Some like it grilled — or yet another battle for halloumi cheese

The Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v Fontana Food SE [2024] EWHC 2311 (Ch)

The UK High Court recently rejected the appeals of an association of halloumi cheese producers (the “Foundation”) against the decision of the UK Intellectual Property Office (the “IPO”) to allow two trade marks, GRILLOUMI and GRILLOUMAKI, to be registered by Fontana Food AB (“Fontana”), a Swedish company founded by Cypriot expatriates.

Background

The Foundation is the owner of the UK collective mark HALLOUMI in Class 29 for “cheese”. In September 2021, Fontana sought to apply for GRILLOUMI in Class 43 including “restaurants” and GRILLOUMAKI for goods in Classes 29 and 30. The Foundation opposed the registration of Fontana’s word marks under sections 5(2)(b) and 5(3) of the UK Trade Marks Act (“TMA”) 1994 on the grounds of likelihood of confusion and unfair advantage of the Foundation’s earlier mark HALLOUMI.

Decision

The High Court held that the IPO had been right to dismiss the Foundation’s oppositions and to allow the trade marks GRILLOUMI and GRILLOUMAKI to proceed to registration.

What is a collective mark?

Collective marks are a specific type of trade marks used by members of a trade association to indicate that their goods and services originate from that association. This distinguishes them from geographical indications and protected designations of origin (“PDO”) which protect the name of a product whose qualities, characteristics or reputation are essentially due to the product’s place of origin. Notwithstanding the above, a collective mark must satisfy the same requirements as an ordinary mark in opposition proceedings. In the present case, this means proving likelihood of confusion under section 5(2)(b) or reputation and unfair advantage under section 5(3).

Are cheeses and restaurant services similar?

Although some restaurants were found to be responsible for providing the goods, such as cheese, in the restaurant, the High Court considered that the average consumer would be unlikely to assume that any cheese served in a restaurant had originated from the same undertaking as the restaurant services. Therefore, there was only a low degree of similarity between the earlier mark’s goods and the services applied for by reason of the shared channels of trade and complementarity.

Untangling the generic use from the trade mark use: avoiding the halloumi trap

Importantly, the Court reiterated what the relevant test for likelihood of confusion was where the earlier collective mark is, or contains, a descriptive term. To that effect, the test under section 5(2) of the TMA was not whether the use of GRILLOUMI called to mind halloumi cheese as such (because this was the descriptive use — the “trap for the unwary”), but whether because of the use of GRILLOUMI, there was a risk that the public might believe that the goods or services covered by the earlier mark and those covered by the trade mark applied for all originated from members of the association.

This approach was supported by the IPO’s findings that the earlier mark was only weakly distinctive as it is unlikely that the member of the public encountering the word “HALLOUMI” on cheese packaging would have gained any appreciation that “HALLOUMI” was a collective trade mark. The Court therefore agreed with the conclusions of the IPO that there was no likelihood of direct or indirect confusion between the two signs.

The Hight Court also agreed with the IPO that there was no likelihood of confusion between HALLOUMI and GRILLOUMAKI, even for identical goods, insofar as there was insufficient evidence to support the Foundation’s contentions that the average consumer would understand the suffix “-AKI” as designating a diminutive in Greek and resulting in a higher degree of conceptual similarity between the marks. The marks were therefore too different.

Reputation and unfair advantage

Although HALLOUMI had a small to reasonable reputation amongst trade consumers, there was no reputation amongst the general public as a collective trade mark. The Court therefore agreed with the IPO’s conclusions that, on account of the differences between the goods and services, the reputation and distinctiveness of HALLOUMI as a collective mark are insufficiently strong for the claim on unfair advantage to succeed.

The Halloumi War: to be continued…

Although Fontana won this battle, they surely have not won the war (yet). Indeed, halloumi producers have won on other fronts by succeeding to register Χαλλούμι / Halloumi / Hellim as a protected designation of origin (PDO) in 2021, offering a stronger and broader protection to the name in the EU, even against non-misleading or deceptive use of the name. Time might have come for halloumi to be so registered in the UK, being the largest export market for this Cypriot cheese.

Written by Zoé Hustin – Paralegal