Cyprus v EUIPO - Fontana Food (GRILLOUMI BURGER) (Judgment) [2021] EUECJ T-593/19 (08 December 2021)

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(EU trade mark – Opposition proceedings – Application for the EU word mark GRILLOUMI BURGER – Earlier national certification word marks ΧΑΛΛΟΥΜΙ HALLOUMI – Relative grounds for refusal – No likelihood of confusion – No detriment to repute – Article 8(1)(b) and Article 8(5) of Regulation (EC) No 207/2009 (now Article 8(1)(b) and Article 8(5) of Regulation (EU) 2017/1001))

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

European Union Intellectual Property Office (EUIPO), represented by D. Gája and D. Botis, acting as Agents,

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

Fontana Food AB, established in Tyresö (Sweden), represented by P. Nihlmark and L. Zacharoff, lawyers,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 19 June 2019 (Case R 1297/2018‑4) relating to opposition proceedings between the Republic of Cyprus and Fontana Food,

composed of V. Tomljenović, President, F. Schalin (Rapporteur) and P. Škvařilová‑Pelzl, Judges,

having regard to the application lodged at the Court Registry on 30 August 2019,

having regard to the response of EUIPO lodged at the Court Registry on 26 August 2020,

having regard to the response of the intervener lodged at the Court Registry on 1 November 2019,

having regard to the decision of 9 March 2021 joining Cases T‑556/19 and T‑593/19 for the purposes of the oral part of the procedure,

having regard to the change in composition of the Chambers of the General Court,

1 On 25 October 2016, the intervener, Fontana Food AB, 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)).

3 The goods and services in respect of which registration was sought are in Classes 29, 30 and 43 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

– Class 29: ‘Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats’;

– Class 30: ‘Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; edible ices; sugar, honey, treacle; yeast, baking powder; salt; mustard; vinegar, sauces (condiments); spices; ice’;

– Class 43: ‘Services for providing food and drink; coffee-shop services; restaurants’.

4 The trade mark application was published in European Union Trade Marks Bulletin No 207/2016 of 2 November 2016.

5 On 2 February 2017, the Republic of Cyprus filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 of this judgment.

– The Cypriot certification word mark XAΛΛOYMI HALLOUMI, registered on 25 June 1992 under the number 366765, covering the goods in Class 29 and corresponding to the following description: ‘Dairy product and specifically folded cheese known as fresh halloumi’;

– The Cypriot certification word mark XAΛΛOYMI HALLOUMI, registered on 25 June 1992 under the number 366766, covering the goods in Class 29 and corresponding to the following description: ‘Dairy product and specifically folded cheese known as mature halloumi’.

7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of Regulation No 207/2009 (now Article 8(1)(b) and Article 8(5) of Regulation 2017/1001).

8 On 10 May 2018, the Opposition Division rejected the opposition and ordered the Republic of Cyprus to pay the costs.

9 On 9 July 2018, the Republic of Cyprus filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.

10 By decision of 19 June 2019 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal and ordered the Republic of Cyprus to pay the costs incurred for the purposes of the opposition and appeal proceedings.

11 First, as regards the assessment of the likelihood of confusion under Article 8(1)(b) of Regulation 2017/1001, the Board of Appeal found, first of all, that that assessment was relevant only to the goods ‘milk and milk products, edible oils and fats’ in Class 29, covered by the mark applied for. By contrast, it found that, since all the other goods and services covered by that mark were dissimilar from the goods covered by the earlier marks relied on in support of the opposition, that mark was, in any event, unfounded with regard to them. In particular, the Board of Appeal found that, although the services covered by the mark applied for and some foodstuffs could have been regarded as similar on account of their complementarity, the existence of such complementarity had not been established with regard to cheese.

12 Next, the Board of Appeal found that the marks at issue had a low degree of visual and phonetic similarity and that, on account of the lack of meaning of the word ‘grilloumi’ in the mark applied for, it was not possible to make a conceptual comparison.

13 Lastly, with regard to the relevant public, which it described as being the general public in Cyprus and the United Kingdom, the Board of Appeal found that the distinctive character of the earlier marks relied on in support of the opposition, both inherent and acquired through use, was weak, that the checks carried out by the Republic of Cyprus in order to ensure compliance with the rules relating to certification had no impact on the perception of the word ‘halloumi’ by that public and that the differences between the signs at issue were sufficient to distinguish between them with certainty, even for identical goods, with the result that there was no likelihood of confusion.

14 Second, as regards the assessment of the risk of unfair advantage being taken of, or detriment to, the distinctive character or the repute of the earlier marks relied on in support of the opposition, pursuant to Article 8(5) of Regulation 2017/1001, the Board of Appeal found that the evidence produced by the Republic of Cyprus was insufficient to establish enhanced distinctiveness and, a fortiori, the reputation of those marks as distinctive certification marks for cheese. Furthermore, the Republic of Cyprus has not shown, if only prima facie, that there is a risk of unfair advantage being taken of the distinctive character or the repute of the earlier marks, which is future and not hypothetical, or of detriment to their distinctive character. In that regard, consumers who purchase halloumi cheese are not in a position to distinguish the quality certified by the standards resulting from the legislation imposed on authorised users of the earlier certification marks and there can therefore be no detriment. The Republic of Cyprus cannot apply the certification system in the context of what is, in essence, an opposition action, because failure to comply with the regulations governing use is not a ground of opposition and is not dependent on the perception of target consumers.

17 In view of the date of submission of the application for registration at issue, that is to say, 25 October 2016, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited). Furthermore, since, in accordance with settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the present proceedings are governed by the procedural provisions of Regulation 2017/1001.

18 Accordingly, in this case, as regards the substantive rules, the references made by the Board of Appeal, in the contested decision, and by the parties, in their arguments, to either Article 8(1)(b) or Article 8(5) of Regulation 2017/1001 must be understood as referring to either Article 8(1)(b) or Article 8(5) of Regulation No 207/2009.

19 In support of the action, the Republic of Cyprus relies in essence on two pleas in law, the first of which alleges infringement of Article 8(1)(b) of Regulation No 207/2009 and the second of which alleges infringement of Article 8(5) of that regulation.

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

21 By the first part, the Republic of Cyprus alleges errors of assessment by the Board of Appeal in the comparison of the goods and services covered by the marks at issue. In the first place, the Board of Appeal is alleged to have found incorrectly that a large part of the goods covered by the mark applied for in Classes 29 and 30 were dissimilar to the goods covered by the earlier marks. In particular, it failed to give reasons on that point and did not take account of the fact that cheese was frequently and typically served in combination with meat, fish, vegetables or other similar products, with the result that average consumers were accustomed to purchasing those foodstuffs together, which were typically served and consumed in association.

