Trade Marks and Geographical Indications - Foundation for the Protection of the Traditional Cheese of Cyprus Named Halloumi v Fontana Food Ab

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Jane Lambert

Chancery Division (Tom Mitcheson KC)  Foundation for the Protection of the Traditional Cheese of Cyprus Named Halloumi v Fontana Food Ab [2024] EWHC 2311 (Ch) (9 Sept 2024)

In Geographical Indications, I wrote that signs that are used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin may be protected by collective and certification marks.   An example of a collective mark is HALLOUMI which was registered by the Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi ("the Foundation") with effect from 22 Feb 1999 under trade mark number UK901082965.  The Foundation is an association of producers dedicated to the promotion of halloumi which is the traditional cheese of Cyprus.

The Application

Fontana Food AB ("Fontana") is a Swedish company founded by Cypriot expatriates.   On 8 Sept 2021, it applied to register the word  “GRILLOUMI” as a trade mark for "Services for providing food and drink; Coffee-shop services; Restaurants" in Class 43 under registration number UK3691867.  On 10 Sept 2021 it applied to register “GRILLOUMAKI” as a trade mark for "Meat, fish, poultry and game; Meat extracts; Preserved, dried and cooked fruits and vegetables; Jellies, jams, compotes; Eggs, milk and milk products; Edible oils and fats" in class 29  and Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; Flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, treacle; Yeast, baking-powder; Salt, mustard; Vinegar, sauces (condiments); Spices; Ice" in class 30 under registration number UK3693059.

The Opposition
The Foundation opposed the applications under s.5 (2) (b) and s.5 (3) of the Trade Marks Act 1994.  The opposition came on before Heather Harrison on 11 May 2023.  She delivered her decision on 20 Dec 2023 (see Re Fontana AB's Application., Fontana AB v Foundation for the Protection of the Traditional Cheese of Cyprus Named Halloumi  BLO/1200/23  20 Dec 2023). By para [119] of her decision, Ms Harrison dismissed the opposition and awarded Fontana AB £2,400 in costs.

The Appeal
The Foundation appealed to the High Court under s.76 (2) of the Act.  The appeal came on before Mr Tom Mitcheson KC sitting as a deputy judge of the High Court on 23 July 2024.  He handed down judgment on 9 Sept 2024 (see Foundation for the Protection of the Traditional Cheese of Cyprus Named Halloumi v Fontana Food Ab [2024] EWHC 2311 (Ch) (9 Sept 2024)).  By para [64] of his judgment, Mr Mitcheson dismissed the appeals and allowed the marks to proceed to registration. 

Earlier Mark

S.5 (2) (b) of the Trade Marks Act 1994 provides:

"A trade mark shall not be registered if because—
..........
(b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark."

S.5 (3) further provides:

"A trade mark which—

(a) is identical with or similar to an earlier trade mark, and
(b). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom ... and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark."

The earlier mark on which the Foundation relied was HALLOUMI.  The only goods for which that mark was registered was cheese in class 29.

Similarity and Likelihood of Confusion

The deputy judge started with GRILLOUMI. 

S.5 2 (b) requires a comparison between the goods or services for which a mark is to be registered with those for which the earlier mark has been registered.   The hearing officer made that comparison between paras [61] and [62] of her decision:

"[61] 'Services for providing food and drink' and 'restaurants' differ in nature and purpose from cheese. Methods of use are also different and although the users overlap, this is due to the users being the general public and it is not a significant point of coincidence. I accept that cheese may be an ingredient in meals served in restaurants (encompassed by 'services for providing food and drink'). I also recognise that cheese may be provided without further processing in restaurants, for example as part of a cheeseboard. The General Court ('GC') reversed a finding of no similarity between the above services and cheese, holding that cheese is 'necessarily used in the serving of food and drink' and therefore that the goods and services are complementary. It added that cheese is to be found both as an ingredient in prepared dishes and that "cheese, without being processed as an ingredient, may be sold as it 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' (Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, T-555/19, EU: T:2021:204 at [45]). There is no evidence that it is typical for cheese to be sold for consumption off the premises by restaurants or other food service providers in the UK. Nor is there any evidence that cheese is important to restaurants in the UK such as would give rise to complementarity. In any event, I do not consider that the average consumer would assume that the service provider was also responsible for the cheese: although there was mention of fondue restaurants, it is beyond my experience as an average consumer that either fondue restaurants or restaurants known for making their own cheese are common in the UK, and there is no evidence to support the premise. Although one could obtain a cheese course from a restaurant, a real competitive choice between the purchase of cheese as a good and the use of restaurant services strikes me as unlikely. These goods and services are not similar. If that is not right, there is a low degree of similarity on account of shared channels of trade and complementarity.
[62] As for 'coffee-shop services', I bear in mind that the GC held in the same decision that these services are also complementary to cheese. I accept that it is commonplace for coffee shops to offer snacks and light meals such as sandwiches and jacket potatoes, which may include cheese. However, I am doubtful that, in the UK market, cheese would be perceived as important for coffee shop services: cheese is, if anything, likely to be viewed as one ingredient among many in a finished meal or snack. I do not think that these goods and services are similar. If that is not right, they are similar only to a low degree."

