Cyprus v EUIPO - Papouis Dairies (fino Cyprus Halloumi Cheese) (EU trade mark - Judgment) [2018] EUECJ T-417/17 (23 November 2018)

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(EU trade mark — Opposition proceedings — Application for EU figurative mark fino Cyprus Halloumi Cheese — Earlier United Kingdom certification word mark HALLOUMI — Rejection of the opposition — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))

Republic of Cyprus, represented by S. Malynicz QC, and V. Marsland, Solicitor,

European Union Intellectual Property Office (EUIPO), represented initially by M. Rajh and D. Walicka, and subsequently by D. Gája and D. Walicka, acting as Agents,

the other party to the proceedings before the Board of Appeal of EUIPO, and intervener before the General Court, being

Papouis Dairies Ltd, established in Nicosia (Cyprus), represented by N. Korogiannakis, lawyer,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 20 April 2017 (Case R 2650/2014-4) concerning opposition proceedings between the Republic of Cyprus and Papouis Dairies,

composed of M. Prek, President, F. Schalin (Rapporteur) and J. Costeira, Judges,

having regard to the response of EUIPO lodged at the Court Registry on 29 August 2017,

having regard to the response of the intervener lodged at the Court Registry on 16 October 2017,

having regard to the decision of 30 November 2017 joining Cases T‑417/17 and T‑703/17 for the purposes of the oral part of the procedure,

1 On 12 September 2012, the intervener, Papouis Dairies Ltd, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to 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)).

2 The mark for which registration was sought is the following figurative sign in colour:

3 The goods and services for which registration was sought, after the restriction applied during the proceedings before EUIPO, fall within Class 29 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 consist of the following: ‘Cheese made out of cow’s milk and/or sheep’s milk and/or goat’s milk (from any milk proportion and combination), rennet’.

4 The trade mark application was published in European Union Trade Marks Bulletin No 149/2012 of 22 November 2012.

5 On 22 February 2013, the Republic of Cyprus, filed, under Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001), a notice of opposition to registration of the trade mark applied for in respect of the goods and services referred to in paragraph 3 above.

6 The opposition was based on the earlier United Kingdom word certification mark HALLOUMI, registered on 22 February 2002 and renewed until 2017 under number 1451888 (‘the earlier mark’), designating goods in Class 29 and corresponding to the following description: ‘Cheese made from sheep’s and/or goat’s milk; cheese made from blends of cow’s milk; all included in Class 29’.

7 The grounds put forward 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).

8 On 22 August 2014, the Opposition Division rejected the opposition and ordered the Republic of Cyprus to pay the costs.

9 On 16 October 2014, the Republic of Cyprus filed an appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.

10 By decision of 20 April 2017 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal and ordered the Republic of Cyprus to pay the costs of the opposition and appeal proceedings.

11 First of all, the Board of Appeal recalled that, in accordance with the case-law, for the marks at issue there is an absolute threshold of similarity below which, since those marks are dissimilar, it is possible to eliminate the existence of a likelihood of confusion without regard to other factors.

12 Next, after having stated that the relevant public was made up of the average final consumer, given that cheese was a relatively common consumer product, the Board of Appeal analysed the mark applied for. It noted that the word element ‘fino’ was dominant, since it would most hold the reader’s attention. The series of words ‘cyprus halloumi cheese’ had only a secondary place in the mark applied for and served to explain the nature of the goods designated, in particular by the use of the words ‘cyprus’ and ‘cheese’, whether or not the word ‘halloumi’ was perceived as being descriptive. The Board of Appeal also found that the word ‘fino’, notwithstanding its possible resemblance to the English word ‘fine’, was distinctive and that, although it could be an Italian or Spanish word, the average United Kingdom consumers did not in any event speak those languages.

13 Finally, the Board of Appeal made a comparison of the signs at issue. Firstly, it found that those signs were visually different since they coincide only by the word element ‘halloumi’, placed in third position among the word elements composing the sign at issue, and since the figurative presentation in that sign, while not readily distinctive, strengthens the differences from the earlier sign.