22 In the second place, the Board of Appeal should have taken the view that all the services covered by the mark applied for and the goods covered by the earlier marks were similar, in so far as there was complementarity between them. In that regard, the Board of Appeal’s reasoning is alleged to be erroneous in the light of the following four elements: first of all, it incorrectly applied a criterion of mutual indispensability between the services and goods at issue, whereas it would have been sufficient to state that they could be used or offered together; next, it disregarded the case-law of the Court in which it has been held, regarding foodstuffs, including milk and dairy products, that those goods are necessarily used in the serving of food and drink, with the result that there is complementarity between those services and those goods; in addition, it misapplied the case-law resulting from the judgment of 15 February 2011, Yorma’s v OHIM – Norma Lebensmittelfilialbetrieb (YORMA’S) (T‑213/09, not published, EU:T:2011:37), in relation to the criterion of complementarity; and, lastly, it relied on the incorrect and unsubstantiated finding that there are no cheese restaurants.

23 By the second part, the Republic of Cyprus claims that the Board of Appeal made an incorrect assessment of the similarity of the signs at issue. Admittedly, the Board of Appeal correctly found that, in the mark applied for, the element ‘burger’ was descriptive and had to be accorded only secondary importance. By contrast, the Republic of Cyprus submits that the Board of Appeal should have found that there was, first, a high degree of visual similarity between the signs at issue, in so far as they coincided in the element ‘lloumi’, which is not used in any other Greek or English word, and, second, a high degree of phonetic similarity, because the earlier marks and the first element of the mark applied for consist of an identical number of syllables and coincide in the syllables ‘llou’ and ‘mi’. The signs at issue also showed a high degree of conceptual similarity. In that regard, the Board of Appeal incorrectly separated the groups of letters ‘grill’ and ‘oumi’ when it analysed the first element of the mark applied for, whereas it should have found, in essence, that consumers read the group of letters ‘ll’ in that sign as referring both to the words ‘grill’ and ‘lloumi’, which constitutes a play on words. As for the element ‘grill’, it refers, to a common method of preparing the goods manufactured under the certification regime for the earlier marks.

24 By the third part, the Republic of Cyprus submits that the Board of Appeal also incorrectly assessed the distinctive character of the earlier marks, which distorted the global assessment of the likelihood of confusion.

25 In the first place, the Republic of Cyprus alleges that the Board of Appeal referred to the case-law of the General Court relating to applications for an individual EU trade mark. Certification marks constitute a distinct category of marks, which fulfil different functions from those of individual marks. By merely mentioning that case-law and by failing to provide a specific statement of reasons, the Board of Appeal also failed to comply with its obligation to state reasons.

26 In the second place, the Republic of Cyprus submits that the Board of Appeal incorrectly held that the earlier marks were descriptive, merely describing a ‘speciality cheese from Cyprus’, which would amount to depriving them of distinctive character. In so doing, the Board of Appeal impedes national certification mark regimes, contrary to the case-law of the Court of Justice according to which, as regards national trade marks, their characterisation as descriptive or generic amounts, first, to denying their distinctive character and, second, to considering that they are void in all respects except from a formal point of view. In short, the approach taken by the Board of Appeal, that an earlier certification mark must satisfy the criterion relating to distinctive character as if it were an individual mark in order to be capable of being opposed or relied on under Article 8(1)(b) of Regulation No 207/2009, is necessarily incorrect.

28 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered, if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

29 Where, as in the present case, the earlier marks relied on in the opposition are national certification marks, which have been registered under national legislation transposing Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), the likelihood of confusion must be understood, by analogy with the rules governing collective marks, as being the risk that the public might believe that the goods or services covered by those earlier trade marks and those covered by the trade mark applied for all originate from persons authorised by the proprietor of those earlier marks to use them or, where appropriate, from undertakings economically linked to those persons or to that proprietor (see, to that effect and by analogy, judgment of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, C‑766/18 P, EU:C:2020:170, paragraph 64).

30 Furthermore, although, in the event of opposition by the proprietor of a certification mark, the essential function of that type of mark must be taken into account in order to understand what is meant by likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, the fact remains that the case-law establishing the criteria with regard to which the existence of such a likelihood of confusion must be assessed in practice is applicable to cases concerning an earlier certification (see, by analogy, judgment of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, C‑766/18 P, EU:C:2020:170, paragraph 65).

31 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 September 2016, Sun Cali v EUIPO – Abercrombie & Fitch Europe (SUN CALI), T‑512/15, EU:T:2016:527, paragraph 45 and the case-law cited).

32 It is in the light of those considerations that it is necessary to examine whether the Board of Appeal was right, as regards the marks at issue, to find that there was no likelihood of confusion on the part of the relevant public for the purposes of Article 8(1)(b) of Regulation No 207/2009.

33 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 marks at issue should not be assessed on the basis of a comparison of the signs at issue in the abstract and the goods or services which they cover. The assessment of that risk must, instead, be based on the perception that the relevant public will have of those signs, goods and services (see judgment of 2 October 2015, The Tea Board v OHIM – Delta Lingerie (Darjeeling), T‑624/13, EU:T:2015:743, paragraph 24 and the case-law cited).

34 In particular, 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 products or services concerned, who is reasonably well informed and reasonably observant and circumspect. Account should be taken of the fact 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).

35 In paragraph 13 of the contested decision, the Board of Appeal noted that the goods and services covered by the marks at issue were directed at the end consumer, who was deemed to be reasonably well informed and reasonably observant and circumspect. It therefore found that, since the earlier marks had been registered in Cyprus, it was necessary to take into consideration the relevant public consisting of the general public in that country.

36 It should further be added that, in so far as the mark applied for covers foodstuffs for everyday consumption and services in everyday use relating, in essence, to services for providing food and drink to private individuals and the earlier marks are also registered for foodstuffs for everyday consumption, that is to say, in essence, cheese, those goods and services are all intended for the general public, which, when purchasing them, will show a generally average level of attention (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).

37 That assessment, which appears well founded in the light of the evidence in the file and which is, moreover, not disputed by the parties, must be upheld. In so far as the earlier marks were registered in Cyprus, the relevant public consisted of the general public in that Member State.

38 In paragraphs 15, 16 and 26 of the contested decision, the Board of Appeal found that only ‘milk and milk products; edible oils and fats’ in Class 29, covered by the mark applied for, were either identical or similar to ‘cheese’ for which the earlier marks were registered, with the result that the examination of the other criteria relating to the existence of a likelihood of confusion was justified only with regard to those goods.

39 By contrast, as regards the other goods covered by the mark applied for, in Class 29 and Class 30, the Board of Appeal found, in paragraphs 17 and 18 of the contested decision, that there was no similarity with ‘cheese’ covered by the earlier marks. In particular, it found, contrary to the findings of the Opposition Division, that the goods ‘edible ices; coffee, tea, cocoa and artificial coffee’, covered by the mark applied for, were not similar to ‘cheese’, since, given their specificity, those goods could not be treated in the same way as milk products in general, such as ice cream or milk beverages.

