The Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi is the proprietor of the EU collective mark HALLOUMI registered for cheese. An EU collective mark is a special EU trademark which is designated as such when it is applied for and can be used to distinguish the goods and services of the members of the association that is the trademark owner from those of other companies.

The proprietor of this collective mark filed an opposition against the figurative sign with the word element „BBQLOUMI“ applied for as a European Union trade mark by a company based in Bulgaria, inter alia for cheese. The European Union Intellectual Property Office (EUIPO), which is responsible for examining EU trade mark applications, rejected the opposition on the grounds that there was no likelihood of confusion between the BBQLOUMI trade mark applied for and the earlier collective mark HALLOUMI as regards the origin of the goods. The proprietor of the collective mark then challenged this decision of the EUIPO before the General Court of the European Union, which found that the collective mark had a weak distinctive character, as the term „halloumi“ designates a type of cheese, and therefore also denied a likelihood of confusion.

In its judgment of March 5, 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO (C-766/18 P), the Court of Justice, hearing an appeal against the judgment of the General Court, first ruled on the applicability of the case-law on the criteria for assessing the likelihood of confusion within the meaning of Article 8(1)(b) of the EUTMR2 in the case of individual EU trade marks to cases concerning an earlier collective mark. 1(b) of the EU Trade Mark Regulation2 in the case of individual EU trade marks to cases concerning an earlier collective mark.

In that regard, the Court has held that, in the case of an earlier collective mark whose essential function is to distinguish the goods or services of the members of the association which is the proprietor of the mark from those of other undertakings, the likelihood of confusion means the likelihood that the public may believe that the goods or services covered by the earlier mark and those covered by the mark applied for all come from members of the association which is the proprietor of the earlier mark or, as the case may be, from undertakings economically linked to those members or to that association. Even if, in the case of an opposition based on a collective mark, the essential function of collective marks must be taken into account in order to clarify what is meant by ‚likelihood of confusion‘, the case-law on the criteria for assessing whether there is such a likelihood in the case of individual EU trade marks is nevertheless transferable to cases concerning an earlier collective mark. None of the characteristics of EU collective marks justifies, in the case of an opposition based on such a mark, a derogation from the criteria for assessing the likelihood of confusion resulting from that case-law.

The proprietor of the collective mark in question then argued that the distinctive character of the earlier mark should be assessed differently if it is an EU collective mark.

The Court rejected this argument, stating that the requirement of distinctiveness4 also applies to EU collective marks. Articles 67 to 74 of the EU Trade Mark Regulation, which concern EU collective marks, do not contain any provision to the contrary. Consequently, such marks must in any event have distinctive character, whether originally or through use.

Furthermore, the Court clarified that Art. 66 para. 2 of the Regulation does not constitute an exception to the
requirement of distinctiveness. According to this provision, notwithstanding Art. 7 para. 1 lit. c of the Regulation, signs which may serve to designate the geographical
origin of goods or services may be registered as EU collective marks; however, such signs must not lack distinctive character. Where an association registers a sign capable of designating a geographical origin as an EU collective mark, it must ensure that the sign contains elements which enable the consumer to distinguish the goods or services of its members from those of other undertakings.

Finally, the Court pointed out that the existence of a likelihood of confusion must be assessed comprehensively, taking into account all relevant circumstances of the individual case.

However, the judgment under appeal shows that the General Court relied on the premise that, where the earlier mark is devoid of any distinctive character, the existence of a likelihood of confusion must be excluded as soon as it is established that the similarity of the marks at issue does not in itself make it possible to establish such a likelihood. The Court considers this premise to be incorrect, as the weak distinctive character of an earlier mark does not preclude the existence of a likelihood of confusion. It should therefore have been examined whether the low degree of similarity of the opposing marks is offset by the higher degree of similarity or identity of the goods covered by them. Since the assessment made by the General Court does not satisfy the requirement of a comprehensive assessment which takes account of the interdependence between the relevant factors, the General Court erred in law.

As a result, the Court of Justice set aside the judgment of the General Court and referred the case back to the General Court to re-examine the existence of a likelihood of confusion. (Judgment of the ECJ of March 5, 2020, Ref.: C 766/18 P; Press release no. 26/2020 of the ECJ of March 5, 2020, PDF).