14 Secondly, on the phonetic level, the Board of Appeal found that the signs at issue were also different. It noted that it was unlikely that, in the sign applied for, the word elements other than ‘fino’ would be pronounced while, in any event, if the four words which form those word elements were all to be pronounced, namely ‘fino Cyprus halloumi cheese’, their pronunciation would differ from that of the word ‘halloumi’, since it is a longer expression including three words absent from the earlier mark.

15 Thirdly, on the conceptual level, the Board of Appeal also held that the signs at issue were not similar. The mere presence of the term ‘halloumi’ in the sign applied for is not such as to give rise to such similarity, notwithstanding the possible meaning of the other words composing the word element of the sign applied for. The Board of Appeal emphasises the contradiction in the assertion of the Republic of Cyprus that the term ‘halloumi’ is neither used nor perceived in a generic context as designating a type of cheese, while the Court ruled to the contrary in the judgment of 7 October 2015, ΧΑΛΛΟΥΜΙ and HALLOUMI (T‑292/14 and T‑293/14, EU:T:2015:752). No argument can be drawn from the presence of that term in a mark in the context of the assessment of a likelihood of confusion since that mark contains other word elements.

16 The references by the Republic of Cyprus to the nature of United Kingdom certification marks and the scope of the protection which they confer under national law are irrelevant at the stage of the comparison of the signs at issue, since they apply only in the context of the global assessment of the likelihood of confusion.

17 In conclusion, the signs at issue must be regarded as being dissimilar, even to a certain degree as the Opposition Division found, since it is not appropriate to take account of a single, isolated element of the sign applied for in order to compare it to the earlier sign. Where there is no similarity of the signs at issue, one of the conditions laid down in Article 8(1)(b) of Regulation No 207/2009 is accordingly not satisfied, so that the opposition made on the basis of that provision is unfounded.

18 The Board of Appeal also took the view that the opposition based on Article 8(5) of Regulation No 207/2009 must be rejected, since the condition that the marks at issue be identical or similar was not satisfied. For the sake of completeness, the Board of Appeal also stated that the condition that the earlier mark must have a reputation was also not satisfied.

The single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009

21 In support of its action, the Republic of Cyprus raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, which plea consists of two parts. Firstly, the Republic of Cyprus complains that the Board of Appeal wrongly assessed the results of the visual, conceptual and phonetic comparison of the marks at issue from the point of view of the relevant consumers, namely the United Kingdom consumers. Secondly, the Board incorrectly assessed the degree of distinctiveness of the earlier mark and the likelihood of confusion.

22 As preliminary observations, the Republic of Cyprus sets out its understanding of the nature and objective of national certification marks under the law of the Member States such as the United Kingdom. It submits that, by application of Article 1 of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25), certification marks are authorised under EU law and must therefore be given full effect. By application of that directive, the United Kingdom legislation on trade marks, as set out in the Trade Marks Act 1994, includes the registration of those marks. By virtue of that legislation, a certification mark is defined as a mark indicating that the goods or services in connection with which it is used are certified by the proprietor of the mark and may have certain characteristics, in particular, designating a geographical origin. In essence, the distinctive function of certification marks is to be understood as enabling the relevant public to distinguish the goods and services which comply with the certification standards and have certain characteristics from other goods and services. Furthermore, it is not necessary that the public know that the mark in question is a certification mark, or that it be aware of the identity of the certifying body. Nor is there any need to adduce direct evidence of the perception of that mark by the public if it is reasonable to deduct that it perceives it as enabling the distinction of one class of goods or services from another class.

23 The Republic of Cyprus relies of two decisions delivered in the United Kingdom by the High Court of Justice (England and Wales), Chancery Division, which support its interpretation of the distinctive character of a United Kingdom certification mark. The evidence which it has adduced also highlight the distinctiveness of the earlier mark and the perception by the United Kingdom public of the term ‘halloumi’ as distinguishing one class of goods falling within another class, of which the public understands the characteristics, in particular the ingredients, and the origin.