40 Furthermore, the Board of Appeal found in paragraphs 20 to 23 of the contested decision that, although the services covered by the mark applied for and some foodstuffs could arguably be considered to be similar, in particular when restaurants sold food to take away or to consume at the bar, that did not apply to cheese. According to the Board of Appeal, although the difference between a point of sale for foodstuffs and a self-service restaurant may be fluid, the focus, as regards the services in Class 43, is, however, still on the service nature of a restaurant and not on the sale of a foodstuff itself. It found, in that regard, that, if an establishment containing a restaurant or an area like a self-service restaurant were to sell cheese over the counter, that situation would not relate to ‘restaurant services’, but to the goods as such.

41 The Board of Appeal also found, in essence, that the evidence which the Republic of Cyprus had provided in order to show that some restaurants and catering outlets served predominantly cheese-based meals or offered such meals for immediate consumption were insufficient to prove that, from the point of view of the relevant public, the services for providing food and drink and restaurant services at issue and the cheese served in those premises were, in the light of their complementarity, similar. It found, in essence, that there was no indication that consumers would perceive a common origin between the services provided by those providers and the cheese that they serve.

42 In the present case, it is necessary to examine whether the Board of Appeal was right in finding that, except as regards ‘milk and milk products; edible oils and fats’, in Class 29, the goods and services covered by the mark applied for and the goods covered by the earlier marks were dissimilar, with the result that the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 had to be ruled out at the outset.

43 In accordance with the case-law, in assessing the similarity of goods and services, all the relevant factors relating to those goods and services should be taken into account, including, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as, for example, the distribution channels of the goods and services concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).

44 First, as regards the comparison between the goods in Classes 29 and 30, covered by the mark applied for, and the goods covered by the earlier marks, it must, first of all, be noted that, although goods such as, in the present case, milk products in the form of fresh or matured halloumi cheese, which are covered by the earlier marks, on the one hand, and all the goods covered by the mark applied for, on the other, belong to the general category of foodstuffs intended for human consumption, that fact alone cannot make those products identical, since their nature, the raw materials of which they are made, their intended purpose and their method of use may be completely different (see, to that effect, judgment of 26 October 2011, Intermark v OHIM – Natex International (NATY’S), T‑72/10, not published, EU:T:2011:635, paragraph 31).

45 Next, in so far as the goods covered by the earlier marks are made from milk, with the result that, as their description indicates, they come within the category of milk products, while having, since they consist of dairy products in the form of fresh or matured halloumi cheese, a particular consistency and taste, it appears that their nature, intended purpose and method of use, as well as their method of distribution, do not differ fundamentally from those of ‘milk’ and ‘milk products’ in Class 29 covered by the mark applied for. It must therefore be held, as the Board of Appeal did (see paragraph 15 of the contested decision), that milk products in the form of fresh or matured halloumi cheese, covered by the earlier marks and ‘milk’, covered by the mark applied for, are similar, since their degree of similarity may be regarded as high and that those milk products, covered by the earlier marks, are identical to the ‘milk products’ covered by the mark applied for.

46 Furthermore, as regards the ‘edible oils and fats’ in Class 29 covered by the mark applied for, they include products of both plant origin, such as margarine, and of animal origin, such as butter, which is itself a dairy product of a similar nature to cheese, which is generally marketed close to it. Accordingly, it must be held that those goods, in the light of their composition and method of distribution, have a degree of similarity, which may be considered as average, with milk products in the form of halloumi cheese, fresh or matured, covered by the earlier marks.

47 In addition, as regards the goods ‘meat, fish, poultry and game; meat extracts’ in Class 29 covered by the mark applied for, they are products of animal origin, derived from wild or farmed animals’ muscular tissues. Admittedly, those goods are not identical to milk products in the form of fresh or matured halloumi cheese, covered by the earlier marks. However, the General Court has already held that such products, in particular those which, like meat, ham, cold meats, cold dishes and preserved meat, belong to the category of cold cuts products, may be regarded as similar to cheese and milk products, on account of their identical nature and purpose and their similar distribution channels (see, to that effect, judgment of 13 December 2007, Cabrera Sánchez v OHIM – Industrias Cárnicas Valle (el charcutero artesano), T‑242/06, not published, EU:T:2007:391, paragraph 41).

48 That finding may extend to the ‘fish’, ‘poultry’ and ‘game’ in Class 29 covered by the mark applied for. Since those goods and milk products in the form of fresh or matured halloumi cheese, covered by the earlier marks, have common characteristics as foodstuffs composed of proteins of animal origin, they may be prepared and consumed together as ingredients of various dishes and their distribution channels may be identical, in particular in the food shelves of mass retailers, where they are frequently sold close to each other.

49 The Board of Appeal therefore erred in finding that all of those goods were dissimilar from the goods covered by the earlier marks, whereas it should have found that there was a degree of similarity, which could be regarded as low.

50 As regards ‘eggs’ in Class 29 covered by the mark applied for, they are goods of animal origin such as milk products and cheese. However, eggs have a specific nutritional use and are generally marketed on specific shelves and in specific packaging on account of their fragility. Thus, although they belong to the category of foodstuffs of animal origin, the ‘eggs’ covered by the mark applied for must nevertheless be regarded as dissimilar from the goods covered by the earlier marks.

51 In addition, as the Board of Appeal noted in paragraph 14 of the contested decision, the goods covered by the earlier marks are not all ‘milk products’ in general, but only specific dairy products in the form of fresh or matured halloumi cheese. Accordingly, it cannot be held that those marks cover a wide category of goods, which should encompass all milk-based goods or goods related to milk. In those circumstances, the Board of Appeal correctly found that there was no similarity between the goods covered by the earlier marks and ‘edible ices; coffee, tea, cocoa and artificial coffee’ in Class 30, covered by the mark applied for. Both ‘edible ices’, which requires particular conservation conditions, and ‘coffee, tea, cocoa and artificial coffee’, which correspond to ingredients intended for beverage preparation, differ from cheese by their intended use as foodstuffs, and for the latter, in terms of their composition, since, in principle, although they can be consumed together with milk, they are not directly derived from milk products.

