JUDGMENT OF THE GENERAL COURT (Third Chamber)
11 October 2023 (*)
(EU trade mark – Opposition proceedings – Application for the EU word mark GRILLOUMI – Earlier national certification word marks ΧΑΛΛΟΥΜΙ HALLOUMI – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑415/22,
Republic of Cyprus, represented by C. Milbradt, lawyer, and S. Malynicz, Barrister‑at‑Law,
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 being
Fontana Food AB, established in Tyresö (Sweden),
THE GENERAL COURT (Third Chamber),
composed of F. Schalin (Rapporteur), President, P. Škvařilová-Pelzl and I. Nõmm, Judges,
Registrar: A. Juhász-Tóth, Administrator,
having regard to the written part of the procedure,
further to the hearing on 19 April 2023,
gives the following
Judgment
1 By its action under Article 263 TFEU, the Republic of Cyprus seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 13 April 2022 (Case R 1284/2018-2) (‘the contested decision’).
Background to the dispute
2 On 25 October 2016, Fontana Food AB filed an application for registration of an EU trade mark with EUIPO in respect of the word sign GRILLOUMI.
3 The services in respect of which registration was sought are in Class 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 correspond to the following description: ‘Services for providing food and drink; coffee-shop services; restaurants’.
4 On 2 February 2017, the Republic of Cyprus filed a notice of opposition, on the basis of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by 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)), and more specifically on the basis of Article 41 of that regulation (now Article 46 of Regulation 2017/1001), to registration of the mark applied for in respect of the services referred to in paragraph 3 above.
5 The opposition was based on, inter alia, the following earlier trade marks:
– the Cypriot certification word mark XAΛΛOYMI HALLOUMI, which was registered on 25 June 1992 under the number 36765 and covers goods in Class 29 corresponding to the following description: ‘Dairy product and specifically folded cheese known as fresh halloumi’;
– the Cypriot certification word mark XAΛΛOYMI HALLOUMI, which was registered on 25 June 1992 under the number 36766 and covers goods in Class 29 corresponding to the following description: ‘Dairy product and specifically folded cheese known as mature halloumi’.
6 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (5) of Regulation No 207/2009 (now Article 8(1)(b) and (5) of Regulation 2017/1001).
7 On 8 May 2018, the Opposition Division rejected the opposition and ordered the Republic of Cyprus to pay the costs.
8 On 6 July 2018, the Republic of Cyprus filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.
9 By decision of 29 May 2019 (‘the decision of 29 May 2019’), the Fourth Board of Appeal of EUIPO dismissed the appeal and ordered the Republic of Cyprus to pay the costs incurred for the purposes of the opposition and appeal proceedings.
10 As regards, in particular, the assessment of the likelihood of confusion pursuant to Article 8(1)(b) of Regulation No 207/2009, the Board of Appeal found that the goods and services covered by the marks at issue were dissimilar, with the result that the opposition was unfounded with regard to that provision. In particular, it took the view that, although the services covered by the mark applied for could be considered to be similar to certain foodstuffs on account of the existence of a complementary connection, the existence of such a connection had not, however, been established as regards cheese.
11 By application lodged at the Court Registry on 9 August 2019, the Republic of Cyprus sought the annulment of the decision of 29 May 2019.
12 By judgment of 8 December 2021, Cyprus v EUIPO – Fontana Food (GRILLOUMI) (T‑556/19, not published, EU:T:2021:864), the Court annulled the decision of 29 May 2019. It held, in essence, that the Board of Appeal had erred in finding that the goods covered by the earlier marks and the services covered by the contested mark were dissimilar, which had led it to conclude, wrongly, that one of the cumulative conditions for there to be a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 was not satisfied. It took the view that, in those circumstances, the Board of Appeal was required to carry out an examination of the other factors that are capable of contributing towards the existence of such a likelihood of confusion, before carrying out a global assessment of that likelihood of confusion.
