The Advocate General of the European Court J. KOKOTT has issued her opinion on case C‑766/18 P, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO. The case concerns the following:
On 9 July 2014, M. J. Dairies EOOD filed an application with EUIPO for registration of the colour figurative mark reproduced below:
The goods and services for which registration was sought are in Classes 29, 30 and 43, for certain foodstuffs, including cheese, and certain catering services.
The Foundation is the proprietor of the collective word mark HALLOUMI, which was registered by EUIPO on 14 July 2000 under number 1082965 for goods in Class 29 with the description ‘cheese’. On 12 November 2014, it filed a notice of opposition against the application, relying in particular on a likelihood of confusion within the meaning of Article 8(1)(b) of the Trade Mark Regulation.
The Opposition Division rejected the opposition and the appeal filed against its decision was also unsuccessful. Finally, by the judgment under appeal 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), the General Court also dismissed the action brought against the decision made by the Board of Appeal.
The Advocate dismissed the Foundation’s appeal with the following arguments:
At the hearing, EUIPO thus rightly argued that preferential status under Article 66(2) of the Trade Mark Regulation has a similar effect to the registration of a descriptive mark in accordance with the previously mentioned judgment in Formula One Licensing v OHIM. Such a mark is accorded the necessary minimum degree of distinctive character to justify its registration, but not necessarily increased distinctive character.
The General Court does not find otherwise when, in paragraph 71 of the judgment under appeal, it acknowledges the HALLOUMI mark as having only a minimum degree of distinctive character and thus rejects a likelihood of confusion.
In paragraphs 50 to 53 and 70 of the judgment under appeal, it expressly held that the HALLOUMI mark is not perceived as a designation of (individual or collective) commercial origin, but as a designation of a speciality cheese. The description of certain goods is not, however, accorded preferential status by Article 66(2) of the Trade Mark Regulation, even though the public might associate them with a particular geographical origin. Moreover, the assessment of the perception of a mark is a factual assessment and thus falls outside the scope of the review by the Court of Justice in appeal proceedings.
Thus, the distinctive character of a geographical collective mark is also to be assessed according to the extent to which it identifies the collective commercial origin of the goods or services concerned.
As has already been explained, however, according to the factual findings made by the General Court, the HALLOUMI mark gives rise to such identification at most to a low degree. Consequently, the General Court’s reasoning regarding the distinctive character of the HALLOUMI mark and the likelihood of confusion, and in particular paragraphs 41 and 71 of the judgment under appeal, in which the General Court acknowledges the HALLOUMI mark as having only a minimum degree of distinctive character which is not sufficient to give rise to a likelihood of confusion with the mark at issue, is not vitiated by an error in law.
Nor is this conclusion called into question by the fact that it significantly restricts the effectiveness of Article 66(2) of the Trade Mark Regulation and the protection of geographical collective marks. The proprietors of a geographical collective mark still enjoy minimum protection, permitting them to prevent registration of identical marks for the same products. At the same time, they can influence the perception of the mark if they use it in such a way that it acquires distinctive character.
Ultimately, there is also no need for more extensive protection because the rules governing protected designations of origin and protected geographical indications can provide sufficient protection outside the scope of trademark law. Those rules have the additional benefit, compared with the geographical collective mark, that under Article 12(1) of Regulation No 1151/2012 protected designations of origin and protected geographical indications may be used by any operator marketing a product conforming to the corresponding specification. Membership of an association, as provided for in Article 67(2) of the Trade Mark Regulation, is unnecessary in this regard. Furthermore, EUIPO rightly asserts that it would be contradictory if producers’ associations could obtain equivalent or even stronger protection for geographical designations on the basis of trademark law than in the protected designation of origin system.