JUDGMENT OF THE GENERAL COURT (Second Chamber)
25 September 2018 (*)
(EU trade mark — Opposition proceedings — Application for EU figurative mark BBQLOUMI — Prior United Kingdom word certification mark HALLOUMI —Relative ground for refusal — No likelihood of confusion — Rejection of the opposition — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑384/17,
Republic of Cyprus, represented by S. Malynicz, QC, V. Marsland, Solicitor, and S. Baran, Barrister,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Rajh, D. Walicka and D. Gája, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the Court, being
M. J. Dairies EOOD, established in Sofia (Bulgaria), represented by D. Dimitrova, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 10 April 2017 (Case R 496/2016-4), concerning opposition proceedings between the Republic of Cyprus and M. J. Dairies.
THE GENERAL COURT (Second Chamber),
composed of M. Prek, President, F. Schalin (Rapporteur) and J. Costeira, Judges,
Registrar: X. Lopez Bancalari, Administrator,
having regard to the application lodged at the Court Registry on 21 June 2017,
having regard to the response of EUIPO lodged at the Court Registry on 29 August 2017,
having regard to the response of the intervener lodged at the Court Registry on 8 September 2017,
having regard to the decision of 21 March 2018 joining Cases T‑328/17 and T‑384/17 for the purposes of the oral part of the procedure,
further to the hearing on 15 May 2018,
gives the following
Judgment
Background to the dispute
1 On 9 July 2014, the intervener, M. J. Dairies EOOD, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2 The trade mark in respect of which registration was sought is the figurative sign in colour represented as follows:
3 The goods and services for which registration was sought are in Classes 29, 30 and 43 of the Nice Agreement concerning the International Classification of Goods and Services for the purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 29: ‘Dairy products and dairy substitutes; cheese; processed cheese; cheese products; cheese dips; meat extracts; prepared dishes consisting wholly or substantially wholly of meat or dairy products’;
– Class 30: ‘Sandwiches; crackers flavoured with cheese; condiments; sauces; cheese sauce; foodstuffs made from cereals’;
– Class 43: ‘Restaurant services; fast food restaurant services; cafeterias; catering.’
4 The trade mark application was published in European Union Trade Marks Bulletin No 149/2014 of 12 August 2014.
5 On 12 November 2014, the Republic of Cyprus filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
6 The opposition was based in particular on the earlier United Kingdom certification word mark HALLOUMI, registered on 22 February 2002 and renewed until 2017 under number 1451888 (‘the earlier mark’), designating goods in Class 29 and corresponding to the following description: ‘Cheese made from sheep’s and/or goat’s milk; cheese made from blends of cow’s milk; all included in Class 29’.
7 The opposition was also based on earlier Cypriot certification word marks XAΛΛOYMI and HALLOUMI registered on 25 June 1992 under Nos 36765 and 36766, respectively, but the Republic of Cyprus expressly stated in the application that it would not rely on them in the present proceedings.
8 The grounds put forward in support of the opposition were those referred to in Article 8(1)(b) and Article 8(5) of Regulation No 207/2009 (now, respectively, Article 8(1)(b) and Article 8(5) of Regulation 2017/1001).
9 On 15 January 2016, the Opposition Division rejected the opposition and ordered the Republic of Cyprus to pay the costs.
10 On 15 March 2016, the Republic of Cyprus filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.
11 By decision of 10 April 2017 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal and ordered the Republic of Cyprus to pay the costs incurred for the purposes of the opposition and appeal proceedings.
12 As regards the earlier mark, which is the only earlier right relevant in the context of the present action, the Board of Appeal stated, first of all, that, notwithstanding the fact that that mark was a national certification mark, the condition under Article 8(1)(b) of Regulation No 207/2009, relating to the similarity of the signs at issue, had to be fulfilled with regard to the rights covered by Article 8(2) of Regulation No 207/2009 (now Article 8(2) of Regulation 2017/1001), including national certification marks.