52 Lastly, as regards, first, ‘preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes’ in Class 29 covered by the mark applied for, and ‘rice; tapioca and sago; flour and preparation made from cereals; bread, pastry products and confectionery; sugar, honey, treacle; yeast, baking powder; salt; mustard; vinegar, sauces (condiments); spices’ in Class 30 covered by the mark applied for, which are foodstuffs, for the most part, of vegetable origin, they do not generally contain milk or cheese, have a specific nature linked in particular to their preservation characteristics, since they are not fresh products, with the exception of certain pastries, and are therefore marketed on specific shelves. The Board of Appeal was therefore entitled to find that those goods were dissimilar from the goods covered by the earlier marks. Such considerations also apply, in essence, to ‘ice (frozen water)’ in Class 30, covered by the mark applied for, it being also stated that ice is necessarily stored under particular temperature conditions, which differ from those of cheese.

53 Second, as regards the comparison between, on the one hand, the services covered by the mark applied for, which correspond to services for providing food and drink, restaurant services and coffee-shop services in Class 43, and, on the other, cheese covered by the earlier marks, which falls within the broader category of the foodstuffs in Class 29, the Board of Appeal was entitled, without committing any error and as it had, moreover, been requested to do by the Republic of Cyprus, to examine whether there was a similarity on account of their complementarity rather than on account of factors such as their nature, their intended purpose or their method of use. The goods and services at issue are not identical and it is indisputable that, in the light of the factors relating to their nature, their intended purpose or their method of use, they are not similar (see, to that effect, judgment of 18 February 2016, Harrys Pubar and Harry’s New York Bar v OHIM – Harry’s New York Bar and Harrys Pubar (HARRY’S BAR), T‑711/13 and T‑716/13, not published, EU:T:2016:82, paragraph 58 and the case-law cited).

54 Although the criterion of complementarity of the goods and services at issue represents only one factor among several others – such as the nature, use or distribution channels of those goods or services – in the light of which their similarity can be assessed, the fact remains that it is an autonomous criterion capable of being the sole basis for the existence of such a similarity (see, to that effect, judgment of 21 January 2016, Hesse v OHIM, C‑50/15 P, EU:C:2016:34, paragraph 23).

55 In that regard, it must be borne in mind that goods and services are complementary where they are closely connected in the sense that one is indispensable or important for using the other, so that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services (see, to that effect, judgment of 4 February 2013, Hartmann v OHIM – Protecsom (DIGNITUDE), T‑504/11, not published, EU:T:2013:57, paragraph 44 and the case-law cited).

56 As is apparent from the case-law of the Court, it must be stated that the goods in Class 29, inter alia, cheese, are necessarily used in the serving of food and drink, with the result that those services and those goods are complementary. First, cheese may be offered to the clientele of many restaurants, or even of coffee shops, by being incorporated as an ingredient in dishes that are intended to be sold on the premises or to be taken away. Secondly, cheese, without being processed as an ingredient, may be sold as is to consumers, in particular in restaurants in which the activity is not confined to the preparation and serving of cooked dishes, but also consists of selling food which is intended to be consumed away from the place in which it is sold. Such goods are therefore used in and offered by means of services for providing food and drink, restaurant services or coffee-shop services. Those goods are consequently closely connected with those services (see, to that effect, judgments of 13 April 2011, Bodegas y Viñedos Puerta de Labastida v OHIM – Unión de Cosecheros de Labastida (PUERTA DE LABASTIDA), T‑345/09, not published, EU:T:2011:173, paragraph 52, and of 18 February 2016, HARRY’S BAR, T‑711/13 and T‑716/13, not published, EU:T:2016:82, paragraph 59 and the case-law cited).

57 In the light of those considerations, it must be held, contrary to what the Board of Appeal found, that the complementarity between cheese and services for providing food and drink, restaurant services and coffee-shop services must lead to the finding that there is a certain degree of similarity between, on the one hand, the ‘services for providing food and drink; coffee-shop services; restaurants’ in Class 43 covered by the mark applied for and, on the other, the ‘cheese’ in Class 29 covered by the earlier marks. However, that degree of similarity must be qualified as weak, in so far as, first, the nature of the services and goods at issue is obviously different, because the former are fungible and the latter are not (see, to that effect, judgment of 24 January 2019, Brown Street Holdings v EUIPO – Enesan (FIGHT LIFE), T‑800/17, not published, EU:T:2019:31, paragraph 25 and the case-law cited), and, second, ‘services for providing food and drink; coffee-shop services; restaurants’ in Class 43 covered by the mark applied for can be complementary to a wide range of food products, of which cheese forms only a part.

58 However, the existence of such a similarity means that the possibility that the relevant public might be led to think that the services and the goods at issue have the same commercial origin cannot be ruled out at the outset.

59 In the light of the foregoing considerations, the second complaint of the first part must be held to be well founded and the first complaint of that part must be held to be partially well founded, in so far as the Board of Appeal committed several errors in the comparison of the goods and services covered by the mark at issue.

60 The global assessment of the likelihood of confusion should therefore have been pursued with regard to the goods ‘meat, fish, poultry and game; meat extracts’ in Class 29 and the services in Class 43 covered by the mark applied for, like the other goods covered by that mark in respect of which identity or a certain degree of similarity with the goods covered by the earlier marks has been accepted. The possible consequences of those errors in the light of the lawfulness of the contested decision will be examined in the context of the global assessment of the likelihood of confusion, which will be carried out below.

61 By contrast, in so far as the General Court was able to review the grounds on which the contested decision was based as regards the comparison of the goods and services at issue and to note errors in those grounds, it is necessary to reject the Republic of Cyprus’s argument that the relevant part of that decision is affected by a failure to state reasons.

62 The assessment of the distinctive character of a trade mark is of particular importance in so far as the likelihood of confusion must be assessed globally and that it implies some interdependence between the factors taken into account (judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33), with the result that the more distinctive the earlier mark, the greater the risk of confusion (judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18). Thus, a low degree of distinctive character implies a greater degree of similarity between the signs at issue or between the goods and services concerned in order to conclude that there was a likelihood of confusion. As a result, an underestimation of the distinctive character of the earlier mark by the Board of Appeal is likely to vitiate the contested decision with an error as regards the assessment of the likelihood of confusion (see, to that effect, judgment of 25 September 2018, Cyprus v EUIPO – M. J. Dairies (BBQLOUMI), T‑384/17, not published, EU:T:2018:593, paragraph 36).

63 Where an opposition is based on the existence of an earlier national mark, the checks relating to the degree of distinctive character of that mark have, limits, however, since they cannot lead to a finding of one of the absolute grounds for refusal laid down, inter alia, in Article 7(1)(b) and (c) of Regulation No 207/2009 (now Article 7(1)(b) and (c) of Regulation 2017/1001), namely the lack of distinctive character or the purely descriptive character of that mark. Thus, in order to avoid infringing Article 8(1)(b), read in conjunction with Article 8(2)(a)(ii) of Regulation No 207/2009 (now Article 8(2)(a)(ii) of Regulation 2017/1001), it is necessary to acknowledge a certain degree of distinctiveness of an earlier national mark on which an opposition against the registration of an EU trade mark is based (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 held that, in any event, the earlier trade mark has a minimal inherent distinctive character merely because it has been registered (see, to that effect and by analogy, judgment of 5 October 2020, Eugène Perma France v EUIPO – SPI Investments Group (NATURANOVE), T‑602/19, not published, EU:T:2020:463, paragraph 65).

