Say ‘halloumi’- the battle of cheeses before the European Court

The long running battle between HALLOUMI and BBQloumi started in 2014, when a Bulgarian dairy company filed an application for the registration of a figurative mark containing the verbal element BBQloumi as a European trademark. This application was opposed by the Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi (hereafter the “Foundation”), on the basis of its earlier European collective trademark over HALLOUMI.

The Foundation’s opposition was rejected by the Opposition Division of the EUIPO by a decision dated 15 January 2016 which found that, though there were some conceptual similarities between the signs, these were not sufficient to cause a consumer to confuse the two signs. Having compared the marks as a whole, it was held that although the signs coincided to a certain degree from a conceptual point of view for a part of the public familiar with the earlier mark, the verbal elements, the colours and the additional figurative elements that were not shared, were sufficient to outweigh the similarities between them, especially taking into account that the earlier mark was a word mark and the contested one not, and also the fact that the beginnings were different.

Upon appeal by the Foundation, the Board of Appeal of the EUIPO dismissed it, stating that the term “HALLOUMI” is of low inherent distinctiveness as a consequence of its longstanding and almost generic use. The EUIPO added that, there was no likelihood of confusion between the two marks, namely “HALLOUMI” and “BBQloumi”, as they were phonetically and conceptually dissimilar and only the five last letters of each word were the same.

The Foundation continued its efforts to protect the HALLOUMI mark and brought an action for the annulment of the contested decision to the General Court of the European Union. The Foundation stated that the Board of Appeal of the EUIPO had wrongly classified the term “HALLOUMI” as a generic one and that it did not consider its collective character or the similarity in the classification of the goods. Moreover, it argued that the Board of Appeal had wrongly concluded that there was no likelihood of confusion.

The Foundation put forward the argument that the mark “HALLOUMI” enjoys a certain degree of distinctiveness, sufficient to establish a likelihood of confusion between the two signs. It insisted on the fact that the two marks have the same ending “LOUMI” and that consumers are more likely to be drawn to that last word element, as “LOUMI” has no other meaning other than that of an abbreviation for the term “HALLOUMI”.

Unfortunately for the Foundation, the General Court upheld the decision of the Board of Appeal of the EUIPO. Although the General Court asserted that there may have been some errors in the comparison of the two signs on the part of the Board of Appeal, the similarities of the two signs were not sufficient in order to establish a likelihood of confusion.

When revaluating the case, upon further request by the Court of Justice, the General Court re-established the original judgment and found again that there was no risk of confusion in this case. The Court insisted that consumers are more likely to focus on the initial part “BBQ” and associate the term “BBQloumi” with barbecue rather than with HALLOUMI cheese. In the end, the General Court dismissed the action as it concluded that the low similarity of the two marks along with the weak inherent distinctiveness of the “HALLOUMI” trademark were insufficient to establish a likelihood of confusion and for the public to associate the two goods.

Unfortunately, this decision may harm the future of HALLOUMI, or “white gold” as is characterised in Cyprus due to its economic importance, by setting a precedent for dairy producers around the Union to start putting forward their version of halloumi cheese by adding different prefixes to differentiate themselves.

Consequently, an alternative strategy, by way of a protected designation of origin, may be the Foundation’s last resort.