13 In that connection, as regards the specific nature of the earlier mark, the Board of Appeal states, referring to the judgment of 7 October 2015, Cyprus v OHIM (XAΛΛOYMI and HALLOUMI), (T‑292/14 and T‑293/14, EU:T:2015:752), that the question of geographical origin is not relevant in the present case given that, in the light of the evidence submitted, the earlier mark is not a geographically descriptive term but merely refers to a particular type of cheese exported from Cyprus, made in a certain way and having a particular taste, texture and cooking properties.
14 The Board of Appeal also considered that, in the light of the United Kingdom legislation on trademarks, as set out in the Trade Marks Act 1994, in so far as the earlier mark must have been eligible for registration, it therefore had distinctive character. It claims that, contrary to the submissions of the Republic of Cyprus, as regards the protection afforded by the national certification marks, the Opposition Division did not impose an additional requirement that the public must recognise them as certification marks, but merely held that the evidence submitted by the Republic of Cyprus showed that the term ‘halloumi’ was, at most, perceived on the market as designating a specific type of cheese, and was not perceived as a certification mark.
15 Next, the Board of Appeal held that the inherent distinctive character of the term ‘halloumi’ was weak because it designated a type of cheese. In that regard, it analysed the evidence submitted by the Republic of Cyprus in order to conclude that, in so far as, outside Cyprus, halloumi cheese is sold in significant quantities in several Member States, the term ‘halloumi’ has been used for many years as a name designating a type of cheese made from a combination of goat’s milk and cow’s milk and associated with certain climatic and botanical characteristics and conditions present on the island of Cyprus. By contrast, the Board of Appeal considered that the question whether the Republic of Cyprus produced the cheese in accordance with particular regulations was irrelevant as regards the public’s perception and the meaning of the word ‘halloumi’ as such.
16 As regards the comparison of the goods and services covered by the marks at issue, the Board of Appeal found that there could be varying degrees of similarity between all of them except for ‘meat extracts’ in Class 29 and the services in Class 43 covered by the trade mark applied for.
17 As regards the comparison of the signs at issue, the Board of Appeal considered that the visual similarity was weak and that there was no aural or conceptual similarity between them.
18 Finally, the contested decision concluded that, given the weak distinctive character of the earlier mark, the low degree of visual similarity, the lack of aural and conceptual similarity and the varying degrees of similarity for only some of the goods at issue, there was no likelihood of confusion between the marks at issue.
Forms of order sought
19 The Republic of Cyprus claims that the Court should:
– annul the contested decision;
– order EUIPO and the intervener to pay the costs.
20 EUIPO and the intervener contend that the Court should:
– dismiss the action;
– order the Republic of Cyprus to pay the costs.
Law
The single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
21 In support of its action, the Republic of Cyprus raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. This plea is divided into three parts. Firstly, the Republic of Cyprus complains that the Board of Appeal erred in its assessment of the distinctive character of the earlier mark, in particular, in wrongly finding that the inherent distinctive character of that mark was weak. Secondly, it submits that the Board of Appeal incorrectly assessed the similarity of the signs at issue, particularly the visual and conceptual similarity, but also the aural similarity. Thirdly, the Republic of Cyprus submits that the Board of Appeal erred in finding, following its assessment of the overall likelihood of confusion, that there was no likelihood of confusion, in particular as a result of an error in the analysis of the evidence.
22 EUIPO and the intervener dispute the arguments of the Republic of Cyprus.
23 Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009 (now Article 8(2)(a)(ii) of Regulation 2017/1001), ‘earlier trade marks’ means trademarks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
24 According to the settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
The relevant public
25 In accordance with the case-law, the likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, between two marks should not be assessed on the basis of a comparison, in the abstract, of the signs and the goods or services which they cover. The assessment of that risk must, instead, be based on the perception that the relevant public will have of those signs, goods and services (see judgment of 2 October 2015, The Tea Board v OHIM — Delta Lingerie (Darjeeling), T‑624/13, EU:T:2015:743, paragraph 24 and the case-law cited).