64 Regulation 2017/1001, applicable from 1 October 2017, includes provisions relating to the EU certification mark, which it defines, in Article 83(1), as a trade mark ‘capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services which are not so certified’.

65 As regards national certification marks, Member States, like the Republic of Cyprus, have the option of authorising their registration, as follows from Article 15 of Directive 89/104, which is relevant ratione temporis having regard to the date of registration of the earlier marks.

66 Thus, the earlier marks constitute ‘trade marks registered in a Member State’ within the meaning of Article 8(2)(a)(ii) of Regulation No 207/2009, which may be relied on in opposition proceedings.

67 In this case, as regards the distinctive character of the earlier marks with regard to milk products in the form of fresh or mature halloumi cheese, the Board of Appeal found, in paragraph 42 of the contested decision, that their inherent distinctive character was weak, on account of the descriptive meaning of those marks. In addition, following the examination of the evidence provided by the Republic of Cyprus, the Board of Appeal found, in paragraph 35 of the contested decision, that distinctiveness acquired through long-standing use of the earlier marks had not been established.

68 Since the earlier marks come within the category of trade marks registered in a Member State, it appears justified to take into account national law in order to prove their validity. Nevertheless, it should be recalled that the EU trade mark regime under Regulation No 207/2009 must be applied independently of any national system, as it is an autonomous and self-sufficient regime (see, to that effect and by analogy, judgment of 5 December 2000, Messe München v OHIM (electronica), T‑32/00, EU:T:2000:283, paragraph 47). Accordingly, subject to the case-law referred to in paragraph 63 of this judgment, the assessment of the inherent distinctive character of the earlier marks must be carried out independently, solely on the basis of EU law. In that regard, even if, in the light of that case-law, it is appropriate to accord the words ‘halloumi’, in Latin characters, or ‘χαλλούμι’, in Greek characters, registered jointly as national certification marks, a certain distinctiveness, that does not mean that it must be accorded an intrinsic distinctive character of a level that would provide it with unconditional protection enabling opposition to any registration of a later mark including those words (see, to that effect, judgment of 25 September 2018, BBQLOUMI, T‑384/17, not published, EU:T:2018:593, paragraph 42).

69 In this respect, it should be recalled that, as stated in paragraph 33 of the contested decision, the General Court had already ruled on two occasions that the word ‘halloumi’ was perceived by the general public, in particular the Cypriot public, as referring to a speciality cheese from Cyprus (see, to that effect, judgments of 13 June 2012, Organismos Kypriakis Galaktokomikis Viomichanias v OHIM – Garmo (HELLIM), T‑534/10, EU:T:2012:292, paragraph 41, and of 7 October 2015, Cyprus v OHIM (XAΛΛOYMI and HALLOUMI), T‑292/14 and T‑293/14, EU:T:2015:752, paragraphs 20 and 21). Although the reference to those two judgments is disputed by the Republic of Cyprus in that they allegedly do not take into account the specific function of a Cypriot certification mark, the fact remains that, in the contested decision, the Board of Appeal merely found that, in the light of the evidence produced in the present case, the conclusion reached by the General Court in those judgments as regards the perception of the words constituting the earlier marks by the relevant Cypriot public remained valid. In addition, it is apparent that the Board of Appeal clearly set out the reasons that led it to refer to that case-law of the General Court, with the result that the argument of the Republic of Cyprus that the contested decision is vitiated in that regard by a failure to state reasons must be rejected.

70 Furthermore, there is nothing in the evidence produced by the Republic of Cyprus before the Board of Appeal, as analysed in paragraphs 36 to 38 and 40 of the contested decision, to contradict that finding.

71 The evidence in question, consisting of, inter alia, data relating to production volumes and sales volumes in recent years, promotion and marketing efforts, extracts from cooking magazines or press articles, relate, for the most part, to halloumi cheese as a speciality cheese from Cyprus for many years, but without it being possible to link the word ‘halloumi’, in Latin characters, or ‘χαλλούμι’, in Greek characters, used generally to refer to a type of cheese, to the certification regime established from 1992. As the Board of Appeal correctly noted, it appears, in the light of those various elements, that that word is perceived by the Cypriot public only as the name of a type of cheese produced in Cyprus.

72 Accordingly, it must be held that the word ‘halloumi’ or ‘χαλλούμι’ will be directly understood by the relevant public as describing the characteristics of the product, or even its origin in so far as it is a traditional product from Cyprus, and not as an indication of its certified quality. It must therefore be held that the earlier marks, which consist exclusively of the words ‘halloumi’, in Latin characters, or ‘χαλλούμι’, in Greek characters, in so far as they are descriptive of the characteristics and origin of the product which they cover, have only a weak intrinsic distinctive character and the existence of enhanced distinctiveness must be rejected. The first complaint in the third part, which, in essence, criticises the assessment of the distinctive character of the earlier marks by reference to the regime of individual marks and the principles referred to in the judgment of 7 October 2015, XAΛΛOYMI and HALLOUMI (T‑292/14 and T‑293/14, EU:T:2015:752), must therefore be dismissed as unfounded.

73 In any event, it must be pointed out that the question of whether the effective compliance by the person seeking registration of the mark applied for with the characteristics guaranteed by the Republic of Cyprus, as proprietor of an earlier certification marks forms part of the essential function of those marks is outside the scope of protection afforded by Article 8(1)(b) of Regulation No 207/2009. That question concerns, at most, the use of a mark, in that it could harm the essential function of a certification mark and mislead the public on the certification of the characteristics of the goods (see, to that effect, judgment of 25 September 2018, BBQLOUMI, T‑384/17, not published, EU:T:2018:593, paragraph 48).

74 In addition, it must be noted, as the Board of Appeal stated in paragraph 41 of the contested decision, that, although an application for a protected designation of origin for halloumi cheese was lodged by the Republic of Cyprus, the opposition was not based on Article 8(4)a of Regulation No 207/2009 (now Article 8(6) of Regulation 2017/1001), with the result that that element has no effect on the lawfulness of the contested decision.

75 Similarly, there is nothing to call into question the considerations set out in paragraph 39 of the contested decision, according to which the case-law in the United Kingdom concerning the national certification mark Stilton, relied on by the Republic of Cyprus before the Board of Appeal, is irrelevant to the present case, in particular because it concerned specific factual conditions, relating to a right, whose intensive use in respect of the goods and services covered by it, had been demonstrated, which was not the case here. Moreover, that argument is ineffective in so far as it relates to the earlier United Kingdom certification mark HALLOUMI, which the Republic of Cyprus waived its right to rely on in the present proceedings.