13 Since the case was remitted to the Second Board of Appeal of EUIPO, that Board of Appeal adopted the contested decision, by which it dismissed the appeal.
14 Relying on, inter alia, the grounds of the judgment of 8 December 2021, GRILLOUMI (T‑556/19, not published, EU:T:2021:864), the Board of Appeal found, in paragraphs 32 and 33 of the contested decision, that the relevant public consisted of the general public, which would display a normal level of attention when purchasing the goods and services at issue, and that the assessment had to be based on the perception of that public in Cyprus. In paragraph 36 of the contested decision, it found that there was, on account of the existence of a complementary connection, a low degree of similarity between the goods covered by the earlier marks and the services covered by the mark applied for. In paragraph 51 of the contested decision, it took the view that the earlier marks had a low degree of inherent distinctiveness and that there was nothing that made it possible to find that they had acquired enhanced distinctiveness through use. In paragraphs 59, 61 and 62 of the contested decision, it found that the marks at issue were visually, phonetically and conceptually similar a below-average degree. In paragraphs 72 and 73 of the contested decision, it found that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, since the relevant public would establish, at most, a link between the earlier marks and halloumi cheese and the marks at issue, considered as a whole, were similar only to a below-average degree.
Forms of order sought
15 The Republic of Cyprus claims that the Court should:
– annul the contested decision;
– order EUIPO and the other party to the proceedings before EUIPO to pay the costs.
16 EUIPO contends that the Court should:
– dismiss the action;
– order the Republic of Cyprus to pay the costs, should a hearing be scheduled.
Law
17 It must be noted at the outset, as EUIPO submits, that the Republic of Cyprus does not call into question the Board of Appeal’s findings, as set out in the contested decision, that the opposition, in so far as it was based on Article 8(5) of Regulation 2017/1001, had to be rejected. Those findings must therefore be regarded as final, since the present action relates exclusively to a possible infringement of Article 8(1)(b) of Regulation No 207/2009.
18 Given the date on which the application for registration at issue was filed, namely 25 October 2016, which is decisive for the purposes 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, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited). Moreover, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the present case is governed by the procedural provisions of Regulation 2017/1001.
19 Consequently, in the present case, so far as concerns the substantive rules, the references made by the Board of Appeal in the contested decision and by the parties to the proceedings in their written pleadings to Article 8(1)(b) or Article 8(5) of Regulation 2017/1001 must be understood as referring to Article 8(1)(b) or Article 8(5) of Regulation No 207/2009.
20 In support of the action, the Republic of Cyprus relies, in essence, on a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009, which is divided into three parts. The first part alleges that an incorrect criterion was used when analysing the likelihood of confusion in so far as, when faced with certification marks, the Board of Appeal applied, by analogy, the case-law relating to individual marks. The second part alleges an error in the assessment of the distinctive character of the earlier marks, which the Board of Appeal assessed as if it were dealing with individual marks. The third part alleges an error in the assessment of the degree of similarity between the goods and services covered respectively by the marks at issue, which the Board of Appeal incorrectly categorised as low, whereas, when faced with certification marks, it should have carried out a specific comparison.
21 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered 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. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009 (now Article 8(2)(a)(ii) of Regulation 2017/1001), ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
The relevant public and its level of attention
22 As regards the definition of the relevant public, in paragraphs 32 and 33 of the contested decision, the Board of Appeal, referring to paragraph 34 of the judgment of 8 December 2021, GRILLOUMI (T‑556/19, not published, EU:T:2021:864), and to paragraph 37 of the judgment of 8 December 2021, Cyprus v EUIPO – Fontana Food (GRILLOUMI BURGER) (T‑593/19, not published, EU:T:2021:865), found that the mark applied for and the earlier marks covered commonly used services and everyday consumer goods respectively, which were all aimed at the general public, which would, when purchasing them, display a generally average level of attention. It took the view that, since the earlier marks were registered in Cyprus, the assessment had to be based on the perception of the general public in that Member State.