24 According to the Republic of Cyprus, by virtue of Article 8(2) of Regulation No 207/2009 (now Article 8(2) of Regulation 2017/1001), since national certification marks are marks registered in a Member State, they may form the basis of opposition proceedings against registration of a later EU mark.

25 In its response, the intervener also sets out certain preliminary observations concerning the concept of certification marks under EU law and the relevant United Kingdom case-law. In essence, it observes that the two references to case-law made by the Republic of Cyprus are very old and have become obsolete following the implementation of the EU legislation in the field. In particular, the definition of certification marks in the EU, as set out in Article 27 of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (OJ 2015 L 336, p. 1), does not correspond to the interpretation relied on by the Republic of Cyprus, since the definition requires proprietors of certification marks to certify the goods or services which are designated by such marks. In addition, EUIPO rejected the applications of the Republic of Cyprus for registration of the United Kingdom certification marks as EU trade marks, since they were devoid of any distinctiveness. An application of the same nature was also rejected by the Canadian authorities on similar grounds. Contrary to the submissions of the Republic of Cyprus, a certification mark does not have, in itself, distinctiveness under United Kingdom case-law. Finally, Regulation No 207/2009 does not provide for protection of certification marks at EU level since they cannot be registered as individual or collective marks.

The first part, alleging incorrect assessment of the similarity of the signs at issue

26 The Republic of Cyprus submits that, in order to find a lack of similarity, the Board of Appeal must have made the comparison on the sole basis of a dominant element of the mark applied for, namely the term ‘fino’, such that it regarded all the other elements as negligible, in particular the term ‘halloumi’ which was disregarded in the comparison on the various levels. That finding is absurd from the point of view of the average United Kingdom consumer, who is used to seeing the term ‘fino’ on many goods coming from the European Union, in that it designates in laudatory terms goods termed in English as ‘fine’, or ‘bien’ in French. Furthermore, that consumer understands the meaning of the English terms ‘cyprus’ and ‘cheese’.

27 Visually, the Board of Appeal failed to take into account the prominence and the distinctive character of the word ‘halloumi’, giving excessive distinctiveness to the term ‘fino’, in respect of which, moreover, it must be noted that it has a meaning in English, since it designates a type of sherry known to the average United Kingdom consumer, and that it is also used with regard to many goods imported into the United Kingdom. Furthermore, account should have been taken of the fact that the word ‘halloumi’ appears directly beneath the word ‘fino’, in the centre of the mark applied for, ad that the other words, ‘cyprus’ and ‘cheese’, are merely descriptive of the goods designated by that mark, whereas the word ‘halloumi’ acts as a distinctive term, identical to the earlier mark.

28 On the phonetic level, the Board of Appeal, taking as its basis the difference in the number of syllables forming the signs at issue, significantly distorted the facts by holding that there was no similarity between those signs, whereas they had in common the element ‘halloumi’, composed of three syllables.

29 On the conceptual level, the Board of Appeal failed to take into consideration the meaning of the earlier mark in the eyes of United Kingdom consumers and their understanding of the mark applied for. Since those consumers view the mark applied for as a combination of an invented word or name of foreign origin and a term which is itself perceived as a distinctive certification mark distinguishing one class of good from another, those consumers regard the degree of conceptual similarity of the marks at issue as very high.

30 EUIPO responds that it does not share the view of the Republic of Cyprus that the finding of a lack of similarity between the signs at issue, as set out in the contested decision, could result only from a comparison based on a dominant element in the market applied for, with the consequence that all the other elements were regarded as negligible. On the contrary, the comparison was made taking account of the overall impression produced by the signs at issue, and of the presence of the word ‘halloumi’ in each of the marks, in accordance with the case-law of the Court. However, certain characteristics of the mark applied for, in particular the dominant element ‘fino’, the figurative stylisation, the inclusion of the word composing the earlier mark in an expression which clearly has descriptive meaning, preclude the signs at issue, taken as a whole, being regarded as similar, despite the common presence in each of them of a series of common letters.