76 In those circumstances, it is necessary to reject the second complaint of the third part, alleging, in essence, that, when assessing the criteria relevant to the global assessment of the likelihood of confusion, the earlier marks were considered to have a purely descriptive character and, therefore, to find that the Board of Appeal was correct in finding that, on account of their descriptiveness, the earlier marks had weak inherent distinctiveness and that there was nothing to support the view that they had acquired enhanced distinctiveness as a result of their use.

77 In paragraph 29 of the contested decision, the Board of Appeal analysed the mark applied for, stating that that mark consisted of two words, the first of which, ‘grilloumi’, was the most distinctive element, given that it was a meaningless fanciful word, whereas the second, ‘burger’, would be perceived by the relevant public as referring to a bread roll containing fried or grilled food, generally identified by the first part of the compound word which is found in, for example, the words ‘hamburger’, ‘beefburger’ or ‘cheeseburger’.

78 Those findings of the Board of Appeal are not expressly disputed by the parties.

79 The Republic of Cyprus states, however, that the element ‘grilloumi’ should be regarded as the dominant element of the mark applied for and that it is necessary to attach only very low importance to the element ‘burger’ in view of its descriptive character.

80 In that regard, it must first be held that the Board of Appeal’s assessment that the word ‘grilloumi’ is original and fanciful, which contributes to its distinctiveness, cannot be upheld.

81 While it is true that the earlier marks convey the concept of a type of Cypriot cheese, in the present case, halloumi cheese, it cannot be ruled out that, to a certain extent, the mark applied for conveys a concept that has a connection with the concept of Cypriot cheese halloumi, conveyed by the earlier marks.

82 For the relevant public, which consists of the general public in Cyprus and which is familiar with halloumi cheese, the word ‘grilloumi’, the final part of which, ‘lloumi’, is identical to that of the word ‘halloumi’, may be understood as referring to the concept of grilled halloumi cheese. However, it cannot be ruled out that consumers also perceive the play on words due to the fact that the element ‘ll’ of the word ‘grilloumi’ refers both to the words ‘grill’ and ‘halloumi’, which is capable of conferring on it an original character. In the light of those findings, it must be held that the word ‘grilloumi’, in so far as it is one of the elements of a mark covering foodstuffs and food services, has some degree of distinctiveness which may be regarded as weak.

83 Next, the word ‘burger’ must not, however, be considered to be totally negligible. While it is descriptive in that, as the Board of Appeal noted, it covers a bread roll containing fried or grilled food, it is commonly found in combination with another word which specifies the type of food contained in the bread in question.

84 It must be borne in mind that, although, as a general rule, the public will not consider a descriptive element forming part of a composite mark as the distinctive and dominant element of the overall impression conveyed by that mark, that does not mean that a descriptive element of a mark is necessarily negligible in the overall impression produced by it. 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 (see judgment of 28 November 2017, Laboratorios Ern v EUIPO – Sharma (NRIM Life Sciences), T‑909/16, not published, EU:T:2017:843, paragraph 34 and the case-law cited).

85 In this case, to the extent that, as the Board of Appeal noted, the relevant public has already been confronted with word combinations made up of the word ‘burger’ combined with another word, it will perceive that word, in the mark applied for, as a possible indication of a food composition associating a bread roll with other food.

86 Thus, although the word ‘burger’, taken in isolation, has no particular distinctive character in that it relates to foodstuffs, the position is different in the present case, in so far as it is associated with the word ‘grilloumi’, with which it is a combination with a certain degree of originality. It must therefore be held that it is not purely descriptive and that it has at least a certain degree of distinctiveness, which must be classified as weak, in view of its association with the word ‘grilloumi’.

87 Lastly, it must be added that, in accordance with settled case-law, as far as marks containing word elements are concerned, consumers generally pay greater attention to the beginning of a mark than to the end (see judgment of 14 January 2016, The Cookware Company v OHIM – Fissler (VITA+VERDE), T‑535/14, not published, EU:T:2016:2, paragraph 61 and the case-law cited).

88 Accordingly, even though not expressly stated by the Board of Appeal, the word ‘grilloumi’, by its position at the beginning of the sign constituting the mark applied for and its more distinctive character than the word ‘burger’, with which it is associated in that sign, must be regarded as the most important element in the perception of that sign by the relevant public, as the applicant in essence submits.

89 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 assessment 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).

90 In this case, the earlier marks are composed of the words ‘halloumi’, in Latin characters, or ‘χαλλούμι’, in Greek characters, whereas the mark applied for consists of the two words ‘grilloumi’ and ‘burger’.

91 As regards the visual comparison of the marks at issue, the Board of Appeal found, in paragraph 30 of the contested decision, that their similarity was low. In that regard, it found that that similarity was due only to the coincidence of the signs at issue in either the group of letters ‘lloumi’ in the word ‘halloumi’, in Latin characters, or the letter ‘o’ and the group of two letters ‘mi’ as regards the word ‘χαλλούμι’ in Greek characters. In so far as the word ‘grilloumi’ is unique and fanciful, whether or not the word ‘grill’ is understood, the sign constituting the mark applied for will be regarded as a whole and the first letters making up the word ‘grill’, with no equivalent in the earlier sign, are not disregarded. Furthermore, irrespective of whether the word ‘burger’ is regarded as referring to bread rolls, it is not negligible and is not disregarded visually.

92 It must be held that the arguments of the Republic of Cyprus cannot call into question the findings made, in essence, by the Board of Appeal. Although the word ‘grilloumi’ does indeed correspond to a combination of the word ‘grill’ and the group of letters ‘oumi’, a group of letters which is also present at the end of the word ‘halloumi’, in Latin characters, and the letter ‘o’ and the group of two letters ‘mi’ appear in the word ‘χαλλούμι’, in Greek characters, it is nevertheless a word with a certain degree of originality, although weak, but in which the word ‘grill’ will not be disregarded by the public, in particular because the beginning of a word mark is more likely to attract the attention of the consumer than the rest of the mark (see, to that effect, judgment of 25 September 2018, BBQLOUMI, T‑384/17, not published, EU:T:2018:593, paragraph 59). Furthermore, the second word of which the mark applied for consists, ‘burger’, also plays a role of differentiation between the signs at issue because, first, it is absent from the earlier marks and, second, the public is used to expressions or words formed by a combination including the word ‘burger’ (such as, for example, in the words ‘hamburger’, ‘beefburger’ or ‘cheeseburger’). The visual similarity between the mark applied for and the earlier marks, in the light of both the word ‘halloumi’, in Latin characters, or of the word ‘χαλλούμι’, in Greek characters, is therefore low.

