Halloumi Vs Hellim; More than just a trademark battle?

by:ERMIONI PAVLIDOU

On 24th October 2005, Garmo AG filed an application to register the word mark “HELLIM” (CTM). The applicants sought protection under class 29 of the Nice classification and the description of the goods and services of the mark included "milk and milk products."

The Organisation of Cyprus Dairy Industry filed a notice of opposition against the registration of the above mark based on their own earlier and fully registered community collective trademark Halloumi (CTM 1082965).  The opposition was based on the likelihood of confusion (now article 8(1)(b) of regulation No 207/2009).

On 10th March 2010, the opposition was dismissed despite the fact that the goods concerned were identical or similar. It was held that there was no visual or phonetic similarity between the two marks. In support of the finding of “no likelihood of confusion”, the decision also went on to say that the Halloumi CTM had a weak distinctive character in Cyprus as the term halloumi designated a specialty cheese from Cyprus.

The decision of the opposition division was appealed pursuant to the Articles 58-64 of the regulation, but the appeal was subsequently dismissed by the Boards of Appeal of Organisation for Harmonization in the Internal Market (OHIM). It was held that the mere fact the halloumi mark is a collective mark, it does not mean that it is of average and not of a weak distinctive character.  So, the board held that the halloumi mark was of weak character and, in effect, in connection with low visual similarities, there was no likelihood of confusion despite the fact the marks shared similar or identical goods.

Conceptually it held, paragraph 23 of the contested decision, that the Turkish language was not one of the official languages of the European Union, with the result that the possible meaning of the word ‘hellim’ was to recognise the designation of a specialty cheese from Cyprus and this would have no impact since it had a purely descriptive meaning and could not be used as a basis for comparison of the signs.

The applicant filed for an order at the General Court for the above Boards of Appeal decision to be annulled. It was held that the Boards of Appeal acted correctly in reaching the conclusion that there was no likelihood of confusion. The applicant put forward an argument that the mark was at least of average distinctiveness due to its collective status. This argument was rejected by the court, which held that the mere fact that halloumi is a collective mark does not automatically make it a mark of great or even average distinctiveness. 

To quote, “it is true that Article 66(2) of Regulation No 207/2009 allows registration of collective marks, notwithstanding the fact that they could fall within the scope of Article 7(1)(c) of that regulation, the second sentence of Article 66(2) states  expressly that a collective mark cannot entitle the proprietor to prohibit a third party from using, in the course of trade, such signs or indications, on condition that that third party uses them in accordance with honest practices in industrial or commercial matters; in particular, such a mark may not be invoked against a third party who is entitled to use a geographical name.”

The Boards of Appeal had a different view. In paragraph 23 of its decision it held that the conceptual comparison was neutral.  The board took this view and said that since Turkish is not an official language of the European Union (EU), consequently, the possible meaning of the word ‘hellim’ in Turkish is not conclusive for purposes of assessing the likelihood of confusion.

In paragraphs 25 to 27 of the contested decision, the Boards of Appeal found, in essence, that the distinctive character of the earlier mark was diluted by the descriptive meaning of the word ‘halloumi’, with the result that the earlier mark described the product in question, that is to say, cheese. That sign describes, according to paragraph 27 of the contested decision, ‘the nature and type of cheese thus designated and not its geographical origin or other characteristics marked by regional particularities’. Therefore, it is vital to examine the likelihood of confusion (phonetic & visual).”

Nonetheless, it is worth noting that the European General Court (EGC) found that there was a degree of conceptual similarity. By quoting a few cases the EGC said that conceptually, the Turkish translation of the Greek word ‘halloumi’ is ‘hellim’. Therefore, in view of this and in contrast to the Boards of Appeal's analysis, it cannot be disputed that the average consumer in Cyprus, where both Greek and Turkish are official languages, will understand that the words ‘halloumi’ or ‘hellim’ both refer to the same specialty cheese from Cyprus. The judgment was delivered on the 13th June 2012 by the European Court of Justice (ECJ).

An appeal was filed at the ECJ. The grounds on which the appeal was based are in short the following:

1. The fact that the halloumi mark was a collective mark was not taken into consideration to the extent that it should have been and thus the conclusion that the mark was of a weak character was unsafe.

2. That the Court of first instance infringed Article 8 1(b).

The appeal was dismissed and hellim was approved for registration. Therefore, it may be safe to say that halloumi is something more than than just a generic name, but it is true that itself constitutes a part of a country’s historic background, which is definitely worthy of protection. We should also consider the difficulty Greece had to go through to be granted the exclusive right to use the mark feta in association with cheese. The Greeks' efforts lasted 10 whole years. Many may say that halloumi is to Cyprus what feta is to Greece. Does it not indicate a lack of means to protect geographical heritage?

So if Greece had to go through ten long years of battle to protect its heritage and as Cyprus did not even manage to secure the exclusive use of its own mark of geographical indication and most sadly lost this battle,  does it reveal a weakness in the law governing this matter? Should it be allowed for anyone to register, based on minor visual differences, a mark which is in the end based upon the geographic heritage of another? Would it not mean that one may be able in the end to unfairly and unjustly take advantage of another's heritage?