31 EUIPO adds that it is unlikely the average United Kingdom consumer will give the meaning of the English word ‘fine’ to the word ‘fino’, the Republic of Cyprus, moreover, having adduced no evidence in that regard. Furthermore, with regard to the fact that ‘fino’ is also an English word designating a type of sherry, that word is perceived as devoid of meaning in respect of the goods covered by the mark applied for and, in any event, the concept of a type of sherry is too far removed from the goods covered by the mark applied for to allow the view to be taken that the word ‘fino’ has only reduced distinctiveness. The Board of Appeal was therefore correct to find that the word ‘fino’ was the dominant element of the mark applied for and that, as regards the United Kingdom public, it was the fully distinctive element of the mark.

32 With regard to the phonetic comparison, the Board of Appeal was correct to find any similarity of the signs at issue, since they have sufficient characteristics which rule out the public perceiving them as similar, in particular the fact that the three common syllables were preceded in the mark applied for by four syllables without a counterpart in the earlier mark. Furthermore, it is likely that the series of three words ‘cyprus halloumi cheese’, which at most explains the nature of the goods in question, would not be pronounced in the mark applied for, since it is preceded by the word ‘fino’ to which the public could restrict its pronunciation in order to abbreviate the pronunciation of the mark.

33 With regard to the conceptual comparison, EUIPO states that it supports the reasoning of the Board of Appeal that, although the term ‘halloumi’ designates a type of Cypriot cheese, no argument can be drawn from the presence of that term in a mark in the context of the application of Article 8(1)(b) of Regulation No 207/2009, which is consistent with the principle of a comparison of signs on the basis of the overall impression produced by those signs, taking account in particular of their distinctive and dominant elements.

34 The intervener states, for its part, that, in the mark applied for, the combination of words ‘fino cyprus halloumi cheese’ enables the consumers to understand what the goods designated by that mark are, in other words to identify that they are a certain type of cheese. The word ‘fino’, taken alone, is distinctive since it enables the consumers to identify the commercial origin of the goods. As a result of its size and its position in the mark applied for, the word ‘fino’ is its dominant element, which is reinforced by the design with which it is associated. Finally, it has no descriptive meaning for EU consumers and is suitable to identify the commercial origin of the goods designated by the mark applied for, in that it enables identification of the halloumi cheese produced by a particular undertaking from that produced by other undertakings.

35 The claim made by the Republic of Cyprus that the average UK consumer is faced with many products stamped with the word ‘fino’, which he identifies with the English word ‘fine’, is unsubstantiated. Such an assertion also contradicts the fact that that term designates, in English, a category of sherry.

36 The intervener states that it supports the analysis made by the Board of Appeal in regarding the element ‘fino’ of the mark applied for as distinctive and dominant, the design which that mark includes contributing to the consumer’s perception of the sign as a whole as distinguishing the commercial origin of the goods in question. The term ‘fino’ does not have any descriptive meaning to the EU consumers and enables the mark at issue to perform its function of designating the commercial origin. However, in accordance with the case-law of the Court, a descriptive meaning must be attributed to the word ‘halloumi’. It is used only to describe the goods in question, namely a cheese coming from Cyprus, and the relevant public does not perceive it as a certification mark or even as a mark enabling authorised users to be distinguished from those not so authorised.