26 In addition, in accordance with the case-law, it must be borne in mind that, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
27 In the context of the analysis set out in its decision of 15 January 2016, the Opposition Division found that the goods at issue were aimed at the general public, consisting of average consumers who are reasonably well informed and reasonably observant and circumspect. In so far as it consisted of basic, low-cost food products and, the level of attention of that public when choosing those products would vary from average to below average. The decision of the Opposition Division, together with its statement of reasons, forms part of the context in which the contested decision was adopted, a context which is known to the Republic of Cyprus and enables the Court to carry out fully its judicial review as to whether the assessment of the likelihood of confusion was well founded (see, to that effect, judgment of 21 November 2007, Wesergold Getränkeindustrie v OHIM — Lidl Stiftung (VITAL FIT), T‑111/06, not published, EU:T:2007:352, paragraph 64). In addition, in paragraph 50 of the contested decision, the Board of Appeal found that, in view of the earlier trade mark, it was necessary to take account of the United Kingdom public.
28 It is necessary in the present case to uphold those findings, inasmuch as they appear well founded in the light of the evidence in the file, which moreover is not disputed by the parties, as regards the relevant public in relation to the goods at issue. In particular, the marks at issue are, in essence, registered for identical products, in this case cheese. Since they are everyday consumer goods, it must be held that they are aimed at the average consumer, who is deemed to be reasonably well informed and reasonably observant and circumspect (see, to that effect, judgment of 25 October 2006, Castell del Remei v OHIM — Bodegas Roda (ODA), T‑13/05, not published, EU:T:2006:335, paragraph 46).
First part, alleging an error in the assessment of the inherent distinctive character of the earlier mark
29 By way of preliminary observations, the Republic of Cyprus sets out the consequences which it claims ensue from the nature of United Kingdom certification marks as regards the distinctive character of such marks. It argues first of all that, under Article 1 of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25), national certification marks are permitted under EU law and are to be given full effect. In application of that directive, pursuant to the Trade Marks Act 1994, United Kingdom trade mark law governs the registration of trade marks. Under that act, a certification mark is a mark indicating that the goods or services in connection with which it is used are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics. In essence, unlike individual trade marks, the distinguishing function of certification marks should be understood as enabling the goods and services of an undertaking, which belong to a certain class and comply with certification rules, to be distinguished from the goods and services of other undertakings, which are not certified. Certification marks do not distinguish commercial origin as such, but rather a class of goods.
30 The Republic of Cyprus relies on two decisions handed down in the United Kingdom by the High Court of Justice (England & Wales), Chancery Division, which support its interpretation of the distinctive character of a United Kingdom certification mark. In particular, the public does not need to know that the mark in question is a certification mark or to know the name of the certifying body.
31 According to the Republic of Cyprus, under Article 8(2) of Regulation No 207/2009, whether registered in the United Kingdom or Cyprus, national certification marks can, as trade marks registered in a Member State, form the basis for opposition to the registration of a later EU trade mark.
32 With regard to the plea it raises against the contested decision, the Republic of Cyprus first of all complains that the Board of Appeal wrongly applied the reasoning of the General Court in its judgment of 7 October 2015, XAΛΛOYMI and HALLOUMI (T‑292/14 and T‑293/14, EU:T:2015:752), to this case, even though the relevant public and nature of the marks at issue were different. That decision related to applications to register ordinary EU word marks, namely XAΛΛOYMI and HALLOUMI, filed by the Republic of Cyprus and rejected on the basis of an absolute ground for refusal under Article 7(1)(b) and (c) of Regulation No 207/2009 (now Article 7(1)(b) and (c) of Regulation 2017/1001), on the ground that they were descriptive.