One of the Foundation's grounds of appeal was that the hearing officer had erred in finding that "Services for providing food and drink; Coffee-shop services; Restaurants" were dissimilar or similar only to a low degree to "cheese." Mr Mitcheson agreed with that submission up to a point. It was wrong to have found that there was no similarity but the degree of similarity was low.  That had also been the General Court's view in  Case T‑555/19 Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO [2021] EUECJ T-555/19, ECLI:EU: T:2021:204, EU: T:2021:204 and Case T595/19 Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO ECLI:EU: T:2021:866, EU: T:2021:866, [2021] EUECJ T-595/19.

On comparing HALLOUMI with GRILLOUMI the hearing officer considered that the marks were visually and aurally similar to a medium degree and that some consumers would perceive the combination of GRILL and HALLOUMI but others would only perceive GRILL. She considered whether the medium similarity of marks and the low similarity of goods and services were likely to lead to confusion at para [85]:

"In case I am held to be wrong on appeal, I have considered whether the opposition against the 'GRILLOUMI mark would succeed on the alternative basis that the goods and services are similar to a low degree. My conclusion is that it would not. There is a good degree of conceptual overlap for those consumers who perceive 'GRILLOUMI' as meaning 'grilled halloumi' or 'halloumi for grilling', and the marks are visually and aurally similar to a medium degree. The common average consumer is the general public, who will pay a medium degree of attention and for whom the earlier mark does not have an enhanced distinctive character. However, I do not think that, in view of the limited overlap between the goods and services, there is a likelihood of confusion, whether direct or indirect. The differences between the marks are sufficient that there is no risk that the marks will be mistaken for one another. There is, in my view, no reason why the average consumer would believe that the members of the opponent's association who use the earlier mark to indicate the cheese produced by them would have adopted, or be associated with the use of, a perceptibly different mark for the services at issue. The change from 'HALLOUMI' to 'GRILLOUMI' is not a logical evolution of a trade mark which would cause the average consumer to believe that the marks were used by the same or connected undertakings. Even were the trade buyer of cheeses to use the food services in class 43, they are unlikely to believe that the contested mark, given the differences between that mark and 'HALLOUMI', indicates that the class 43 services are provided by or as the result of an economic connection with the opponent or its members....."

The Foundation argued that it would have been impossible for Ms Harrison to arrive at a fair conclusion on the likelihood of confusion because she had ruled that there was no similarity between "Cheese" and "Services for providing food and drink; Coffee-shop services; Restaurants". It also alleged that the hearing officer had failed to take account of Fortuna's intention of alluding to "HALLOUMI." Finally, it contended that she had not considered properly the likelihood of indirect confusion.  

Mr Mitcheson disposed of the first two points easily.  He pointed out that tribunals are often asked to reach conclusions on alternative hypotheses because cases may be put on alternative bases and the English system requires all relevant issues to be determined at one level before proceeding to appeal. If any such alternative conclusion was automatically deemed invalid just because the primary conclusion was wrong, the system would soon break down.   As for the second, an applicant's intention was irrelevant. The approach was entirely objective.  A party may not intend a mark to be confusingly similar but find that it is. Conversely, a party may deliberately choose a sign that is similar to an earlier mark but find that it does not lead to confusion. 

The learned deputy judge found the question of whether the hearing officer had considered properly the question of indirect confusion to be the most difficult.   The difference between direct and indirect confusion had been explained by Iain Purvis QC in LA Sugar Limited v Back Beat Inc., BL O/375/10:

"[16] Although direct confusion and indirect confusion both involve mistakes on the part of the consumer, it is important to remember that these mistakes are very different in nature. Direct confusion involves no process of reasoning – it is a simple matter of mistaking one mark for another. Indirect confusion, on the other hand, only arises where the consumer has actually recognized that the later mark is different from the earlier mark. It therefore requires a mental process of some kind on the part of the consumer when he or she sees the later mark, which may be conscious or subconscious but, analysed in formal terms, is something along the following lines: 'The later mark is different from the earlier mark, but also has something in common with it. Taking account of the common element in the context of the later mark as a whole, I conclude that it is another brand of the owner of the earlier mark.'"

Mr Purvis gave examples in the para [17] of his judgment:

"(a) where the common element is so strikingly distinctive (either inherently or through use) that the average consumer would assume that no-one else but the brand owner would be using it in a trade mark at all. This may apply even where the other elements of the later mark are quite distinctive in their own right ('26 RED TESCO' would no doubt be such a case). 