37 According to the intervener, the Republic of Cyprus is ignoring the principles arising from the case-law in accordance with which the comparison of the signs at issue must rest on a global comparison, in that it seeks to establish similarity on the basis of the presence of a single element common to both signs, namely ‘halloumi’. In fact, the signs are totally different, having regard to the presence of the word ‘fino’ in the sign applied for, as the dominant element. The Board of Appeal rightly made a separate analysis of the signs at issue, before finding a lack of visual, phonetic and conceptual similarity. The presence of the term ‘halloumi’ in the mark applied for does not affect its visual aspect. On the phonetic level, the difference arises from the different number of syllables in each of the signs at issue. Finally, conceptually, the Republic of Cyprus failed to show any similarity of the signs at issue, due in particular to the baseless nature of the argument that the existence of an earlier registered certification mark, the validity of which cannot be challenged, is sufficient to hold that the presence of the element ‘halloumi’ in each of the signs at issue introduces a high degree of similarity.

38 The global assessment of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

39 As regards the definition of the relevant public with regard to whom the assessment of the perception of the mark applied for must be made, it must be recalled first of all that, in accordance with the case-law, the likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, between two conflicting marks, must not be assessed on the basis of a comparison in the abstract of those signs and the goods or services which they designate, but the assessment of that risk must, instead, be based on the perception that the relevant public will have of those signs, goods and services (judgment of 24 May 2011, ancotel v OHIM — Acotel (ancotel.), T‑408/09, not published, EU:T:2011:241, paragraph 29).

40 Furthermore, in accordance with the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).

41 It is appropriate in the present case to confirm, inasmuch as they appear well founded in the light of the elements in the file, the findings of the Board of Appeal as set out in paragraph 13 of the contested decision, concerning the relevant public in respect of the goods at issue. Since the earlier mark is a United Kingdom mark, it appears that the relevant public to be taken into consideration is the general public of the United Kingdom. The marks at issue are, in essence, registered for identical goods, in this case, cheese. Since it is a relatively common consumer product, the view must be taken that they target the average consumer who is deemed to be reasonably well informed and reasonably observant and circumspect (see, to that effect, judgment of 25 October 2006, Castell del Remei v OHIM — Bodegas Roda (ODA), T‑13/05, not published, EU:T:2006:335, paragraph 46). In the analysis set out in its decision of 22 August 2014, the Opposition Division found that, in the light of the category of the goods at issue and their low price, the level of attention of that public ranged from low to average, that decision, together with its statement of reasons, forming part of the context in which the contested decision was adopted, so that that context was known to the Republic of Cyprus and enabled the Court fully to carry out its judicial review as to whether the assessment of the likelihood of confusion was well founded (see, to that effect, judgment of 21 November 2007, Wesergold Getränkeindustrie v OHIM — Lidl Stiftung (VITAL FIT), T‑111/06, not published, EU:T:2007:352, paragraph 64). In the light of the goods in question, those findings, moreover not contested by the parties, appear well founded.

42 For the purpose of assessing the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings. In making that assessment, account should be taken, in particular, of the intrinsic characteristics of the element in question in the light of whether it is at all descriptive of the goods for which the mark has been registered (judgments of 13 June 2006, Inex v OHIM — Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35, and of 13 December 2007, Cabrera Sánchez v OHIM — Industrias Cárnicas Valle (el charcutero artesano), T‑242/06, not published, EU:T:2007:391, paragraph 51).

43 With regard to the assessment of the dominant character of one or more given components of a complex trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the complex mark (judgments of 23 October 2002, Matratzen Concord v OHIM — Hukla German (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35, and of 8 February 2007, Quelle v OHIM — Nars Cosmetics (NARS), T‑88/05, not published, EU:T:2007:45, paragraph 58).

44 The assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited).

45 It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 42). That could be the case, in particular, where that component is capable alone of dominating the image of that mark which members of the relevant public keep in their minds, such that all the other components are negligible in the overall impression created by that mark. In addition, the fact that an element is not negligible does not mean that it is dominant, and, by the same token, the fact that an element is not dominant in no way means that it is negligible (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraphs 43 and 44).