33 The Board of Appeal failed to understand the significance of the fact that the earlier mark was a certification mark, which it showed, in particular, by holding that the mark would be understood by the non-Cypriot public as designating a special type of cheese from Cyprus. However, the evidence submitted by the Republic of Cyprus regarding, in particular, the production and the export of halloumi cheese since the 19th century, strongly supported the distinctiveness of the earlier mark in the light of the principles laid down in the case-law of the United Kingdom referred to in paragraph 30 above. The fact that the term ‘halloumi’ designates a specific composition of cheese constitutes a reason to hold that the earlier mark is perceived as fulfilling the requirements for being a UK certification mark under the Trade Marks Act 1994.
34 If the earlier trade mark is to be regarded as descriptive, it is only as a certification mark in the United Kingdom. In any event, in accordance with the case-law arising from the judgment of 24 May 2012, Formula One Licensing v OHIM (C‑196/11 P, EU:C:2012:314), a duly registered earlier national mark must be acknowledged to have a certain degree of distinctiveness. In that regard, the ample evidence produced before the Board of Appeal, namely, the various witness statements relating to the production, promotion, reputation and perception of the earlier mark, have shown that the earlier mark has distinctive character in accordance with the United Kingdom legislation.
35 EUIPO and the intervener dispute the arguments of the Republic of Cyprus.
36 The assessment of the distinctive character of a trade mark is of particular importance in so far as the assessment of the likelihood of confusion globally and that it implies some interdependence between the factors taken into account (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33), with the result that the more distinctive the earlier mark is, the greater the risk of confusion (judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18). Thus, a low degree of distinctive character implies a greater degree of similarity between the signs at issue or between the goods and services concerned in order to conclude that there was a likelihood of confusion. As a result, an underestimation of the distinctive character of the earlier mark by the Board of Appeal is likely to vitiate the contested decision with an error as regards the assessment of the likelihood of confusion.
37 Where an opposition is based on the existence of an earlier national trade mark, the checks on the degree of distinctiveness of that mark have limits, however, since they cannot lead to a finding of one of the absolute grounds for refusal set out in Article 7(1)(b) and (c) of Regulation No 207/2009, namely the mark’s lack of distinctiveness or purely descriptive character. Thus, in order to avoid infringing Article 8(2)(b), read in conjunction with Article 8(2)(a)(ii) of Regulation No 207/2009, it is necessary to acknowledge a certain degree of distinctiveness of an earlier national mark on which an opposition against the registration of an EU trade mark is based (judgment of 24 May 2012, Formula One Licensing v OHIM, C‑196/11 P, EU:C:2012:314, paragraph 43 to 47).
38 In the present case, as regards the inherent distinctiveness of the earlier mark in respect of cheese, the Board of Appeal, following an examination in paragraphs 31 to 35 of the contested decision, in particular of the evidence provided by the Republic of Cyprus, concluded, in paragraph 36 of that decision, that it was low because of the descriptive meaning of that mark, given that, in the context of the global assessment of the likelihood of confusion, the Board of Appeal also examined the mark’s possible enhanced distinctiveness due to the use of the earlier mark in the United Kingdom, finally concluding that it was not demonstrated.
39 Although Regulation No 207/2009, which was applied by the Board of Appeal when it delivered the contested decision, did not include specific provisions concerning the protection of certification marks as such, as the General Court has observed in its case-law (judgment of 7 October 2015, XAΛΛOYMI and HALLOUMI, T‑292/14 and T‑293/14, EU:T:2015:752, paragraph 35), Regulation 2017/1001, applicable as from 1 October 2017, now includes provisions on the EU certification mark which it defines, in Article 83(1) thereof, as a mark which 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, with the exception of geographical origin, from goods and services which are not so certified’.
40 The registration of certification marks is also provided for in Directive 2008/95 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25), which is relevant ratione temporis to the facts of this case and it should be noted that, in Article 15, it authorises the designation of geographical origin.