23 Those findings, which are not, moreover, disputed by the parties and which, in part, appear in a judgment of the General Court which, in the present case, has the force of res judicata, must be upheld.
The comparison of the goods and services at issue
24 In the context of the third part, the Republic of Cyprus argues that, at the stage of the comparison of the goods and services respectively covered by the marks at issue, the Board of Appeal erred in referring to the grounds of the judgment of 8 December 2021, GRILLOUMI (T‑556/19, not published, EU:T:2021:864), by applying the criteria relating to the similarity of the goods and services at issue as they are applied in respect of individual trade marks. It submits that it thus did not take the particular context of certification marks into account when it categorised the degree of similarity between those goods and services as low.
25 According to the Republic of Cyprus, services covered by a mark which is similar or identical to an earlier certification mark must be regarded as being similar to more than a low degree to the goods with which they are likely to be associated. It contends that that would allow account to be taken of the factor that those services are capable of being provided in conjunction with certified goods, the quality of which is guaranteed. It submits that that factor, which was disregarded in the present case, would have been particularly relevant in determining whether there was a complementary connection between the goods and services at issue.
26 EUIPO disputes the arguments of the Republic of Cyprus.
27 In that regard, it must be borne in mind that, in an action before the EU judicature against a decision of a Board of Appeal of EUIPO, EUIPO is required, under Article 266 TFEU and Article 72(6) of Regulation 2017/1001, to take the necessary measures to comply with any judgment ordering annulment that may be delivered by the EU judicature (judgment of 14 July 2021, Veronese v EUIPO – Veronese Design Company (VERONESE), T‑749/20, not published, EU:T:2021:430, paragraph 29). In order to comply with a judgment annulling a measure and to implement it fully, the institution responsible for adopting that measure is required to have regard not only to the operative part of the judgment but also to the grounds which led to that ruling and constitute its essential basis, in so far as they are necessary for the purposes of determining the exact meaning of what is stated in the operative part. It is those grounds which, on the one hand, identify the precise provision held to be illegal and, on the other, indicate the specific reasons which underlie the finding of illegality contained in the operative part and which the institution concerned must take into account when replacing the annulled measure (judgment of 14 July 2021, VERONESE, T‑749/20, not published, EU:T:2021:430, paragraph 30).
28 Since the judgment of 8 December 2021, GRILLOUMI (T‑556/19, not published, EU:T:2021:864), by which the Court annulled the decision of 29 May 2019, had become final and therefore had the force of res judicata, the Second Board of Appeal was required, when the present case was remitted to it, to refer to the grounds set out in that judgment in order to comply with them and to implement them fully.
29 Therefore, as EUIPO correctly submits, it cannot be criticised for having endorsed, in the contested decision, the grounds set out in paragraphs 42 and 43 of the judgment of 8 December 2021, GRILLOUMI (T‑556/19, not published, EU:T:2021:864), as regards the comparison of the goods and services respectively covered by the marks at issue.
30 It follows that the Board of Appeal was fully entitled to find, in essence, that, since the goods in Class 29, including cheese, were necessarily used in the serving of food and drink, it had to be found that there was a complementary connection and, consequently, a degree of similarity which had to be categorised as low between, on the one hand, the ‘services for providing food and drink; coffee-shop services; restaurants’ in Class 43 covered by the mark applied for and, on the other hand, the ‘cheese’ in Class 29 covered by the earlier marks.
31 The third part of the plea must therefore be rejected as unfounded.
The comparison of the signs at issue
32 The Board of Appeal found, in paragraphs 58 to 62 of the contested decision, that the marks at issue were visually similar to, at most, a below-average degree and phonetically and conceptually similar to a below-average degree.
