Cyprus v EUIPO - Papouis Dairies (Papouis Halloumi) (EU trade mark - Judgment) [2018] EUECJ T-703/17 (23 November 2018)

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(EU trade mark — Opposition proceedings — Application for EU figurative mark Papouis Halloumi — Earlier United Kingdom certification word mark HALLOUMI — Relative ground for refusal — Similarity of the signs — 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 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 3 August 2017 (Case R 2924/2014-4) concerning opposition proceedings between the Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi and Papouis Dairies,

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

having regard to the application lodged at the Court Registry on 12 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,

having regard to the response of EUIPO lodged at the Court Registry on 22 December 2017,

having regard to the response of the intervener lodged at the Court Registry on 20 January 2018,

1 On 10 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 9/2013 of 14 January 2013.

5 On 3 April 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 8 October 2014, the Opposition Division rejected the opposition and ordered the Republic of Cyprus to pay the costs.

9 On 17 November 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 3 August 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 analysed the elements composing the marks at issue in order to determine which were the distinctive and dominant elements making them up, the Board of Appeal compared the marks and found that there was no visual, phonetic or conceptual similarity.

13 With regard to the reference by the Republic of Cyprus to the type of the protection conferred by the earlier mark, in that it is a United Kingdom certification mark, the Board of Appeal stated that it could be taken into consideration only at the stage of the overall assessment of the likelihood of confusion and that, in any event, it was irrelevant as regards that assessment in the light of the provisions of Article 8(1)(b) of Regulation No 207/2009.

14 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.

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

17 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 similarity of the marks at issue. Secondly, the Board of Appeal incorrectly assessed the degree of distinctiveness of the earlier mark and failed sufficiently to take it into account.

18 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.

19 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 highlights 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.

20 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.

21 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

22 With regard to the comparison of the signs at issue, 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 basis of a dominant element of the mark applied for, which is possible only if all the other elements were negligible, in particular the term ‘halloumi’, which was disregarded in the comparison. Although the Board of Appeal was entitled to find that the elements ‘papouis dairies ltd’ and ‘since 1967’ were negligible having regard to their size and their position in the mark applied for, that finding would be absurd in respect of the term ‘halloumi’.

23 Visually, the Board of Appeal failed to take into account the prominence and the distinctive character of the word ‘halloumi’, written in a large font and placed just below the elements ‘pap’ and ‘papouis’. The figurative element ‘pap’ and the term ‘papouis’, in this case a Greek or Cypriot patronymic, are merely used as a descriptive mark of the commercial origin of the goods, positioned beside the EU collective mark HALLOUMI. The term ‘halloumi’, as the prominent element of the mark applied for, should have been taken into account by the Board of Appeal in its analysis of the visual similarity.

24 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.

25 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 the earlier mark is understood by the United Kingdom consumers as enabling a class of goods, having particular characteristics, to be distinguished from goods in other classes, the mark should be regarded as being a combination of the commercial mark of the producer of the goods in question and of the term which those same consumers would regard as being used to indicate the class of goods covered by the earlier mark.

26 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 in the mark 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 presence therein of the elements ‘pap’ and ‘papouis’, and its figurative stylisation ruled out the signs at issue, taken as a whole, being found to be similar.

27 EUIPO, which cites, in that regard, case-law arising from three cases, adds that the presence of a series of three letters common to the marks at issue does not automatically entail their similarity, since the final finding on similarity depends in particular on the overall impression produced by those marks.

28 With regard to the phonetic comparison, the Board of Appeal was correct not to find any similarity of the signs at issue, since the common syllables, which correspond to the word ‘halloumi’, are preceded in the mark applied for by three syllables which are without equivalent in the earlier mark and which appear, moreover, at its start, so that they are likely to attract more attention from the public. Thus, the signs at issue have sufficient characteristics which rule out the public perceiving them as similar.

29 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. Furthermore, the Court has previously held that a term forming part of a complex mark could be perceived differently depending on whether it was used alone or in combination with other elements.

30 With regard to the distinctiveness of the earlier mark, although it is correct that it does not form part of the analysis of the similarity of the marks at issue and although, in any event, its assessment cannot lead to a denial of its existence, that does not prevent the Board of Appeal from finding that the term ‘halloumi’ describes, in each of the marks at issue, the goods designated by them and that, accordingly, those marks are dissimilar not only conceptually, but also visually and phonetically, having regard to the principle that the comparison of the marks rests on the overall impression which they produce.

31 The intervener states that, in accordance with the case-law of the Court, it should be found that the term ‘halloumi’ is weakly distinctive, since it corresponds to the name of a specific cheese coming from Cyprus and it has a descriptive meaning.