41 Member States, like the United Kingdom with the Trade Marks Act 1994, may authorise the registration of certification marks, which therefore constitute, pursuant to Article 8(2)(a)(ii) of Regulation No 207/2009, ‘trade marks registered in a Member State’ which may be relied on as a basis for an opposition procedure, as did the Republic of Cyprus when relying on the earlier mark.
42 If the earlier mark falls within the category of marks registered in a Member State, it should be noted, as EUIPO points out, that the EU trade mark regime which emerges from Regulation No 207/2009 is an autonomous system that is self-sufficient and applies independently of any national system (judgment of 5 December 2000, Messe München v OHIM (electronica), T‑32/00, EU:T:2000:283, paragraph 47). Thus, it appears justified to take into account the national law in that it enables the validity of the earlier mark to be proved. However, as regards the inherent distinctiveness of the latter, even if, in the light of the judgment of 24 May 2012, Formula One Licensing v OHIM (C‑196/11 P, EU:C:2012:314), it is appropriate to accord the word ‘halloumi’, registered as a national certification mark, a certain distinctiveness, that does not mean that it must be accorded an intrinsic distinctive character of such a level that would provide it with unconditional protection enabling opposition to any registration of a later mark including that term.
43 In the present case, it must be recalled that, on two occasions, the Court has previously held that the word ‘halloumi’ was perceived by the public, including Cyprus, as referring to a speciality cheese from Cyprus (see, to that effect, judgments of 13 June 2012, HELLIM, T‑534/10, EU:T:2012:292, paragraph 41, and of 7 October 2015, XAΛΛOYMI and HALLOUMI, T‑292/14 and T‑293/14, EU:T:2015:752, paragraphs 20 and 21). In the contested decision, the Board of Appeal merely observes that, in the light of the evidence produced in the present case, the conclusions which the Court reached in those judgments can be transposed to the United Kingdom public.
44 That finding must be upheld. Indeed, there is nothing in the evidence submitted by the Republic of Cyprus before the Board of Appeal, as analysed in paragraphs 32 to 34 of the contested decision, to contradict that finding. Those elements, consisting, inter alia, of data on production and sales volumes for 2011 to 2014, to in particular, a number of Member States, on promotion and marketing efforts, extracts from cooking magazines or press articles, concern halloumi cheese as a speciality of Cyprus since at least the beginning of the twentieth century, but without it being possible to link the term ‘halloumi’, used as a generic term for a type of cheese, to any certification mark, or even to a reference to a certified cheese. As the Board of Appeal rightly noted, it appears, in the light of those various elements, that that word is perceived by the non-Cypriot public and, therefore, by the United Kingdom public, solely as the name of a type of cheese produced in Cyprus and, as the Board of Appeal points out, ‘the question whether a cheese may be described as “halloumi” depends on its characteristics and composition and not on whether the person selling the product belongs to a particular group of licence holders’.
45 Thus, the word ‘halloumi’ is directly understood by the United Kingdom public as describing the characteristics or the origin of the goods, and not as an indication of its certified quality, nor even as an indication of that quality. It must therefore be held that the earlier mark, consisting solely of the word ‘halloumi’, in that it is descriptive of the characteristics and the origin of the product which it covers, has only a low degree of inherent distinctive character and that, moreover, that the existence of any enhanced distinctive character has not been proven.
46 The argument of the Republic of Cyprus relating to the specific scope which should be accorded to the inherent distinctiveness of the earlier mark, having regard to its nature as a national certification mark is also ineffective and must be rejected.