33 It must be stated that the grounds on which the contested decision is based as regards the comparison of the signs at issue are not disputed by the parties and that they are, furthermore, very broadly comparable to those set out in the judgment of 8 December 2021, GRILLOUMI BURGER (T‑593/19, not published, EU:T:2021:865). It is therefore necessary to refer to those grounds, which appear to be correct. However, when the Board of Appeal categorised the degree of visual similarity between the signs at issue as, ‘at most, below average’ and the degree of phonetic and conceptual similarity between them as ‘below average’, it must be held that it was referring to the fact that there was between those signs a degree of similarity which has to be categorised as low.
The distinctive character of the earlier marks
34 In the context of the second part of the plea, the Republic of Cyprus argues that, unlike individual marks, the distinctiveness of which is conceived of as the propensity of a mark to serve as an indication of the origin of the goods that it covers, certification marks refer to a guarantee of quality, with the result that the commercial origin of the goods and the identity of the trader are secondary for consumers. Furthermore, it submits that many certification marks would be descriptive if the criteria specific to individual marks were to be applied. In that regard, it contends that a degree of ‘interchangeability’ with the name of the category of goods which it covers enables a good certification mark to gain currency, without undermining its essential function. It submits that it is, moreover, common for certification marks to become synonymous with the names of the goods that they cover. It argues that the concept of distinctiveness therefore needs to be modified as regards certification marks, which is, moreover, acknowledged by the EUIPO Guidelines for examination of European Union trade marks and Article 83(3) of Regulation 2017/1001. It contends that the Board of Appeal therefore erred in stating, in paragraph 48 of the contested decision, that certification marks are simply not protected under Article 8(1)(b) of Regulation No 207/2009 as anything other than ordinary individual marks.
35 The Republic of Cyprus submits that, in the present case, consumers recognise HALLOUMI as a name guaranteeing conformity with certain standards, even if they do not know all the details with regard to them. Furthermore, it argues that it was not for it to establish the existence of a particular level of distinctiveness, as the validity of the earlier marks, which had been registered for almost 25 years, had not been called into question. It contends that the Board of Appeal was not entitled to rule on the public opinion and perception of the Cypriot public without providing any reasoning and without any evidence in support from the other party to the proceedings before the Board of Appeal.
36 EUIPO disputes the arguments of the Republic of Cyprus.
37 The assessment of the distinctive character of a trade mark is of particular importance in so far as the assessment of the likelihood of confusion is carried out globally and implies some interdependence between the factors taken into consideration (judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33), with the result that the more distinctive the earlier mark, the greater will be the likelihood of confusion (judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18). Accordingly, a low degree of distinctiveness means that there must be a greater degree of similarity between the signs at issue or between the goods and services concerned in order for it to be concluded that there is a likelihood of confusion. Consequently, an underestimation of the distinctive character of the earlier marks on the part of the Board of Appeal is likely to vitiate the contested decision with an error as regards the assessment of the likelihood of confusion (see, to that effect, judgment of 25 September 2018, Cyprus v EUIPO – M. J. Dairies (BBQLOUMI), T‑384/17, not published, EU:T:2018:593, paragraph 36).
38 Where an opposition is based on the existence of an earlier national mark, the checks relating to the degree of distinctive character of that mark have, however, limits, since they cannot lead to a finding that one of the absolute grounds for refusal laid down in, inter alia, Article 7(1)(b) and (c) of Regulation No 207/2009 (now Article 7(1)(b) and (c) of Regulation 2017/1001), namely the lack of distinctive character or the purely descriptive character of that mark, applies. Thus, in order to avoid infringing Article 8(1)(b) of Regulation No 207/2009, read in conjunction with Article 8(2)(a)(ii) of that regulation, it is necessary to acknowledge that an earlier national mark on which an opposition to registration of an EU trade mark is based has a certain degree of distinctiveness (judgment of 24 May 2012, Formula One Licensing v OHIM, C‑196/11 P, EU:C:2012:314, paragraphs 43 to 47). It must, in any event, be held that a validly registered earlier right has a minimum degree of inherent distinctiveness merely because it has been registered (see judgment of 8 December 2021, GRILLOUMI BURGER, T‑593/19, not published, EU:T:2021:865, paragraph 63 and the case-law cited).
