Surging in popularity; a staple of barbeques; and a common vegetarian option – none of these factors have helped the owner of the collective trade mark, HALLOUMI, to win its latest case against BBQLOUMI.
HALLOUMI v BBQLOUMI
The Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi (‘the Foundation’) opposed an application by a Bulgarian company to register the below figurative mark for dairy and cheese products, meat extracts, sandwiches, and restaurant services, relying on an EU collective trade mark for HALLOUMI which is registered for cheese.
Collective trade marks differ from traditional trade marks in that they indicate goods or services that originate from a trade association as opposed to a single trader. In this way they have something in common with geographical indications but as this case reminds us, there are some crucial differences.
Although HALLOUMI is not a traditional trade mark, the requirements for a successful opposition are no different: in the case of similar (but not identical) marks it must be shown that there is a likelihood of confusion, or alternatively some kind of reputational harm, dilution or free-riding.
Unfortunately for the Foundation, the opposition was rejected when the General Court confirmed that there was no likelihood of confusion. Although the marks shared a low degree of similarity, this was not enough for confusion, particularly bearing in mind the weak distinctive character of the HALLOUMI mark. Consumers were more likely to associate HALLOUMI with a type of cheese than with the Foundation or its members. While weak distinctiveness does not rule out the risk of confusion, it does limit the extent of protection afforded by the earlier mark, especially where the marks are only similar to a low degree. Overall, consumers would not be misled as to the commercial origin of the goods.
Are collective trade marks worth their salt?
This case highlights the limitations of collective trade marks like HALLOUMI that often sit somewhere between regular trade marks and geographical indications in terms of their characteristics.
Like geographical indications, collective marks are not the preserve of a single trader but may be used by any number of traders that meet certain criteria, whether that be membership of an association or producing goods in a particular locality.
Unlike traditional marks, descriptive terms may be registrable as collective marks as long as they are capable of distinguishing the members of the association. For example, “Chartered Mortgage Advisor” could not distinguish one mortgage advisor from another but it is acceptable as a collective mark because it signals that the advisors who use it belong to an accredited association.
The scope of protection of a collective mark, however, is prescribed by trade mark law, which considers distinctiveness (whether inherent or acquired through use) and the ability to distinguish origin. The characteristics that collective marks share with geographical indications (descriptiveness, multiple users) tend to erode their distinctiveness such that often only identical or highly similar marks will be found to conflict.
This does not mean that collective trade mark registrations are powerless. In 2020, the Foundation successfully prevented a UK application for the below mark due to a likelihood of confusion with HALLOUMI. Here, the mark gave the misleading impression that Hajdu is a member of the Foundation.
The power of PDOs
The Foundation has applied to register HALLOUMI as a protected designation of origin (PDO), a status already enjoyed by Greek Feta. The application to obtain PDO status is long and challenging. However, if HALLOUMI registers as a PDO, the Foundation stands a better chance of blocking applications like BBQLOUMI because PDOs can be enforced more widely to prevent misuse, imitation or ‘calling to mind’, and there is no requirement to show a likelihood of confusion.
This case reminds us that, for producers’ associations looking to protect their product names, collective marks can be helpful but they are no substitute for a PDO.
If you would like to hear more about the Halloumi case, our podcast on the topic can be accessed below:
For further information about brand protection, please contact the Carpmaels & Ransford Trade Mark team.