47 Even assuming that the distinctive function of certification marks in the United Kingdom must be understood as the ability to distinguish one class of goods from those of another class, it should be noted, as EUIPO points out, that, in the light of the evidence raised in argument by the Republic of Cyprus, it has not been demonstrated that the earlier mark, as a certification mark in the United Kingdom, would be capable of constituting an indication of the commercial origin of the goods in question. The existence of a likelihood of confusion on the specific conditions of Article 8(1)(b) of Regulation No 207/2009 depends on that being demonstrated. That case-specific finding does not, however, permit it to be ruled out, as regards a certification mark, that a certification of quality, for example of the raw material used, may suffice for the view to be taken that such a mark fulfils its function as an indication of origin in that it guarantees to consumers that the goods come from a single undertaking, namely the proprietor of that mark and its affiliates, under the control of which the goods are manufactured and which is responsible for their quality (see, by analogy, judgment of 8 June 2017, W. F. Gözze Frottierweberei and Gözze, C‑689/15, EU:C:2017:434, paragraphs 49 and 50).
48 The question of whether the effective compliance by an applicant for an EU trade mark with the characteristics guaranteed by the proprietor of an earlier certification mark forms part of the essential function of that mark is, however, outside the scope of protection afforded by Article 8(1)(b) of Regulation No 207/2009. As EUIPO submits, that question concerns, at most, the use of a mark, in that it could harm the essential function of a certification mark and mislead the public on the certification of the characteristics of the goods.
49 In the present case, in line with the judgment of 13 June 2012, HELLIM (T‑534/10, EU:T:2012:292, paragraph 55), it must be held that the Board of Appeal correctly found that the earlier mark had a weak distinctive character as a result of its descriptive meaning.
50 The first part must therefore be rejected as unfounded.
The second part, alleging an incorrect assessment of the visual, conceptual and aural similarity of the signs at issue
51 The Republic of Cyprus, which disputes the findings made by the Board of Appeal, submits that, from a visual point view, the first element ‘bbq’ should not be given more weight than the final element ‘loumi’, as the latter will be considered by the public to refer the word ‘halloumi’. That impression on the public is reinforced by the figurative element of the mark, which depicts a plate containing food products, including grilled or barbecued ‘halloumi’ cheese. There is, therefore, a certain visual similarity.
52 The Board of Appeal was also incorrect to conclude that there was a low level of phonetic similarity, since the marks at issue share the element ‘loumi’, which is a reference to the earlier mark.
53 Conceptually, there is a high degree of similarity for United Kingdom consumers, as they would perceive the word element of the trade mark applied for as a combination of the words ‘bbq’ and ‘halloumi’, and this would be reinforced by the figurative element, which would itself be perceived as depicting barbecued cheese, and not grilled meat or grilled bread, as the Board of Appeal wrongly stated. The figurative elements are, therefore, merely additional elements on the product label which identify the specific individual user authorised to use the certification mark.
54 EUIPO and the intervener dispute the arguments of the Republic of Cyprus.
55 As regards the visual, phonetic or conceptual similarity of the signs at issue, the global assessment of the likelihood of confusion must be based on the overall impression created by them, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
56 The assessment of similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, EU:C:2007:539, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, EU:C:2007:539, paragraph 43).
57 In the first place, as regards the visual comparison, it must be pointed out that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have graphic form capable of creating a visual impression (see judgment of 4 May 2005, Chum v OHIM — Star TV (STAR TV), T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited).
58 The earlier mark is composed of the word ‘halloumi’. The mark applied for is a figurative mark in the shape of a rectangle, which consists of the word ‘bbqloumi’, written in stylised characters and in white capital letters edged in red, placed in the upper third of the rectangle which contains, in the background, the picture of a port with vessels, houses, a restaurant patio, a blue sky and, in the foreground, in the lower part of the rectangle, a dish of food showing some marks of grilling.