39 It must also be pointed out that Regulation 2017/1001, which has been applicable as from 1 October 2017, thenceforth included provisions relating to the EU certification mark, which it defines, in Article 83(1), as a trade mark ‘capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services which are not so certified’ (judgment of 8 December 2021, GRILLOUMI BURGER, T‑593/19, not published, EU:T:2021:865, paragraph 64).
40 As regards national certification marks, Member States, like the Republic of Cyprus, have the option of authorising their registration, as follows from Article 15 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), which is relevant ratione temporis in the light of the date of registration of the earlier marks (judgment of 8 December 2021, GRILLOUMI BURGER, T‑593/19, not published, EU:T:2021:865, paragraph 65).
41 Consequently, the earlier marks constitute ‘trade marks registered in a Member State’, within the meaning of Article 8(2)(a)(ii) of Regulation No 207/2009, which may be relied on in support of opposition proceedings (see, to that effect, judgment of 8 December 2021, GRILLOUMI BURGER, T‑593/19, not published, EU:T:2021:865, paragraph 66).
42 Since the earlier marks come within the category of trade marks registered in a Member State, it appears justified to take into account national law in order to prove their validity. However, it must be borne in mind that the EU trade mark regime which stems from Regulation No 207/2009 must be applied independently of any national system, since it is an autonomous and self-sufficient regime. Consequently, subject to the limits laid down by the judgment of 24 May 2012, Formula One Licensing v OHIM (C‑196/11 P, EU:C:2012:314), the assessment of the inherent distinctive character of the earlier marks must be carried out independently, on the basis of EU law alone.
43 In the present case, even though, in the light of the case-law which has been referred to in paragraph 38 above, it is necessary to accord the terms ‘halloumi’, in Latin characters, or ‘χαλλούμι’, in Greek characters, which were registered jointly as national certification marks, a certain distinctiveness, that does not mean that marks consisting solely of those terms must per se be accorded a degree of inherent distinctive character which is such that it would provide them with unconditional protection that would make it possible to oppose any registration of a later mark including those terms (see, to that effect, judgment of 8 December 2021, GRILLOUMI BURGER, T‑593/19, not published, EU:T:2021:865, paragraph 68 and the case-law cited).
44 In that regard, it must be pointed out that it is common ground that the earlier marks consist exclusively of the terms ‘halloumi’, in Latin characters, or ‘χαλλούμι’, in Greek characters, and that those terms correspond to the generic name of a type of cheese produced in Cyprus. As is stated in paragraph 44 of the contested decision, the Court has already ruled, on several occasions, that the word ‘halloumi’ is perceived by the general public, in particular the Cypriot public, as referring to a speciality cheese from Cyprus (see, to that effect, judgment of 8 December 2021, GRILLOUMI BURGER, T‑593/19, not published, EU:T:2021:865, paragraph 69 and the case-law cited).
45 Consequently, in the light of the descriptiveness of the sole terms of which the earlier marks consist, it is apparent that the Board of Appeal did not err in finding that those marks had an inherent distinctive character which had to be regarded as weak.
46 As regards enhanced distinctiveness acquired through use, it must be stated, as observed by the Board of Appeal, that there is nothing in the evidence submitted by the Republic of Cyprus before the Board of Appeal, as analysed in paragraph 46 of the contested decision, to contradict the Board of Appeal’s finding that the earlier marks had not acquired enhanced distinctiveness.
47 The evidence in question, consisting of, inter alia, data relating to production volumes and sales volumes in recent years, promotional and marketing efforts, extracts from cooking magazines or press articles, relates, for the most part, to halloumi cheese as a speciality cheese from Cyprus over many years, but it is not possible to link the term ‘halloumi’, in Latin characters, or ‘χαλλούμι’, in Greek characters, used generically to refer to a type of cheese, to the certification regime established as from 1992. As the Board of Appeal correctly pointed out, those various items of evidence are, in essence, identical to those which had already been analysed by the Court in the case which gave rise to the judgment of 8 December 2021, GRILLOUMI BURGER (T‑593/19, not published, EU:T:2021:865, paragraph 71), by which the Court reached the same conclusions.
