Republic of Cyprus fails to register HALLOUMI as CTM

European Union

In Republic of Cyprus v Office for Harmonisation in the Internal Market (OHIM) (Joined cases T-292/14 and T-293/14, October 7 2015), the General Court has rejected an attempt by the Republic of Cyprus to register HALLOUMI as a Community trademark (CTM).

In 2013 the Republic of Cyprus filed two applications to register the mark HALLOUMI and its Greek spelling XAΛΛOYMI for cheese, milk and milk products. The Fourth Board of Appeal of OHIM took the view that the above indications refer to a speciality cheese from Cyprus and, therefore, directly describe, for the Cypriot public, the kind and geographical origin of the cheese, milk and milk products applied for within the meaning of Article 7(1)(c) of the Community Trademark Regulation (No 207/2009).

Following well-established case law on the interpretation of Article 7(1)(c), the General Court dismissed the action of the Republic of Cyprus, confirming the Board of Appeal’s conclusion that the descriptive meaning of the indications HALLOUMI and XAΛΛOYMI was established, at least for the Cypriot public.

Unsurprisingly, the General Court held that:

  • the fact that the Republic of Cyprus has been the proprietor of identical certification marks since 1992 had no bearing on the descriptive character of the abovementioned marks; and
  • the certification marks could not be used to show that Cypriot consumers do not perceive HALLOUMI as being descriptive of the goods concerned.

Addressing the argument of the Republic of Cyprus that there was no public interest in keeping the marks at issue free, the General Court noted that, where the mark applied for is descriptive, the Board of Appeal does not have to consider whether there is in fact a public interest in keeping the mark free for third parties to use. What should be examined is whether there is a sufficiently direct and specific relationship between the sign and the characteristics of the categories of goods or services in respect of which registration is sought.  

Finally, in response to the contention of the Republic of Cyprus that the Board of Appeal had already allowed the registration of certification marks with a descriptive character as CTMs, the General Court noted, based on well-established case law, that the legality of the decisions of the boards of appeal must be assessed solely on the basis of the regulation and not on the basis of a previous decision-making practice of those boards. 

The decision in this case was based on a clear application of Article 7(1)(c) of the Community Trademark Regulation and the outcome was largely expected. In its effort to register two obviously descriptive indications as CTMs, the Republic of Cyprus tried to challenge the Board of Appeal’s ruling with several ineffective arguments that had no legal basis in the regulation. 

Nicolas K Dontas, Dontas Law, Luxembourg

Get unlimited access to all WTR content