59 In accordance with the case-law, where a trade mark is composed of word and figurative elements, the word element of the mark is, in principle, more distinctive than the figurative element, since the average consumer will more easily refer to the goods in question by citing the name rather than describing the figurative element (see judgment of 9 September 2008, Honda Motor Europe v OHIM — ESAW (MAGIC SEAT), T‑363/06, EU:T:2008:319, paragraph 30 and the case-law cited). In the light of the graphic form of the mark applied for, it appears that the term ‘bbqloumi’ will attract the public’s attention, but that, however, the public will also focus on the representation of the dish of food due to its presence in the foreground. In that regard, the Board of Appeal was correct to find that the figurative representation was visually co-dominant and that, as regards the word element, more weight should be given to its initial part, namely ‘bbq’, rather than its final part, ‘loumi’. Thus, in so far as ‘loumi’ does not constitute a separate element in the word ‘bbqloumi’ and as it is the element in which the signs at issue coincide, the visual similarity was considered to be weak. That assessment, which appears in paragraph 52 of the contested decision appears to be correct and must be upheld. Moreover, although it is contested by the Republic of Cyprus, it must be noted that the Republic of Cyprus claims, at most, a finding of a ‘certain degree of similarity’ in the signs at issue, which is not incompatible with a finding of a low degree of similarity.
60 In the second place, as regards the phonetic comparison, the Board of Appeal found in paragraph 53 of the contested decision that the signs at issue were different, since they coincided only in the sound of the element consisting of the five letters ‘l’, ‘o’, ‘u’, ‘m’ and ‘i’, but that their pronunciation was different in length, rhythm and intonation because of their total number of syllables and the pronunciation of the first syllables making up each of the marks. In addition, the first three letters of the sign applied for would be pronounced either one after the other or as the abbreviation of the word ‘barbecue’, especially in the United Kingdom.
61 That assessment by the Board of Appeal cannot be followed. The common presence of the group of five letters ‘loumi’ in the earlier mark and in the word element of the mark applied for leads to a certain degree of phonetic similarity. Admittedly, the final position of that group of letters in the sign applied for and the different number of syllables composing the signs at issue are such as to render its presence less acute in the pronunciation of those signs, but, since the word element of the mark applied for is pronounced, it nevertheless leads to phonetic similarity which it is appropriate to regard as low.
62 In the third place, as regards the conceptual comparison, the Board of Appeal found, in paragraph 54 of the contested decision, that the signs at issue were different. It found in particular that the first three letters of the sign applied for would be understood as an abbreviation of the word ‘barbecue’, but that the element ‘loumi’ did not have any meaning, with the result that, taken as a whole, the word ‘bbqloumi’ had no meaning, not even in Greek or English. The figurative element, consisting of a scene in the background, including, inter alia, a blue sky, a port with boats, a paved road, tables and chairs, is complemented by a dish bearing food products which are not clearly identifiable as being grilled cheese, but possibly grilled meat or toasted bread. In those circumstances, the sign applied for does not clearly convey the meaning of ‘halloumi’ or even the concept of cheese and does not contain any reference to the origin of the proprietor or user of the mark.
63 Nor can that analysis by the Board of Appeal be followed. Although it is true that the earlier mark conveys the concept of a type of Cypriot cheese, namely halloumi cheese, it cannot be ruled out that, to a certain extent, the mark applied for conveys a similar concept.
64 The word element making up the sign applied for consists of the group of the three letters ‘bbq’, which, as the Board of Appeal pointed out, will be understood by the public as the abbreviation of the word ‘barbecue’. However, it seems wrong to consider that the group of the last five letters ‘loumi’ is meaningless, in the same way as, taken as a whole, the word ‘bbqloumi’. In fact, for that section of the public familiar with halloumi cheese, which is the case of a significant section of the United Kingdom public, the group of the last five letters ‘loumi’ can be understood as referring to halloumi cheese. For that section of the public, the association of that group of letters with the abbreviation ‘bbq’ is therefore likely to refer to the concept of halloumi cheese cooked or grilled on a barbecue.