48 Accordingly, it must be held that the term ‘halloumi’ or ‘χαλλούμι’ will be directly understood by the relevant public as describing the characteristics of the product, or even its origin in so far as it is a traditional product from Cyprus, and not as an indication of its certified quality. It must therefore be held that the earlier marks, which consist exclusively of the terms ‘halloumi’, in Latin characters, and ‘χαλλούμι’, in Greek characters, since they are descriptive of the characteristics and origin of the product which they cover, have only a weak inherent distinctive character and that the existence of enhanced distinctiveness must be rejected.
49 In any event, it must be pointed out that the question of whether the actual compliance by the person seeking registration of the mark applied for with the characteristics guaranteed by the Republic of Cyprus as proprietor of the earlier certification marks forms part of the essential function of those marks is outside the scope of protection afforded by Article 8(1)(b) of Regulation No 207/2009. That question concerns, at most, the use of a mark which could harm the essential function of a certification mark and mislead the public regarding the certification of the characteristics of the goods (see, to that effect, judgment of 25 September 2018, BBQLOUMI, T‑384/17, not published, EU:T:2018:593, paragraph 48).
50 Lastly, it must be pointed out, as the Board of Appeal stated in paragraph 49 of the contested decision, that the filing by the Republic of Cyprus of an application for a protected designation of origin (PDO) in respect of halloumi cheese has no effect on the lawfulness of the contested decision, since the opposition was not based on Article 8(4a) of Regulation No 207/2009 (now Article 8(6) of Regulation 2017/1001).
51 In that regard, it must be observed, as submitted, in essence, by EUIPO, that the Republic of Cyprus has not proved that the particular certification scheme on which it relied is anything other than an optional scheme, with the result that economic operators in Cyprus retain the option of using the word ‘halloumi’ for their cheese, without being obliged to comply with that certification scheme, notwithstanding the obligation which those operators may have to comply with the specification governing the PDO from which cheese produced under the name ‘Χαλλούμι (Halloumi)/Hellim’, following its registration in April 2021 in the register of protected designations of origin and protected geographical indications, now benefits.
52 In those circumstances, the second part of the plea must be rejected as unfounded.
The global assessment of the likelihood of confusion
53 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).
54 It must be borne in mind that, in paragraph 72 of the contested decision, the Board of Appeal found that a likelihood of confusion had not been demonstrated. In that regard, it stated that, if the relevant public came into contact with the mark applied for and assuming that it also paid attention to the group of letters ‘lloumi’ contained in that mark, or even that it perceived that that group of letters was capable of referring to the concept of halloumi cheese, it would not establish a link between that mark and the earlier marks, since, first, it would establish, at most, a link between those earlier marks and halloumi cheese and, secondly, the marks at issue, considered as a whole, were similar only to a below-average degree.
55 In the context of the first part of the plea, the Republic of Cyprus submits that, when examining whether there was a likelihood of confusion, the Board of Appeal erred when it referred to the findings, which were themselves incorrect, in the judgment of 8 December 2021, GRILLOUMI (T‑556/19, not published, EU:T:2021:864), and that it examined whether consumers could be misled as to the commercial origin of the goods and services at issue, whereas that criterion can apply only to individual marks or collective marks, the essential function of which is different from that of certification marks.
56 According to the Republic of Cyprus, since, inter alia, Cypriot law, which governs the earlier marks, defines them in terms of their capacity to distinguish certified goods from other goods, a certification mark cannot indicate as commercial origin either the proprietor or one or more authorised producers, because the latter may constitute a large, fluctuating group. It contends that, in almost all legal systems which have certification marks, those marks are not associated with an authorised producer but with an open group consisting of anyone who complies with the certified standards. It argues that the use of an incorrect criterion inevitably led the Board of Appeal to make an error in its ultimate assessment as to whether there was a likelihood of confusion.