46 It must also be borne in mind that, when certain elements of a mark are descriptive of the goods and services in respect of which the mark is protected or the goods and services designated by the application for registration, those elements are deemed to have only weak distinctive character (see, to that effect, judgments of 12 September 2007, Koipe v OHIM — Aceites del Sur (La Española), T‑363/04, EU:T:2007:264, paragraph 92, and of 13 December 2007, el charcutero artesano, T‑242/06, not published, EU:T:2007:391, paragraph 52 and the case-law cited). Most often, it will be possible to recognise those elements as having distinctive character only because of their combination with the other elements of the mark. Owing to their weak distinctiveness, descriptive elements of a trade mark are not generally regarded by the public as being dominant in the overall impression conveyed by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on consumers and to be remembered by them (see judgment of 13 December 2007, el charcutero artesano, T‑242/06, not published, EU:T:2007:391, paragraph 53 and the case-law cited). That does not mean, however, that the descriptive elements of a mark are necessarily negligible in the overall impression created by that mark. In that regard, it is necessary, in particular, to examine whether other elements of the mark are likely to dominate, by themselves, the relevant public’s recollection of that mark (judgment of 20 September 2016, Excalibur City v EUIPO — Ferrero (MERLIN’S KINDERWELT), T‑566/15, not published, EU:T:2016:517, paragraph 28).

47 In the present case, the Board of Appeal held, in paragraphs 19 to 21 of the contested decision, that, in the mark applied for, the word element ‘fino’ was dominant, as it would most hold the reader’s attention. The series of words ‘cyprus halloumi cheese’, written on a tape, occupies only a secondary position and serves to explain the nature of the goods designated, in particular by the use of the words ‘cyprus’ and ‘cheese’, whether or not the word ‘halloumi’ is perceived as being descriptive. The Board of Appeal also found that the word ‘fino’, notwithstanding its possible resemblance to the English word ‘fine’, was distinctive and that, although it could be an Italian or Spanish word, the average United Kingdom consumers did not, in any event, speak those languages. The marks at issue coincide only by one of the four word elements composing the mark applied for and the figurative presentation of the mark applied for strengthens its difference from the earlier mark.

48 In the first place, with regard to the determination of the distinctive element(s) forming the mark applied for, it should be borne in mind that where a trade mark is composed of verbal and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (see judgment of 9 September 2008, Honda Motor Europe v OHIM — Seat (MAGIC SEAT), T‑363/06, EU:T:2008:319, paragraph 30 and the case-law cited).

49 In the present case, it appears that the figurative elements composing the mark applied for are not very original, whether as regards the oval shape in the middle of which the word ‘fino’ appears or the red tape in the lower part of the mark applied for on which the series of three words ‘cyprus halloumi cheese’ appear, and that they contribute mainly to the presentation of the word elements which form the mark applied for. Among the latter, although the Board of Appeal found that the word ‘fino’ was distinctive and enabled identification of the goods designated by that mark, it is also correct that that word resembles the English word ‘fine’ which means ‘perfect’ and can serve to classify foods to highlight their quality. Moreover, it cannot be ruled out that, due to its Latin origin, that word will also be understood by a large part of those consumers and that its laudatory nature attenuates its distinctiveness as regards the goods in question. Ultimately, for the fairly numerous United Kingdom consumers who understand its meaning, the degree of distinctiveness of the word ‘fino’ is therefore low.

50 The series of three other words forming the mark applied for, namely ‘cyprus halloumi cheese’, having regard to the obvious connection which it has to the goods designated by the mark applied for, appears to be very weakly distinctive. However, it cannot be excluded that each of the words in question will be considered individually by part of the relevant public.

51 It thus appears that, taken separately, all the elements forming the mark applied for, whether word or figurative elements, are weakly distinctive. In those circumstances, although the mark applied for, taken as a whole, can draw its distinctiveness from the highlighting of the word elements by the figurative elements, or even the contrast between the words ‘cyprus’ and ‘cheese’, from the English language, and the words ‘fino’ and ‘halloumi’, which are not directly from English, that distinctiveness appears to be weak, if not very weak. In any event, in light of the solution applied in the judgment of 24 May 2012, Formula One Licensing v OHIM (C‑196/11 P, EU:C:2012:314, paragraphs 43 to 47), it must be recalled that a validly registered national mark must be accorded a certain degree of distinctiveness since its registration did not meet an absolute ground for refusal.