93 As regards the phonetic comparison of the signs at issue, the Board of Appeal found, in paragraph 31 of the contested decision, that their similarity was also low in that respect. In that regard, it found that the words composing the earlier marks were pronounced identically, whether they were written in Latin or Greek characters. The sign of which the mark applied for consists would probably be pronounced in its entirety, because consumers would be accustomed to using the word ‘burger’ preceded by a word indicating what that ‘burger’ contains, even though, in the present case, it is a fanciful and meaningless word. Thus, the signs differ in their first syllables, ‘ha’ and ‘gri’, and by the last syllables of the sign comprising the mark applied for, ‘bur’ and ‘ger’, with the result that, out of the five syllables of that sign, only the two syllables in the middle, ‘lou’ and ‘mi’ are similar to syllables of the sign constituting the earlier marks.

94 That assessment by the Board of Appeal can, in essence, be upheld. The common presence of two contiguous syllables in each of the signs at issue leads to some similarity, but, on the other hand, those signs differ significantly in other respects, in particular because the sign constituting the mark applied for is longer than the sign of which the earlier marks consist, and when the public is called upon to pronounce it, it will in all likelihood pronounce the two words of which it consists, and therefore also pronounce the word ‘burger’, which will help to differentiate it from the earlier marks.

95 Conceptually, the Board of Appeal found, in paragraph 32 of the contested decision, that it was not possible to make a comparison because the first element of the sign constituting the mark applied for, ‘grilloumi’, is meaningless and that, in so far as the meaning of the word ‘grill’ is perceived by consumers, it is different from that of the word ‘halloumi’. Moreover, there is nothing to indicate that, in particular in the Greek language, the group of letters ‘oumi’ would be perceived as an abbreviated form of the word ‘halloumi’.

96 The Board of Appeal’s analysis cannot, however, be followed, in so far as the earlier marks convey the concept of a type of Cypriot cheese, in the present case, halloumi cheese, and that, to a certain extent, the mark applied for conveys a similar concept. It is incorrect to consider that the final part of the word ‘grilloumi’, in the mark applied for, will not be understood by the relevant public as referring to halloumi cheese. For that public, the association of the group of letters ‘oumi’ with the word ‘grill’ is likely to refer to the concept of grilled halloumi cheese. While it is true that the concept conveyed by the word ‘burger’ in the mark applied for has no equivalent in the earlier marks, which helps to distinguish them, it must nevertheless be held that the concept of halloumi cheese to which, to a certain extent, the mark applied for refers, entails a certain degree of conceptual similarity, which must be classified as low.

97 It must therefore be held that the second part of the first plea is partially well founded, in so far as the Board of Appeal erred in its conceptual comparison of the signs at issue. The possible effect of that error on the lawfulness of the contested decision will be examined below, at the stage of the global assessment of the likelihood of confusion.

98 The global assessment implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and Others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

99 In the present case, it should be recalled that, in paragraph 47 of the contested decision, the Board of Appeal concluded that, although the signs at issue coincided in the group of letters ‘lloumi’, they differed overall in terms of the distinctive element of the sign constituting the mark applied for, namely the single fanciful word ‘grilloumi’, which did not appear in the sign constituting the earlier marks and did not constitute a distinctive element of that sign. In view of the weak distinctive character of the earlier marks, the differences between the signs at issue were sufficient to distinguish them with certainty, even for identical goods, and there was no likelihood of confusion.

100 In that regard, since the existence of a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar, the finding that there is no likelihood of confusion must, in any event, be upheld as regards ‘preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs’ in Class 29 covered by the mark applied for, as well as all the goods in Class 30 covered by the mark applied for, since they are dissimilar to the goods covered by the earlier marks.

101 By contrast, as regards the services and other goods covered by the mark applied for, which are identical or similar, to varying degrees, to the goods covered by the earlier marks, the existence of a likelihood of confusion cannot be ruled out at the outset, with the result that the global assessment of that likelihood must be carried out in the light of all the relevant factors.

102 First, as regards the factor relating to the similarity of the signs at issue, that factor relates to the presence in the mark applied for of the group of letters ‘lloumi’ which appears in the word ‘halloumi’, in Latin characters, as well as that of the letter ‘o’ and the group of two letters ‘mi’ which appear in the word ‘χαλλούμι’, in Greek characters, since those words make up the earlier marks, which is the source of a low degree of visual, phonetic and conceptual similarity.

103 However, those considerations must be seen in the light of the fact that, when the relevant public is faced with the sign constituting the mark applied for, the most important element in the perception of that sign, namely ‘grilloumi’, will appear to it as displaying a certain degree of originality, which, although weak, will be reinforced by the presence of the word ‘burger’, which plays a non-negligible differentiating role, since it is absent from the earlier marks and its combination with the word ‘grilloumi’ also has, as such, a certain degree of originality.

104 The word ‘halloumi’, which is the sole element of the earlier marks only enjoys, in itself, a weak inherent distinctive character. While the recognition of the weak distinctive character of an earlier mark does not in itself preclude a finding of a likelihood of confusion (see, to that effect, order of 27 April 2006, L’Oréal v OHIM, C‑235/05 P, not published, EU:C:2006:271, paragraphs 42 to 45), the fact remains that, where the elements of similarity between two signs arise from the fact that they share a component which has a weak distinctive character, the impact of such elements of similarity on the global assessment of the likelihood of confusion is itself low (see, to that effect, judgments of 22 February 2018, International Gaming Projects v EUIPO – Zitro IP (TRIPLE TURBO), T‑210/17, not published, EU:T:2018:91, paragraph 73 and the case-law cited, and of 20 September 2018, Kwizda Holding v EUIPO – Dermapharm (UROAKUT), T‑266/17, EU:T:2018:569, paragraph 79).

105 In those circumstances, the low degree of similarity between the signs at issue is unlikely to contribute to the existence of a likelihood of confusion. Those signs coincide in limited elements, in the present case, on the one hand, the group of letters ‘lloumi’ in the word ‘halloumi’, in Latin characters, and, on the other, the letter ‘o’ and the group of two letters ‘mi’, which appear in the word ‘χαλλούμι’, in Greek characters. In so far as those elements will be perceived in the sign constituting the mark applied for as referring to halloumi cheese, they will be understood by the relevant public as a mere reference to that cheese and, therefore, as the type of goods covered by the earlier marks.

106 Second, as regards the distinctive character of the earlier marks, those marks have a low degree of inherent distinctiveness. Moreover, as stated in paragraph 74 of this judgment, it is not necessary to take into account in this case the existence of enhanced distinctiveness acquired through use, in so far as the evidence put before the Court does not make it possible to find that the relevant public, faced with the earlier marks, will associate them with something other than halloumi cheese, having regard to the fact that they refer to the generic name of that type of cheese rather than to the commercial origin of the goods to which they refer, as originating from persons authorised by their proprietor to use those marks or, where appropriate, from undertakings economically linked to those persons or that proprietor.

