The Court of Justice of the European Union’s decision on the likelihood of confusion between "Halloumi" and "BBQLOUMI" (judgment of 5 March 2020, Case C-766/18 P) Authors: Laura Kues/Ann Cathrin Müller
The proprietor of the EU collective mark "Halloumi” has brought the dispute about the registration of the EU trade mark "BBQLOUMI" all the way before the Court of Justice of the European Union (CJEU). There the plaintiff has now achieved a stage victory: The CJEU referred the case back to the General Court, which failed to carry out a sufficient examination of the existence of a likelihood of confusion, according to the Court of Justice.
The Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi has been the proprietor of the EU collective mark 'Halloumi', registered inter alia for cheese, for about 20 years. In 2014, a Bulgarian company applied for registration of its own grilled cheese - "BBQLOUMI" - as an EU trade mark for cheese, among other things. The Foundation considered this to be an infringement of its trade mark rights and filed an opposition against the registration as a trade mark with the European Union Intellectual Property Office (EUIPO).
However, the Office dismissed that opposition - and subsequently the appeal lodged against the opposition - on the ground that there was no likelihood of confusion with the earlier collective mark 'Halloumi'. The "Halloumi Foundation" then brought an action against this decision before the General Court - but without success so far.
The General Court was of the view that the mark 'Halloumi' only designated a type of cheese and the term had only a weak distinctive character. Therefore, given the low degree of visual, phonetic and conceptual similarity, the marks under dispute will not give rise to a likelihood of confusion on the part of the relevant public, despite the fact that the goods are partly identical and partly similar, according to the General Court. The action was therefore dismissed. As a result, the Foundation filed an appeal against this judgment.
On 5 March 2020 the CJEU ruled that the General Court instance had not sufficiently examined the likelihood of confusion between the marks at issue. Unlike the General Court, the Court of Justice held that the weak distinctive character of an earlier mark does not exclude the existence of a likelihood of confusion. According to the CJEU, the case-law on the criteria to to assess specifically whether there is such a risk in case of individual EU trade marks should also be applicable to cases concerning an earlier collective mark. An EU collective mark is a type of mark which indicates the commercial origin of a particular good or service by informing the consumer that the producer of the good or the provider of the service belongs to a particular association and is entitled to use the mark. The characteristics of EU collective marks cannot therefore be used as a justification for departing from the criteria for assessing likelihood of confusion. Rather, the existence of likelihood of confusion must be assessed taking into account all the relevant circumstances of the individual case. For this reason, the General Court should have examined whether the lower degree of similarity of the conflicting marks is offset by the higher degree of similarity, or even identity, of the goods covered by them.
Since the General Court did not carry out a comprehensive assessment of the likelihood of confusion, taking into account all relevant factors, the General Court committed an error of law. Consequently, the Court of Justice set aside the judgment of the General Court and referred the case back to it for a further examination of the existence of a likelihood of confusion to be carried out It remains to be seen how the General Court will rule in this matter.
The clarification of the Court of Justice that the criteria to be applied to individual marks for assessing likelihood of confusion also apply to collective marks is to be welcomed. Although the judgment does not contain any new information on the assessment of likelihood of confusion as such, it strengthens the rights of proprietors of collective marks, since courts must now also assess the likelihood of confusion in the case of collective marks in the light of all the circumstances relevant to the specific case.