32 The marks at issue are totally different having regard to the presence of the term ‘papouis’ in the mark applied for, included within it in the expression ‘pap papouis’. That term has no descriptive meaning and enables identification of the goods designated by that mark, unlike the term ‘halloumi’ which enables the consumer merely to understand of what the goods in question consist. The expression ‘pap papouis’ should be seen as the dominant element of the mark applied for, the singularity of which is strengthened by its design and by the supplementary information on the producer and its long-standing presence on the market, as shown by the word elements ‘papouis dairies ltd’ and ‘since 1967’. In addition, the term ‘halloumi’, including as an EU collective mark, does not have pronounced distinctiveness and does not enable authorised users to be distinguished from those not so authorised.

33 According to the intervener, the Board of Appeal was correct to find, in paragraph 26 of the contested decision, that the term ‘halloumi’ was descriptive and that the public would not perceive it as a collective mark or as a mark enabling authorised users to be distinguished from those not so authorised. The Republic of Cyprus, by attempting to centre the comparison on the element ‘halloumi’ alone, is deliberately ignoring the case-law in accordance with which the comparison between two marks must, in principle, be made taking account of the overall impression produced by them.

34 The intervener states that there is no similarity between the signs at issue and, accordingly, no likelihood of confusion, which is confirmed by a separate comparison of those signs enabling a finding of 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, while the element ‘pap papouis’ is visually dominant both by its size and by the graphic element which increases its dominance. The phonetic difference is the result of the different number of syllables in each of the signs at issue. Finally, on the conceptual level, the arguments of the Republic of Cyprus, apart from the fact that they are not substantiated and do not permit a finding of similarity between those signs, must be rejected in that they amount to prohibiting EUIPO from carrying out any material verification of the conceptual similarity of a new mark applied for and a certification mark long since registered.

35 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).

36 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).

37 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).

38 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 8 October 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.

39 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).

40 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).

41 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).

42 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).

43 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. 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).

44 In the present case, in paragraph 18 of the contested decision, the Board of Appeal analysed the mark applied for. It noted that it was a complex sign in colour which included the words ‘papouis’ and ‘halloumi’, represented on two lines, in outline letters of roughly equal size, and that, above those words, there was a combination of what could be interpreted as the series of letters ‘p’, ‘a’ and ‘p’, the last of those letters being mirrored, on a dark blue background with a border of a golden or yellow margin. The expressions ‘papouis dairies ltd’ and ‘since 1967’ were integrated into that combination, in a much smaller size making them hardly perceptible.

45 The Board of Appeal noted that, visually, the word elements ‘pap’, ‘papouis’ and ‘halloumi’ were, in the sense of ‘eye-catching’, equally dominant, while the other word elements, ‘papouis dairies ltd’ and ‘since 1967’ could pass unnoticed. The word ‘papouis’ has intrinsic distinctiveness, irrespective of the fact that it is a Cypriot or Greek personal name. The element ‘pap’ is also distinctive, irrespective of the fact that it refers to the first three letters of the element ‘papouis’.

46 According to the Board of Appeal, the marks at issue are, therefore, not similar, since the majority of the distinctive elements in the mark applied for have no resemblance to the earlier mark and, in light of the case-law, it is not appropriate to isolate a single element of the mark applied for to compare it with the sole element forming the earlier mark when all the other elements forming the mark applied for are just as, if not more, important and dominant.

47 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).

48 In the present case, it appears that the figurative elements composing the mark applied for are not very original, in particular the dark blue background with a border formed of a golden or yellow margin on which there is the element ‘pap’, and that they contribute mainly to the highlighting of the word elements which form the mark and which are more distinctive. Among the word elements, the Board of Appeal was correct to hold, in paragraph 20 of the contested decision, that the term ‘papouis’ was intrinsically wholly distinctive, irrespective of the fact that it would be perceived as a family name in certain parts of the European Union, such as Cyprus or Greece, family names having in principle intrinsic distinctiveness. The element ‘pap’ must also be regarded as distinctive, even if it is likely to be identified as being the first three letters of the term ‘papouis’. In that regard, the fact that the last of the letters forming it is mirrored constitutes an element likely to strengthen its distinctiveness. Nonetheless, the distinctiveness of those two word elements does not appear to be particularly original and it can be regarded as being average.

49 The other word elements composing the mark applied for, ‘papouis dairies ltd’, ‘since 1967’ and ‘halloumi’, appear, however, to be weakly distinctive since they are descriptive with regard to the goods at issue and even, as regards the second, with regard to the legal form of the entity ‘papouis’ which markets those goods.

50 In the second place, with regard to the determination of the dominant element(s) of the mark applied for, it appears that the elements ‘pap’, ‘papouis’ and ‘halloumi’, having regard in particular to their stylisation and size, are the dominant elements of the mark applied for, as the Board of Appeal stated in paragraph 19 of the contested decision. The element ‘pap’, in that is placed in the upper part of that mark and is written entirely in capital letters, is, moreover, likely to have slightly greater dominance.