(b)where the later mark simply adds a non-distinctive element to the earlier mark, of the kind which one would expect to find in a sub-brand or brand extension (terms such as 'LITE', 'EXPRESS', 'WORLDWIDE', 'MINI' etc.). 

(c) where the earlier mark comprises a number of elements, and a change of one element appears entirely logical and consistent with a brand extension ('FAT FACE' to 'BRAT FACE' for example). "

Mr Mitcheson reviewed the hearing officer's reasoning.  She had referred to the judgment of the Court of Justice of the European Union in Case C‑766/18 P Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, EU: C:2020:170, [2020] EUECJ C-766/18P, [2020] ETMR 31, ECLI:EU: C:2020:170:

"[63] When considering cases concerning opposition proceedings based on earlier individual marks, the Court has repeatedly held that the likelihood of confusion must be understood as the risk that the public might believe that the goods or services covered by the earlier mark and those covered by the mark applied for come from the same undertaking or, as the case may be, from economically linked undertakings (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU: C:2007:333, paragraph 33; of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU: C:2014:305, paragraph 19; and of 12 June 2019, Hansson, C‑705/17, EU: C:2019:481, paragraph 40).

[64] However, where, as in the present case, the earlier mark is a collective mark, the essential function of which is, pursuant to Article 66 (1) of Regulation No 207/2009, to distinguish the goods or services of the members of the association which is the proprietor from those of other undertakings (judgments of 20 September 2017, The Tea Board v EUIPO, C‑673/15 P to C‑676/15 P, EU: C:2017:702, paragraph 63, and of 12 December 2019, Der Grüne Punkt v EUIPO, C‑143/19 P, EU: C:2019:1076, paragraph 52), the likelihood of confusion, within the meaning of Article 8 (1) (b) of Regulation No 207/2009, must be understood as being the risk that the public might believe that the goods or services covered by the earlier trade mark and those covered by the trade mark applied for all originate from members of the association which is the proprietor of the earlier trade mark or, where appropriate, from undertakings economically linked to those members or to that association."

Ms Harrison's reference to Case C‑766/18 P Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO satisfied the deputy judge that she had focussed on the correct analysis.  He agreed with her finding that few members of the public would have understood HALLOUMI to be a collective mark. As the hearing office had noted at para [62] of her decision, there had to be a "proper basis" for finding a likelihood of indirect confusion in the absence of evidence of direct confusion.   She had found none and Mr Mitcheson held that she had been entitled to conclude that there had been no indirect confusion.

Turning to GRILLOUMAKI, the Foundation submitted that the hearing officer had erred in finding that the marks were visually similar to a fairly low degree, aurally similar to a low degree and conceptually dissimilar or, alternatively, conceptually neutral. It contended that she should have accepted that "(M)AKI" would have been seen as a diminutive by the average consumer and therefore there would have been a much higher degree of conceptual similarity between the marks. Ms Harrison had held that there was no evidence to support that contention and that she could not take judicial notice of it.

On appeal, the Foundation referred the deputy judge to evidence of a substantial Greek-speaking community in the UK and their understanding of the linguistic point. His response was that the evidence did not go far enough to support the contention that the Greek language is understood by a sufficiently large proportion of average consumers that "AKI "could be ignored in a comparison with the earlier mark.  Moreover, it did not mean that the average consumer would understand that point.

The s.5 (2) (b) appeal failed in the case of both trade mark applications.

Marks with a Reputation

The hearing officer had dismissed the appeal under s.5 (3) on the basis that HALLOUMI had no reputation among the general public as a collective trade mark.  The Foundation contended that she had been wrong to do so. There had been evidence of reputation among the trade before her and the Foundation argued that Fontana intended to take unfair advantage of such reputation.   Mr Mitcheson rejected that contention at para [53] of his judgment for the following reasons:

"First, it ignores the elephant in the room that halloumi is overwhelmingly used descriptively for the reasons already discussed. Fontana cannot be criticised for that. Second, it focuses on the use of GRILLOUMI for cheese, when this is not the correct categorisation of goods/services for the purposes of the present case. Third, it focuses mainly on the general public (irrelevant under s.5 (3)) and not the trade customers who will have a much more sophisticated understanding of the market.

He therefore dismissed the appeal under s.5 (3) of the Act in respect of both applications.

Respondent's Notice

Fontana had submitted a Respondent's Notice alleging that there had been insufficient use of the HALLOUMI mark.   As the deputy judge had dismissed the Foundation's appeal he did not have to consider the Respondent's Notice.   However, he saw no error in the hearing officer's finding of genuine use. Had he been required to decide the point he would have dismissed the applicant's case.

Comment

The takeaway from this case is that the function of a collective mark is to distinguish the goods or services of members of the association that owns the mark from the goods or services of other undertakings. That affects oppositions under both s.5 (2) and s.5 (3).  The appeal contains a useful reminder of the differences between direct and indirect confusion.  Anyone wishing to discuss this case may call me on 020 7404 5252 during UK office hours or send me a message through my contact form.