree to the distinctive character of the contested mark, since, in that mark, the element ‘bbq’ must be regarded as being the element which most attracts the relevant public’s attention owing to its position at the beginning of that same mark (see paragraph 67 above), whereas the earlier mark, for its part, enjoys only a low degree of inherent distinctiveness.
70 Although the finding that the earlier mark has weak distinctiveness does not in itself preclude a finding that there is a likelihood of confusion (see, to that effect, order of 27 April 2006, L’Oréal v OHIM, C‑235/05 P, not published, EU:C:2006:271, paragraphs 42 to 45), on account, in particular, of a similarity between the signs and between the goods or services covered (see, to that effect, judgment of 8 November 2016, BSH v EUIPO, C‑43/15 P, EU:C:2016:837, paragraph 44), it appears, however, that where the elements of similarity between two signs arise from the fact that, as in the present case, they share a component which has a weak inherent distinctiveness, the impact of such elements of similarity on the global assessment of the likelihood of confusion is itself low (see, to that effect, judgments of 22 February 2018, International Gaming Projects v EUIPO – Zitro IP (TRIPLE TURBO), T‑210/17, not published, EU:T:2018:91, paragraph 73 and the case-law cited, and of 20 September 2018, Kwizda Holding v EUIPO – Dermapharm (UROAKUT), T‑266/17, EU:T:2018:569, paragraph 79).
71 In those circumstances, the low degree of similarity of the signs at issue is unlikely to contribute to the existence of a likelihood of confusion, since they share only the letter group ‘loumi’, which, as such, cannot be regarded as being a dominant element in the contested mark and which, moreover, has weak inherent distinctiveness for a large part of the relevant public who will understand it, in that mark, as a possible reference to halloumi cheese.
72 Secondly, according to the case-law, the degree of distinctiveness of the earlier mark, which determines the extent of the protection conferred by it, is one of the relevant factors which must be taken into account in the present case (see, to that effect, judgment of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, C‑766/18 P, EU:C:2020:170, paragraph 70 and the case-law cited).
73 As regards the distinctiveness of the earlier mark, it cannot be assessed in a specific way on the ground that it is a collective mark and there is no need to call into question the Board of Appeal’s assessment that the degree of inherent distinctiveness of that mark is low (see, to that effect, judgment of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, C‑766/18 P, EU:C:2020:170, paragraphs 71 and 76).
74 In that respect, it should be noted, as has been stated in paragraph 60 above, that most of the evidence submitted by the applicant does not make it possible to find that consumers, confronted with the earlier mark, will associate it with something other than halloumi cheese. Thus, the level of protection conferred by that mark, having regard to its low degree of inherent distinctiveness, must itself be low.
75 Thirdly, it is necessary to take into consideration the fact that the ‘dairy products’ covered by the contested mark are identical to the goods covered by the earlier mark and that those goods, on the one hand, and the services and part of the goods covered by the contested mark, on the other hand, namely the ‘restaurant services; fast food restaurant services; cafeterias; catering’, the ‘dairy substitutes’, the ‘prepared dishes consisting wholly or substantially wholly of dairy products’, the ‘meat extracts; prepared dishes consisting wholly or substantially wholly of meat’ and the ‘sandwiches; sauces’ are similar to varying degrees.
76 On that basis, it should be borne in mind that all the goods and services at issue are everyday consumer goods and that, when purchasing them, the relevant public will display an average level of attention.
77 It could be inferred that there is a likelihood of confusion only if the relevant public is likely to be misled as to the commercial origin of the goods and services covered by the contested mark.
78 In the present case, that likelihood does not appear to be demonstrated, even in respect of the ‘dairy products’ covered by the contested mark, which must be regarded as being identical to the ‘cheese’ covered by the earlier mark.
79 Where the relevant public is confronted with the contested mark and assuming that it also pays attention to the letter group ‘loumi’ contained in that mark, or even that it perceives that that letter group is capable of referring to the concept of halloumi cheese, it will not establish a connection between that mark and the earlier mark, since, on the one hand, it will establish, at most, a connection between that mark and the goods which it covers, namely ‘cheese’, and, on the other hand, the marks at issue, considered as a whole, only have a low degree of similarity. The two errors made by the Board of Appeal in the comparison of the goods and services covered by the marks at issue have no bearing on that finding.