51 In the light of the principles of case-law recalled in paragraph 43 above, that the descriptive elements of a mark may play a certain role in the overall impression produced by that mark, particularly if another element of that mark is unlikely alone to dominate the image of that mark, nonetheless it cannot be ruled out that account must be taken of the presence of the term ‘halloumi’ in the overall impression produced by the mark applied for. In that regard, it must be noted that the Board of Appeal did not establish that that overall impression was dominated by the element ‘pap’ alone, nor by that element associated with the term ‘papouis’, but it held instead that the term ‘halloumi’ formed part of the three dominant word elements in the mark applied for.

52 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).

53 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).

54 In the present case, the configuration of the earlier mark is, however, different, since the word ‘halloumi’ forms part neither of a larger word element nor even of a series of words, so that 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.

55 The Board of Appeal held, in paragraphs 22 and 23 of the contested decision, that the signs at issue were visually different, since, even if all the elements of the mark applied for were to be given equal weight, they coincide only in the word ‘halloumi’, placed in third position in the sign, and in that the figurative presentation of that sign, although not readily distinctive in itself, strengthens the differences from the earlier sign. After that reasoning, the Board of Appeal held, in paragraph 28 of the contested decision, that there was a lack of visual similarity between the signs at issue.

56 That conclusion of the Board of Appeal cannot be upheld, in particular with regard to its finding, as set out in paragraph 19 of the contested decision, that the elements ‘pap’, ‘papouis’ and ‘halloumi’ are equally prominent and that they are also equally dominant, in the sense of ‘eye-catching’. The word element ‘halloumi’, placed in third position in the mark applied for, is also in a central position, written in stylised, white characters surrounded in blue and gold, enabling it easily and immediately to be perceived. The figurative elements of the mark applied for do not alter that impression, since they are not very original and do not modify the word element ‘halloumi’.

57 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.

58 On the phonetic level, the Board of Appeal found that the signs at issue were also different. It noted, in paragraphs 24 and 25 of the contested decision that, in the sign applied for, the expressions ‘papouis dairies ltd’ and ‘since 1967’ would not be pronounced, unlike the expression ‘pap papouis halloumi’ which, however, has no resemblance to the word ‘halloumi’ forming the earlier mark, because it is significantly longer, includes distinctive elements which have no equivalent in the earlier mark and coincides with that mark solely at the level of its last part, to which less attention is normally paid. That finding would not be altered, in its opinion, if the view had to be taken that the third letter of the element ‘pap’ were not to be pronounced.

59 Nor can that finding of the Board of Appeal be followed. It cannot be excluded that the relevant public will read in full the three dominant elements which compose the mark applied for. In that case, despite the length of the expression ‘pap papouis halloumi’, the first two terms of which have no equivalent in the earlier mark, and the final position occupied by the word ‘halloumi’, the view must nevertheless be taken that the fact that the earlier mark is contained within the mark applied for necessarily entails phonetic similarity when the three elements forming the expression ‘pap papouis halloumi’ are pronounced. The degree of that similarity, having regard, moreover, to the difference in the number of syllables in each of the signs, must be regarded as low.

60 Conceptually, the Board of Appeal also found, in paragraph 26 of the contested decision, 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. 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).

61 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, of the three words appearing in the mark, ‘pap’, ‘papouis’ and ‘halloumi’, the last 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 it may not be considered individually by the relevant public. Accordingly, it cannot be held that there is a lack of conceptual similarity. The elements ‘pap’ and ‘papouis’ are indeed those in the mark applied for which are both clearly distinctive and dominant, but the concept conveyed by the earlier mark in that it contains the word ‘halloumi’, in respect of which it cannot totally be ruled out that it will be considered individually, must lead to a finding that there is a low degree of conceptual similarity.

62 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.

63 The Board of Appeal thus incorrectly found that there was a lack of similarity between the signs at issue, such that it did not complete its global comparison of those signs taking account of the interdependence of all the relevant factors.

64 In that regard, it must be noted, as, moreover, EUIPO recognises (see paragraph 30 above), 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.

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

66 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.

67 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.

68 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 3 August 2017 (Case R 2924/2014-4) 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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	Court of Justice of the European Communities (including Court of First Instance Decisions)
You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Cyprus v EUIPO - Papouis Dairies (Papouis Halloumi) (EU trade mark - Judgment) [2018] EUECJ T-703/17 (23 November 2018) URL: http://www.bailii.org/eu/cases/EUECJ/2018/T70317.html Cite as: ECLI:EU:T:2018:835, EU:T:2018:835, [2018] EUECJ T-703/17

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