Foundation for the Protection of the Traditional Cheese of Cyprus Named Halloumi v Fontana Food AB

On an appeal from a trade mark opposition decision, the appellate court must identify an error in the first-instance tribunal’s evaluative reasoning; it must not conduct the assessment afresh merely because it might have reached a different view.

For likelihood of confusion, descriptive use of a word must be separated from its trade mark significance. A later mark calling to mind a descriptive product name does not establish indirect confusion unless there is a proper basis for concluding that consumers would believe the goods or services originate from the same or economically linked undertaking. Applicant intention is irrelevant under s.5(2) of the Trade Marks Act 1994. A finding of reputation or association under s.5(3) does not itself establish unfair advantage.

The Foundation appealed decisions made on behalf of the Registrar of Trade Marks dismissing oppositions to Fontana’s applications for GRILLOUMI and GRILLOUMAKI. The oppositions relied on the Foundation’s earlier HALLOUMI collective mark and were brought under ss.5(2)(b) and 5(3) of the Trade Marks Act 1994.

The appeal challenged the comparison of goods and services, comparison of marks, indirect confusion, the relevance of Fontana’s intention, unfair advantage and the finding of genuine use. The central issues were whether the Hearing Officer had made an evaluative error and whether consumers would understand the later marks as indicating goods or services connected with members of the Foundation.

1. Appeals dismissed. The Hearing Officer was entitled to conclude that Fontana’s marks should proceed to registration.

2. The appellate standard required restraint. On an evaluative decision, the court had to identify an error such as a gap in logic, inconsistency or failure to take account of a material factor. It was not enough that the appellate court might have reached a different evaluation.

3. Cheese and the relevant class 43 services had, at most, a low degree of similarity. The possibility that some restaurants, coffee shops or food vans might sell products originating from the same undertaking justified a finding of similarity, but the limited commercial overlap and substantial differences did not justify a higher degree.

4. Under s.5(2), the Foundation’s collective mark had to be considered in its trade mark sense. The widespread descriptive use of halloumi to denote a type of cheese could not be treated as evidence that consumers would perceive the word as indicating goods originating from Foundation members. GRILLOUMI might call halloumi to mind descriptively, but the link to HALLOUMI as a collective mark was too weak to establish direct or indirect confusion. Indirect confusion required a proper basis for believing that the later mark represented another brand of the earlier mark’s proprietor or economically linked undertakings.

5. Fontana’s intention was irrelevant to the objective assessment under s.5(2). It could be relevant under s.5(3) or in passing off, but not to the statutory likelihood-of-confusion analysis.

6. For GRILLOUMAKI, the evidence did not establish that the average consumer would understand AKI as a Greek diminutive. The marks were therefore sufficiently different to exclude direct and indirect confusion, even for identical goods.

7. Under s.5(3), the evidence did not establish the necessary collective-mark reputation among the general public. The limited reputation among trade consumers, the descriptive use of halloumi and the differences between the goods and services did not support a finding of unfair advantage.

8. The Respondent’s Notice concerning genuine use was unnecessary to the result. If it had arisen, the court would have dismissed it. The Hearing Officer’s wording concerning registration and genuine use was imperfect, but the evidence provided a sufficient basis for her finding that there had been at least some genuine use of HALLOUMI as a collective mark.

• High Court (Intellectual Property List): appeals from the Registrar’s decision dated 20 December 2023 dismissed; Fontana’s marks permitted to proceed to registration.
• UK Intellectual Property Office: oppositions to GRILLOUMI and GRILLOUMAKI under ss.5(2)(b) and 5(3) of the Trade Marks Act 1994 dismissed.