52 In the second place, with regard to the determination of the dominant element(s) of the mark applied for, it appears that the term ‘fino’ is written in the upper part of the mark applied for, in large, stylised, dark blue, lower-case characters, encircled in red and white which strengthens the visual effect. In those circumstances, the Board of Appeal did not err in finding that it was the dominant element of the mark applied for.

53 However, although, as the Board of Appeal pointed out, it is also true that the terms ‘cyprus halloumi cheese’ occupy a secondary position in the mark applied for, it cannot, nevertheless, be ruled out that separately, even together, it is necessary to take them into account in the comparison of the signs in the overall impression produced by the signs.

54 In order to explain the Board of Appeal’s approach, which was to hold that the common presence in the marks at issue of the word ‘halloumi’ was not likely to render them similar, EUIPO refers to the solution applied in the judgments of 20 September 2016, MERLIN’S KINDERWELT (T‑566/15, not published, EU:T:2016:517); of 14 October 2009, Ferrero v OHIM — Tirol Milch (TiMi KiNDERJOGHURT) (T‑140/09, EU:T:2009:400); and of 4 March 2015, Three-N-Products v OHIM — Munindra (PRANAYUR) (T‑543/13, not published, EU:T:2015:134).

55 Indeed, in those three judgments, the word element common to the earlier marks and the marks applied for, namely ‘kinder’ in the first two cases and ‘ayur’ in the third, were included in a larger word element, namely ‘kinderwelt’, ‘kinderjoghurt’ and ‘pranayur’ respectively, which could be regarded as forming an indissociable whole (judgment of 20 September 2016, MERLIN’S KINDERWELT, T‑566/15, not published, EU:T:2016:517, paragraph 42).

56 In the present case, the configuration of the earlier mark is, however, different, since the word ‘halloumi’ is indeed included in a series of three words, but in which it retains its autonomy and, consequently, its visibility as regards the public. Contrary to EUIPO’s submissions, the solution arising from the three judgments to which it refers cannot be transposed to the present case and it cannot be ruled out that, in the overall impression produced by the mark applied for, the word ‘halloumi’ may be taken into consideration.

57 The Board of Appeal held, in paragraph 23 of the contested decision, that the signs at issue were visually different, stating that, even if all the word elements of the mark applied for were given equal weight, which, in any event, was not the case, the marks at issue still coincide only in one of the four word elements forming the mark applied for, namely ‘halloumi’, placed in third position. The figurative presentation of that mark, although in itself weakly distinctive, strengthens the differences from the earlier mark.

58 That conclusion of the Board of Appeal cannot be upheld. Although the overall impression produced by the mark applied for is visually dominated by the word ‘fino’, having regard to its central and upper position, its size, its colour and its inclusion in a golden oval background which highlights it, the word element ‘halloumi’ placed in the lower part, is also in a central position, written in white letters on a red background, making it stand out without difficulty from the two words with which it is associated in the series of three words ‘cyprus halloumi cheese’. The figurative elements of the mark applied for do not alter that impression, since they are not very original and do not modify the visibility of the word element ‘halloumi’.

59 In those circumstances, it must be found that the signs at issue are similar due to the presence of the word element ‘halloumi’ in the mark applied for, but since it is the sole element composing the earlier mark, that similarity must be regarded as low.

60 In paragraph 24 of the contested decision, the Board of Appeal found a lack of phonetic similarity, stating that the word elements other than ‘fino’ would probably not be pronounced and, even if they were, the pronunciation of the marks at issue differ as a result of their difference in length.

