Collective CTMs will not be given preferential treatment in opposition proceedings
In Organismos Kypriakis Galaktokomikis Viomichanias v Office for Harmonisation in the Internal Market (OHIM) (Case T-534/10, June 13 2012), the General Court of the European Union has ruled that there was no likelihood of confusion between the mark HELLIM (No 4700902) and the earlier Community collective mark HALLOUMI (No 1082965).
In the proceedings before the General Court, it was not under dispute that the goods concerned - namely, "cheese" on the one hand and "milk and milk products" on the other - were identical or similar. Accordingly, the General Court focused its analysis on the comparison of the marks.
From a visual point of view, the General Court concluded that the marks at issue were not similar, in view of the differences between the respective structures of the words, the difference in the vowels used, the arrangement of the letters and their length. Phonetically, the General Court concluded that the marks were not similar, considering that, with the exception of the first syllables of the marks (ie, ‘he’ and ‘ha’), the remaining parts of the marks were very different, in view of the different vowels used, the arrangement and number of constituent letters.
Conceptually, the General Court did not endorse the finding of the Board of Appeal that the conceptual comparison was neutral. Firstly, the General Court acknowledged that:
“while Turkish is not an official language of the EU, it is, nonetheless, common ground that it is one of the official languages of the Republic of Cyprus. The conclusion must therefore be drawn that Turkish is understood and spoken by part of the population of Cyprus”.
Secondly, the court found that:
“conceptually, the Turkish translation of the Greek word ‘halloumi’ is ‘hellim’; it cannot be disputed that the average consumer in Cyprus will understand that the words ‘halloumi’ or ‘hellim’ both refer to the same specialty cheese from Cyprus”.
Based on the above considerations, the General Court reached the conclusion that there was some conceptual similarity, which depends on prior translation.
In examining the likelihood of confusion, the court endorsed the finding of the Board of Appeal that the word ‘halloumi’ was descriptive of the nature and type of the cheese designated, and did not indicate its geographical origin or other characteristics marked by regional particularities. Accordingly, the court acknowledged that the earlier mark HALLOUMI had weak distinctive character.
In this respect, the court observed that Article 66(2) of the Community Trademark Regulation (207/2009) must be interpreted strictly. In particular, the court ruled in Paragraphs 51-52 of the judgment:
“It follows that, in the light of the need for a strict interpretation of Article 66(2) of Regulation 207/2009, it is only at the stage of registration that the conditions under which a mark is acquired have been relaxed, in so far as descriptive marks may, by way of derogation from the conditions set out in Article 7(1)(c) of Regulation 207/2009, be registered (…) Registration as a collective mark cannot therefore, per se, give rise to a presumption that the mark has average distinctive character”.
In light of the foregoing, the General Court reached the conclusion that the mere conceptual similarity was not sufficient to give rise to a likelihood of confusion between the trademarks at issue, notwithstanding the identity or similarity of the goods in question. Therefore, the action was dismissed and the applicant was ordered to pay the costs.
The judgment reiterates that, in opposition proceedings, collective CTMs should not be treated in a preferential manner (in comparison with normal CTMs) when it is established that they have a weak distinctive character.
Manos K Markakis, Dontas Law Offices, Athens
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