57 EUIPO disputes the arguments of the Republic of Cyprus.
58 It must be borne in mind that, for the reasons set out in paragraphs 27 and 28 above, when the present case was referred back to it, the Second Board of Appeal was required, under Article 266 TFEU and Article 72(6) of Regulation 2017/1001, to refer to the grounds contained in the judgment of 8 December 2021, GRILLOUMI (T‑556/19, not published, EU:T:2021:864), as regards, in particular, the considerations to be taken into account for the purposes of assessing the likelihood of confusion in the light of the nature of the earlier national certification marks relied on in support of the opposition.
59 It must be pointed out that, in paragraphs 26 to 29 of the contested decision, the Second Board of Appeal expressly referred to the principles set out in paragraphs 28 to 30 of the judgment of 8 December 2021, GRILLOUMI (T‑556/19, not published, EU:T:2021:864), in which the Court ruled on the meaning of the concept of ‘likelihood of confusion’, within the meaning of Article 8(1)(b) of Regulation No 207/2009, where, as in the present case, national certification marks are relied on in support of opposition proceedings.
60 The General Court held, in particular, that, where the earlier marks relied on in the opposition were national certification marks, which had been registered under national legislation transposing Directive 89/104, the likelihood of confusion had to be understood – by analogy with the rules governing collective marks – as being the risk that the public might believe that the goods or services covered by those earlier trade marks and those covered by the trade mark applied for all originated from persons authorised by the proprietor of those earlier marks to use them or, where appropriate, from undertakings economically linked to those persons or to that proprietor. It added that, furthermore, although, in the event of opposition by the proprietor of a certification mark, the essential function of that type of mark had to be taken into account in order to understand what was meant by likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, the fact remained that the case-law establishing the criteria with regard to which the existence of such a likelihood of confusion had to be assessed in practice was applicable to cases concerning an earlier certification mark.
61 It is indeed true that, in paragraph 71 of the contested decision, in the context of the global assessment of the likelihood of confusion, the Board of Appeal also stated that it could be inferred that there was a likelihood of confusion only ‘if the relevant public [wa]s likely to be misled as to the commercial origin of the goods covered by the mark applied for’. That statement, although it is at odds with the grounds set out in paragraphs 26 to 29 of the contested decision, does not, however, have any effect on the accuracy of the assessment and the conclusions drawn by the Board of Appeal in that decision, as regards the lack of any likelihood of confusion.
62 It is apparent that, in the contested decision, the Board of Appeal did not apply an incorrect criterion, based on the commercial origin, a criterion which was referred to in paragraph 71 of that decision, but, in practice, applied the principles set out in paragraphs 28 to 30 of the judgment of 8 December 2021, GRILLOUMI (T‑556/19, not published, EU:T:2021:864), according to which, if the relevant public believes that the goods covered by the mark applied for are certified by the proprietor of the earlier certification mark, there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
63 The Board of Appeal therefore acted, in practice, within the limits imposed on it by Article 266 TFEU and Article 72(6) of Regulation 2017/1001, for which it cannot be criticised by the Republic of Cyprus.
64 The first part of the plea must therefore be rejected as unfounded.
65 As to the remainder, in view of all of the foregoing considerations, it must be held that, in the contested decision, the Board of Appeal was fully entitled to find that there was no likelihood of confusion.
66 Consequently, the three parts of the single plea must be rejected and the action must therefore be dismissed in its entirety as unfounded.
Costs
67 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.
68 Since the Republic of Cyprus has been unsuccessful in the present case, it must be ordered to bear its own costs and to pay the costs incurred by EUIPO, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1. Dismisses the action;
2. Orders the Republic of Cyprus to pay the costs.
Schalin | Škvařilová-Pelzl | Nõmm |
Delivered in open court in Luxembourg on 11 October 2023.
V. Di Bucci | | S. Papasavvas |