20 Oct The General Court provides a different definition of likelihood of confusion for certification marks
Introduction
In its recent judgment of 11/10/2023, related to another conflict between the marks HALLOUMI (national certification trademark) and GRILLOUMI (EU trademark), the General Court of the EU provided a new definition of likelihood of confusion for the cases where the earlier mark is a certification mark.
Preliminary
The EU Directive on Trademarks [Directive (EU) 2015/2436] defines a “certification mark” as a trade mark which is described as such when the mark is applied for and is 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, from goods and services which are not so certified [Article 27(a)]. The EUTM Regulation [Regulation (EU) 2017/1001] contains essentially the same provision for EU certification marks [Article 83(1)].
According to the CJEU, a likelihood of confusion is the risk that the public might believe that the goods or services in question come from the same undertaking or economically-linked undertakings (Canon, §29).
But when examining whether there is a likelihood of confusion with an earlier certification mark, does the criterion based on the commercial origin apply, considering that the essential function of certification marks differs from that of individual marks? That was the main issue before the General Court in its recent judgment of 11/10/2023, Cyprus v EUIPO – Fontana Food (GRILLOUMI), T‑415/22, ECLI:EU:T:2023:615
Background of the dispute
The Swedish company Fontana Food AB filed an application for registration of an EU trademark for the word GRILLOUMI in relation to services for providing food and drink, coffee-shop services, and restaurants (Class 43).
The Republic of Cyprus filed an opposition based on, inter alia, Cypriot certification word marks XAΛΛOYMI HALLOUMI, registered for dairy product and specifically folded cheese known as fresh and mature halloumi (Class 29). It relied on Article 8(1)(b) and (5) of EUTM Regulation, that is, likelihood of confusion and damage to a reputed mark.
At the EUIPO level, the Opposition Division refused the opposition and the Fourth Board of Appeal dismissed the subsequent appeal. In view of the Board of Appeal, 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. It found in essence that there was no likelihood of confusion between the marks and that the Republic of Cyprus had failed to demonstrate that its earlier marks had a reputation.
The Republic of Cyprus filed an appeal (application) before the General Court seeking the annulment of the decision of EUIPO’s Board of Appeal.
The General Court rejected the appeal.
Regarding the goods and services, it found that the Board of Appeal was fully entitled to find that the degree of similarity was low, since the goods in Class 29, including cheese,
were necessarily used in the serving of food and drink and that thus there was a complementary connection between them.
Regarding the comparison of the marks, it held that the degree of similarity had to be categorised as low.
Regarding the distinctiveness of the earlier marks, which consist exclusively of the terms ‘halloumi’, in Latin characters, and ‘χαλλούμι’, in Greek characters, it held that they were descriptive of the characteristics and origin of the product which they covered (halloumi cheese). They thus had only a weak inherent distinctive character and the existence of enhanced distinctiveness had to be rejected.
In the assessment of the likelihood of confusion, it took the view that the essential function of the certification mark had to be taken into account in order to understand what was meant by “likelihood of confusion”. It declared that if the relevant public believes that the goods covered by the mark applied for are certified by the proprietor of the earlier certification mark, there is a likelihood of confusion within the meaning of Article 8(1)(b) of EUTM Regulation.
It concluded that EUIPO’s Board of Appeal had not applied an incorrect criterion, based on the commercial origin, and was fully entitled to find that there was no likelihood of confusion between the marks.
Comment
The General Court provides a new definition of likelihood of confusion for the cases where the earlier mark is a certification mark: the risk that the public might believe that the goods covered by the later mark are certified by the proprietor of the earlier certification mark. It elaborated on its previous finding in the judgment of 08/12/2021, Cyprus v EUIPO – Fontana Food (GRILLOUMI), T‑556/19, EU:T:2021:864, which read that 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 the 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 (§29).
We believe that the new definition is clearer and a step forward.
Author: Emil Edissonov, Lawyer.
Photo by Anastasia Belousova on Pexels.