107 In those circumstances, the level of protection conferred by the earlier marks, having regard to their low degree of inherent distinctiveness, must, in itself, be low.

108 Third, it is necessary to take into consideration the factor relating to the fact that the ‘milk products’ covered by the mark applied for are identical to the goods covered by the earlier marks and that those goods and some of the goods covered by the mark applied for, namely ‘milk’, ‘edible oils and fats’ and ‘meat, fish, poultry and game; meat extracts’ are similar to different degrees.

109 In that regard, it must be borne in mind that all the goods at issue are everyday consumer goods, in respect of which the relevant public will display an average level of attention at the time of the purchase.

110 It can be inferred that there is a likelihood of confusion only if the relevant public is likely to be misled as to the commercial origin of the goods covered by the mark applied for.

111 In this case, that likelihood does not appear to have been demonstrated, even in respect of the ‘milk and milk products’ covered by the mark applied for, which are similar or identical to dairy products in the form of fresh or matured halloumi cheese, covered by the earlier marks.

112 When the relevant public comes into contact with the mark applied for and assuming that it also pays attention to the group of letters ‘lloumi’ contained in that mark, or even that it perceives that that group of letters is capable of referring to the concept of halloumi cheese, it will not establish a link between that mark and the earlier marks, since, on the one hand, it will establish, at most, a link between those marks and the goods which they cover, namely dairy products which are in the form of fresh or matured halloumi cheese, and on the other, the marks at issue which, considered as a whole, only have a low degree of similarity.

113 In the light of all the foregoing considerations, it must be held that, notwithstanding the errors which it made, first, in the comparison of the goods and services covered by the marks at issue, and, second, in the comparison of those marks, the Board of Appeal was entitled to find, in this case, that there was no likelihood of confusion.

The second plea in law, alleging infringement of Article 8(5) of Regulation No 207/2009

116 In the first part, the Republic of Cyprus disputes the Board of Appeal’s assessment that the existence of a risk, future and not hypothetical, of unfair advantage taken of the distinctive character of the earlier marks, or of damage to their distinctive character, has not been demonstrated, even prima facie. In paragraph 27 of its statement before the Board of Appeal, the Republic of Cyprus expressly referred to its observations of 10 August 2017 before the Opposition Division, in which it set out the heads of damage on which it intended to rely. According to the Republic of Cyprus, the Board of Appeal therefore failed to take those observations into consideration. Had it done so, it would have considered the Republic of Cyprus’ claims arising from Article 8(5) of Regulation No 207/2009 to be well founded.

117 In the second part, the Republic of Cyprus submits that the Board of Appeal also erred in finding that it had not been established that the earlier marks had a reputation. However, the evidence submitted was sufficient, first, to prove that fact and, second, to show that the relevant public knew those marks as registered certification marks, although there was no obligation in that regard in order to implement Article 8(5) of Regulation No 207/2009. Nor is there any requirement, in order to establish the acquired distinctiveness or reputation of a mark for the purposes of that provision, to prove that the relevant public knew that the mark in question is a registered trade mark in the European Union.

119 Article 8(5) of Regulation No 207/2009 provides that upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2 thereof, the trade mark applied for is not to be registered where it is identical with, or similar to, the earlier trade mark and it is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, it has a reputation in the European Union and, in the case of an earlier national trade mark, it has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

120 For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation No 207/2009, a number of conditions must, therefore, be satisfied. First, the earlier trade mark and the mark applied for must be identical or similar. Secondly, the earlier trade mark must have a reputation in the European Union, in the case of an earlier EU trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Thirdly, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. As those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (see judgment of 31 May 2017, Alma-The Soul of Italian Wine v EUIPO – Miguel Torres (SOTTO IL SOLE ITALIANO SOTTO il SOLE), T‑637/15, EU:T:2017:371, paragraph 29 and the case-law cited).

121 In this case, it is appropriate to begin by examining the second condition, relating to the existence of a reputation of the earlier marks in Cyprus.

122 In paragraph 56 of the contested decision, the Board of Appeal found that, in the absence of sufficient evidence of the enhanced distinctiveness and a fortiori of the reputation of the earlier marks by reference to certification standards which the legislation imposes on authorised users of those marks, there could be no detriment. Consumers who purchase halloumi cheese would not be able to distinguish certified quality, since, in essence, they would perceive the word ‘halloumi’ at most as covering a particular type of cheese produced in Cyprus, and not as referring to a mark.

123 The Board of Appeal’s appraisal must be upheld. In that regard, in the context of the examination of possible distinctiveness acquired through use of the earlier marks, and as is apparent from paragraphs 36 to 38 and 40 of the contested decision, the Board of Appeal carried out a detailed examination of the evidence which the Republic of Cyprus had produced in order to demonstrate that, in the Member State in question, the earlier marks, owing to their long-standing use, had acquired enhanced distinctiveness, which may have contributed to establishing that they enjoyed a certain level of reputation with the relevant public.

124 The Board of Appeal noted that, among the various documents which had been produced before the Opposition Division, only one had been identified as specifically relating to HALLOUMI as a certification mark registered in the name of the Republic of Cyprus. It found that the other documents related, for the most part, to halloumi cheese as a speciality cheese produced in Cyprus and merely proved use of the word ‘halloumi’ in relation to that cheese, without it being possible to infer therefrom that the relevant Cypriot public would have perceived it otherwise than as a description of the characteristics of a particular type of cheese.

125 In the light of the foregoing, it must be held that the condition relating to the fact that the earlier trade marks must have a reputation in the Member State concerned is not satisfied.

126 Since one of the conditions necessary for the application of Article 8(5) of Regulation No 207/2009 is not satisfied, the enhanced protection granted to an earlier trade mark under that provision cannot validly be relied on.

127 Accordingly, without it being necessary to examine the first part, relating to the condition concerning the existence of a risk, future and not hypothetical, of unfair advantage being taken of, or detriment to, the distinctive character of the earlier marks, the second plea in law must be dismissed as unfounded and, therefore, the action must be dismissed in its entirety.

128 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

129 In the present case, since the Republic of Cyprus has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by EUIPO and the intervener, in accordance with the forms of order sought by those parties.

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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 - Fontana Food (GRILLOUMI BURGER) (Judgment) [2021] EUECJ T-593/19 (08 December 2021) URL: http://www.bailii.org/eu/cases/EUECJ/2021/T59319.html Cite as: EU:T:2021:865, [2021] EUECJ T-593/19, ECLI:EU:T:2021:865, [2022] ETMR 15

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