65 In addition, while it is true that, where a mark is composed of word and figurative elements, the average consumer will more easily refer to the goods in question by citing the name rather than describing the figurative element (see, to that effect, judgment of 9 September 2008, MAGIC SEAT, T‑363/06, EU:T:2008:319, paragraph 30 and the case-law cited), it must be recalled that the Board of Appeal found that there was a visual co-dominance of the word and figurative elements. However, the figurative elements of the mark applied for, composed, in the background, of a Mediterranean environment, introducing a link with the geographical position of Cyprus as a Mediterranean island, and, in the foreground, of a dish of food showing marks of grilling clearly reinforce the concept conveyed by the word element of the sign applied for, even if it is not possible to state categorically that the foods represented are pieces of halloumi cheese. The signs at issue are therefore not totally conceptually different but, on the contrary, present a degree of similarity which can be classified as low.
66 It must therefore be held that the Board of Appeal has made two errors when comparing the signs at issue, namely in the assessment of the phonetic and conceptual similarity. Any impact of those errors on the lawfulness of the contested decision will be examined below at the stage of the global assessment of the likelihood of confusion.
The third part, alleging errors in the assessment of the likelihood of confusion
67 The Republic of Cyprus submits that the Board of Appeal’s global assessment of the likelihood of confusion is necessarily flawed, in so far as it is based on an incorrect analysis of the distinctive character of the earlier mark and also on an incorrect comparison of the signs at issue. The contested decision is therefore vitiated by error and should be annulled.
68 EUIPO and the intervener dispute the arguments of the Republic of Cyprus.
69 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgment of 29 September 1998, Canon, C-39/97, EU:C:1998:442, paragraph 17, and judgment of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
70 As is apparent from recital 8 of Regulation No 207/2009 (now recital 11 of Regulation 2017/1001), the assessment of the likelihood of confusion depends on numerous elements, in particular the public’s recognition of the trade mark on the market in question. The more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24; of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18; and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20).
71 In the first place, it must be noted that it has been held in the context of the examination of the second part that the signs at issue had a low degree of visual, phonetic and conceptual similarity. The signs are similar only in so far as they have a common element consisting of the group of five letters ‘loumi’. Thus, notwithstanding the errors committed by the Board of Appeal in its assessment, it appears that the similarity of the signs remains limited and, in any event, insufficient to offset the differences between them.
72 In the second place, as regards the distinctive character of the earlier mark, it must be recalled that it was considered low in point 49 above, in the Court’s examination of the second part, due to the descriptive meaning of that mark in the eyes of the relevant public. It is also appropriate to accept the analysis of the evidence, consisting of advertising material attached to various statements, articles and official records and recipes, made by the Board of Appeal in paragraph 66 of the contested decision to reach the conclusion that they were insufficient to prove intensive use of the earlier mark in order to designate ‘cheeses’ in the United Kingdom and that that evidence did no more than note the use of the word ‘halloumi’ as the generic name of a speciality cheese from Cyprus.
73 In the third place, it must be recalled that, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion, in particular where the goods in question are identical and the signs at issue are similar (see judgment of 13 April 2011, Sociedad Agricola Requingua v OHIM — Consejo Regulador de la Denominación de Origen Toro (TORO DE PIEDRA), T‑358/09, not published, EU:T:2011:174, paragraph 45).
74 Nonetheless, despite the fact that, with the exception of ‘meat extracts’ in Class 29 and services in Class 43 covered by the mark applied for, there may be different degrees of similarity between the goods covered by the marks at issue, there can be no likelihood of confusion in the mind of the relevant public since the existence of a low degree of similarity from a visual, phonetic and conceptual point of view is not, in the case of an earlier mark having a descriptive meaning and therefore having a weak distinctive character, sufficient to establish the existence of a likelihood of confusion (see, to that effect, judgment of 13 June 2012, HELLIM, T‑534/10, EU:T:2012:292, paragraphs 54 and 55).
75 It follows therefrom that the Board of Appeal was correct in finding that there was no likelihood of confusion.
76 Thus, it is necessary to reject the third part and, accordingly, the single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009, with the result that the action must be dismissed in its entirety.
Costs
77 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
78 Since the Republic of Cyprus has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders the Republic of Cyprus to pay the costs.
Delivered in open court in Luxembourg on 25 September 2018.