The case titled Foundation for the Protection of the Traditional Cheese of Cyprus Named Halloumi v Fontana Food AB involved two applications for trade marks “GRILLOUMI” and “GRILLOUMAKI,” filed by Fontana Food AB in the UK. The Foundation, which owns the collective mark for “HALLOUMI,” opposed these applications on the grounds of similarity under ss.5(2)(b) and 5(3) of the UK Trade Marks Act 1994, based on their earlier mark for “HALLOUMI.”

Facts:

1. Parties: The Foundation represents Cypriot halloumi producers and holds a collective mark for “HALLOUMI” in Class 29 for cheese. Fontana Food, a Swedish company founded by Cypriot expatriates, applied for “GRILLOUMI” (Class 43: restaurant services) and “GRILLOUMAKI” (Classes 29 and 30: various food products).
2. Claims: The Foundation argued that both marks were confusingly similar to “HALLOUMI” and could cause confusion or take unfair advantage of its reputation under ss.5(2)(b) and 5(3) of the Trade Marks Act.
3. Hearing Officer’s Decision: The Hearing Officer found that the goods/services were not highly similar and that “HALLOUMI” was weakly distinctive. The oppositions were dismissed.

Judgment:

• The High Court upheld the Hearing Officer’s decision. It was found that GRILLOUMI and GRILLOUMAKI did not infringe upon “HALLOUMI” as the average consumer was unlikely to confuse restaurant services or the proposed products with halloumi cheese. The term “halloumi” was considered primarily descriptive of a type of cheese and not strongly associated with the Foundation’s collective mark.
• The likelihood of confusion and unfair advantage claims were rejected. The judge ruled that while the marks GRILLOUMI and GRILLOUMAKI may bring halloumi cheese to mind, they were sufficiently different not to cause confusion about the origin of the goods or services.

Key Points:

1. Descriptiveness: The term “halloumi” is widely used to describe a type of cheese rather than exclusively a mark of the Foundation, making it harder to claim confusion.
2. Comparison of Goods/Services: There was a low degree of similarity between the goods and services (cheese vs. restaurant services), which weighed against the claim of confusion.
3. Indirect Confusion: The court agreed that GRILLOUMI was too different from HALLOUMI for indirect confusion. Even if GRILLOUMI brought halloumi cheese to mind, it was not likely that the average consumer would think it was connected to the Foundation.

Comment:

This case highlights the difficulties collective marks can face when their registered terms are widely used in a generic or descriptive sense, diluting their distinctiveness and making it harder to enforce exclusive rights under trade mark law. This ruling also underscores the importance of proving a strong reputation for a collective mark in order to argue unfair advantage under s.5(3).

Although the Foundation managed to secure registration for HALLOUMI, enforcing its rights becomes more complex when the term becomes synonymous with a generic product. While Halloumi producers would be less thrilled with the outcome, it’s not all doom and gloom. The EU Commission registered Halloumi as a protected designation of origin (PDO) in 2021, which provides much stronger protection for the name. However, this registration was finalised after Brexit, so the PDO does not extend to the UK.

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