80 It is therefore necessary to reject, as being unfounded, the third plea, alleging that the Board of Appeal erred in taking into account relevant factors capable of contributing to the existence of a likelihood of confusion, and the sixth plea, in so far as it is based on an incorrect assessment of the likelihood of confusion on account of errors allegedly made by the Board of Appeal in the assessment of the distinctive character of the earlier mark.
81 In the light of all of the foregoing considerations, it must be held that, notwithstanding the errors made in the comparison of the goods and services covered by the marks at issue, the Board of Appeal was fully entitled, in the present case, to find that there was no likelihood of confusion between the marks at issue and to dismiss the application for a declaration of invalidity of the contested mark, based on that ground.
The application for annulment of the contested decision based on the sixth plea, inasmuch as it alleges errors of assessment of the reputation of the earlier mark, in so far as that decision dismissed the application for a declaration of invalidity of the contested mark on the basis of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(5) of that regulation
82 In the context of the sixth plea, the applicant also claims that the Board of Appeal made serious errors not only in the assessment of the inherent distinctive character, but also in the assessment of the reputation of the earlier mark.
83 Under Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(5) of that regulation, on application by the proprietor of an earlier mark, a registered EU trade mark is to be declared invalid where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the European Union and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
84 For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation No 207/2009, a number of conditions must, therefore, be satisfied. First, the earlier trade mark and the mark applied for must be identical or similar. Secondly, the earlier trade mark must have a reputation in the European Union, in the case of an earlier EU trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Thirdly, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. As those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (see judgment of 31 May 2017, Alma-The Soul of Italian Wine v EUIPO – Miguel Torres (SOTTO IL SOLE ITALIANO SOTTO il SOLE), T‑637/15, EU:T:2017:371, paragraph 29 and the case-law cited).
85 In paragraph 53 of the contested decision, the Board of Appeal stated that the applicant had not shown that the earlier mark had a reputation, with the result that one of the cumulative conditions necessary for the application of Article 8(5) of Regulation No 207/2009 was not satisfied and that the opposition had to be rejected in so far as it was based on that provision.
86 In that regard, the Board of Appeal correctly noted, in paragraph 29 of the contested decision, that the documents which had been produced by the applicant in order to prove the reputation of the earlier mark merely confirmed that HALLOUMI was perceived by the relevant public as describing a particular type of cheese produced in Cyprus and not as an EU collective mark (see paragraph 60 above).
87 It must be recalled that the presence in the evidence of the word relating to the earlier mark does not necessarily mean that that word corresponds to the use of the mark (see, to that effect, judgment of 14 April 2016, Henkell & Co. Sektkellerei v EUIPO – Ciacci Piccolomini d’Aragona di Bianchini (PICCOLOMINI), T‑20/15, EU:T:2016:218, paragraphs 42 to 50).
88 The Board of Appeal also found that the majority of the evidence, even though its content did not relate specifically to the reputation of the earlier mark, was in any event irrelevant, since it did not concern the relevant period prior to the filing of the contested mark on 22 May 2014, but the years 2015 to 2018.
89 However, there is nothing in the applicant’s arguments capable of calling into question the Board of Appeal’s finding that the reputation of the earlier mark has not been established. The applicant merely relies on the central character of the errors which the Board of Appeal allegedly made in the assessment of the distinctive character of the earlier mark, but without explaining how such errors, even if true, distorted the assessment of the reputation of the earlier mark. In any event, it must be borne in mind, as is apparent from the arguments relating to the assessment of the likelihood of confusion, that the Board of Appeal’s assessment of the distinctive character of the earlier mark is not vitiated by any error.
90 In the light of the foregoing, it must be held that the Board of Appeal did not make any errors of assessment in finding, after examining all the evidence submitted by the applicant, that the earlier mark did not have a reputation in the European Union, with the result that one of the cumulative conditions necessary for the application of Article 8(5) of Regulation No 207/2009 was not satisfied in the present case.
91 The sixth plea must therefore be rejected, in so far as it alleges serious errors affecting the Board of Appeal’s assessment of the reputation of the earlier mark.
92 Since all the pleas raised by the applicant have been rejected as being unfounded, the action must be dismissed in its entirety.
Costs
93 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
94 In the present case, since the applicant has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by EUIPO and the intervener, in accordance with the forms of order sought by those parties.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1. Dismisses the action;
2. Orders Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi to pay the costs.
Schalin | Škvařilová-Pelzl | Nõmm |
Delivered in open court in Luxembourg on 3 May 2023.
Acting Registrar | | President |