61 However, nor can that finding of the Board of Appeal be upheld. Although it is possible that, faced with the mark applied for, the relevant public merely reads and pronounces the term ‘fino’, since, although weakly distinctive, it is the dominant element in the eyes of that public, nevertheless it cannot be ruled out that part of the public, even if a minority, reads that mark in full or pronounces the term ‘fino’ followed by the term ‘halloumi’. In that case, the view must be taken that the fact that the earlier mark is contained in the mark applied for necessarily gives rise to phonetic similarity, the degree of which, having regard, in addition, to the difference in the number of syllables forming each of the signs, must be regarded as low.

62 In paragraph 25 of the contested decision, the Board of Appeal found that, if the presence of the word ‘halloumi’ in the mark applied for did not give rise to relevant visual and phonetic similarity, it could not give rise to relevant conceptual similarity, irrespective of whether one of the other words forming the mark had a meaning. The Board of Appeal highlights the contradiction in the position of the Republic of Cyprus in claiming the imaginary nature of the word ‘halloumi’, while that would not permit the mark applied for to convey a concept, whereas, in its case-law, the Court has previously established that the term ‘halloumi’ designated a type of Cypriot cheese. No argument can therefore be drawn from the presence of the term ‘halloumi’ in the mark applied for in the presence of other word elements.

63 That analysis of the Board of Appeal does not appear to be correct. Although it cannot be denied that the earlier mark conveys the concept of a type of Cypriot cheese, namely the cheese Halloumi, as the Court has previously held having regard to the terms of the judgment of 7 October 2015, ΧΑΛΛΟΥΜΙ and HALLOUMI (T‑292/14 and T‑293/14, EU:T:2015:752, paragraph 24), it cannot be excluded that, to a certain extent, the mark applied for conveys a similar concept. Although the series of three words ‘cyprus halloumi cheese’ is only weakly distinctive, that arises from the very fact that it has a link to the goods designated by the mark applied for, but that cannot, however, mean that none of the words in question, in particular the word ‘halloumi’, may not be considered individually by part of the relevant public. Accordingly, it cannot be held that there is a lack of conceptual similarity. The word ‘fino’ does indeed form the dominant element of the mark applied for, but the concept conveyed by the earlier mark in that it contains the series of three words ‘cyprus halloumi cheese’, each of the components of which is likely to be considered individually, must lead to a finding that there is a low degree of conceptual similarity.

64 Thus, contrary to the finding in the contested decision, the view must be taken that the signs at issue have a low degree of visual, phonetic and conceptual similarity.

65 The Board of Appeal thus incorrectly found that there was a lack of similarity between the signs at issue which rendered nugatory the completion of its global comparison of those signs taking account of the interdependence of all the relevant factors.

66 In that regard, it must be noted, as, moreover, EUIPO recognises in its response, that the reasoning in the contested decision concerning the assessment of the distinctiveness of the earlier mark as a United Kingdom certification mark is irrelevant to the assessment of the lawfulness of the contested decision, since it does not affect the finding of the Board of Appeal as regards the lack of similarity of the marks at issue.

67 In those circumstances, the contested decision must be annulled without it being necessary to examine the second part.

68 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.

69 Since EUIPO has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the Republic of Cyprus.

70 In accordance with Article 138(3) of the Rules of Procedure, the intervener must bear its own costs.

1. Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 20 April 2017 (Case R 2650/2014-4) concerning opposition proceedings between the Republic of Cyprus and Papouis Dairies Ltd;

2. Orders EUIPO to bear its own costs and to pay those incurred by the Republic of Cyprus;

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Cyprus v EUIPO - Papouis Dairies (fino Cyprus Halloumi Cheese) (EU trade mark - Judgment) [2018] EUECJ T-417/17 (23 November 2018) URL: http://www.bailii.org/eu/cases/EUECJ/2018/T41717.html Cite as: [2018] EUECJ T-417/17, ECLI:EU:T:2018:833, EU:T:2018:833

Court of Justice of the European Communities (including Court of First Instance Decisions)