Foundation for the Protection of the Traditional Cheese of Cyprus Named Halloumi v Babel Sajt Kft.

Registration of an EU collective mark does not create a separate legal test for distinctiveness or confusion. EU collective marks remain subject to the ordinary EUTM rules, but their function must be considered. They distinguish goods of members of an association from goods of other undertakings, while individual members may use the collective mark with their own marks. A tribunal assessing a composite mark must therefore consider whether the composite mark incorporates the collective mark as an origin badge, rather than treating the collective element as merely descriptive or generic. The relevant average consumer may include trade purchasers where the market and evidence make their perception material. A registered mark cannot ordinarily be treated as generic or devoid of distinctive character in opposition proceedings. The appeal was allowed because these matters had not been properly considered.

Babel Sajt Kft. applied to register a composite mark containing the words “HAJDU” and “HALLOUMI” for milk, dairy and cheese products. The Foundation opposed registration under sections 5(2)(b) and 5(3) of the Trade Marks Act 1994, relying on its registered EU collective mark HALLOUMI.

The UKIPO Hearing Officer found genuine use, identical or similar goods, and no likelihood of confusion under section 5(2)(b). She treated the earlier mark as inherently weak and understood by the average consumer principally as referring to a type of cheese. The section 5(3) decision was not appealed. The central issues were whether the Hearing Officer had properly considered the registered mark’s non-generic and distinctive character, the special function of an EU collective mark, the composite nature of the later mark, and the relevant average consumer.

1. The appeal was allowed and the UKIPO decision was set aside. The application to register the Applicant’s Mark was refused under section 5(2)(b) of the Trade Marks Act 1994.
2. EU collective marks are governed by the same rules as other EUTMs, subject to statutory differences. The CJEU decision in Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v European Union Intellectual Property Office Case C-766/18 P was binding and correct on that point. However, the intrinsic function of a collective mark requires particular consideration when assessing similarity and confusion.
3. Registration established that the Foundation’s Mark possessed distinctive character and was not generic, although those qualities could potentially be lost over time. The Hearing Officer therefore erred by treating HALLOUMI as referring only to a type of cheese and by finding weak distinctiveness without reasoning.
4. The later mark had to be assessed as a whole, but that did not permit the tribunal to ignore its combinatorial structure. The HALLOUMI element substantially reproduced the Foundation’s Mark and could be perceived, together with HAJDU, as indicating that the cheese was made by a member of the Foundation. Failure to consider that possibility was a material error of principle.
5. The Hearing Officer was entitled to identify the general public as an average consumer on the evidence before her. But she failed properly to consider trade purchasers. Supermarkets and other trade purchasers could understand the significance of an EU collective mark and the Foundation’s rules governing production. They constituted a relevant class of average consumer and, in this case, were likely to be particularly significant.
6. For ultimate consumers, the composite mark would generally be understood as identifying Hajdu as producing a type of cheese called halloumi. Trade purchasers, however, would likely understand it as combining the Foundation’s origin badge with the mark of an individual member. That created a very strong likelihood of confusion.

• High Court (Chancery Division): on appeal from UKIPO Decision O/152/20, the appeal was allowed, the decision was set aside, and registration was refused.