Judgment of the Court of Justice of the European Union of 5 March 2020, Case C-766/18 P
Can I register as a trademark a term designating a geographical territory? Although the answer to this question may seem simple in light of the EU Trademark Regulation (EU) 2017/1001 stipulating that indications which may serve to designate the geographical origin of a good or service cannot be registered as trademarks, the very same legal text provides for an exception to the aforementioned prohibition when dealing with a collective trademark.
That is exactly the case that the Court of Justice of the European Union considered in its Judgment of 5 March 2020, Case 766/18 P, in which the merits of registering the individual mark “BBQLOUMI”, applied for by M. J. Dairies EOOD on 9 July 2014, were called into question. This was done on the basis of the opposition filed by the Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi using its earlier collective mark “HALLOUMI”, which refers to a type of cheese originating in Cyprus. In particular, it examined whether the likelihood of confusion in the case of a collective mark should be appraised in the same way as in the case of an individual mark.
- Relevant background
The collective mark “HALLOUMI” was registered on 14 July 2000 for “cheese“. On 9 July 2014, M. J. Dairies EOOD submitted an application to the EUIPO for the following individual mark:
The Foundation, drawing on its earlier collective mark, filed an opposition against it on 12 November 2014.
Nevertheless, the objection was dismissed by the European Patent and Trade Mark Office (“EUIPO”), which called into question the distinctive character of the earlier collective mark on the grounds that the word “halloumi” simply designates a type of cheese and that it is therefore a generic term for a product type. The EUIPO also found that the Foundation had failed to prove that the public perceived the earlier collective mark as being different from the description of a type of cheese.
In any event, it found that there was no likelihood of confusion between the earlier collective mark “HALLOUMI” and the “BBQLOUMI” mark applied for, since the marks were not similar from a visual, aural or conceptual point of view. However, it did concede that the marks converged in their scope of application, since they both covered identical and highly similar goods.
The Foundation lodged an appeal to the General Court of the European Union on the grounds that the EUIPO had not properly defined the scope and effects of EU collective marks that, in contrast to individual marks, may consist of indications of geographical origin. It also accused the EUIPO of questioning the distinctiveness of the earlier collective mark “HALLOUMI” by labelling it “generic”. Finally, it argued that the EUIPO was misguided in assuming that there was no likelihood of confusion between the marks at issue.
In a judgment dated 25 September 2018, the General Court dismissed the Foundation’s appeal on the grounds that the earlier mark “HALLOUMI” was descriptive and therefore had a weak distinctive character, so that, in view of the weak degree of similarity between the marks, it should be concluded that there was no likelihood of confusion.
2. Consideration by the Court of Justice of the European Union
The Foundation appealed against the judgment of the General Court essentially because, yet again, it had failed to take account of the fact that the assessment of the distinctive character of collective marks cannot be carried out in the same way as for individual marks, since collective marks, unlike individual marks, allow signs to be registered that designate the geographical origin of the goods or services in question.
The Court of Justice of the European Union (“CJEU”) began by stating that the assessment of the likelihood of confusion must be carried out in the same way for collective and individual marks. Therefore, if the distinctive character of the earlier mark is high, this may increase the likelihood of confusion. However, it held that such a likelihood of confusion cannot be ruled out on the basis of the weak degree of distinctiveness of the earlier mark.
In any event, the CJEU established that the same absolute prohibitions on registration apply to collective marks as to individual marks. Therefore, while the Regulation provides for the possibility of registering collective marks comprising a term designating a geographical origin, these marks must be distinctive, either per se or acquired through use. In that regard, it stated that when an association seeks the registration of a sign that may designate a geographical origin as a collective Community trademark, it is incumbent upon that the association to ensure that the sign contains elements that will enable the consumer to distinguish the goods and services of its members from those of other undertakings.
In this particular case, the CJEU found that even if the HALLOUMI EU collective mark implicitly refers to the Cypriot geographical origin of the goods to which it applies, that mark does not cease to fulfil its essential function, namely to distinguish the goods or services of the association from those of other undertakings. In that regard, it pointed out that an essential prerequisite for registering a collective mark is that the association, which may designate a geographical origin, must ensure that the sign contains elements enabling the consumer to distinguish the goods and services of its members from those of other undertakings.
The CJEU reproaches the General Court for not having duly examined the interdependence of the relevant factors. In particular, it reproaches it for having based its decision on the premise that, if the earlier mark has a low degree of distinctiveness, the existence of a likelihood of confusion must be ruled out if the similarity of the conflicting marks does not, in itself, make it possible to establish that there is a likelihood of confusion. The CJEU concluded that this premise was contrary to the principle of interdependence and that therefore the General Court should have analysed whether the low degree of similarity of the conflicting marks could be offset by the clearly higher degree of similarity of the goods covered by the conflicting marks.
Based on the above, the CJEU ultimately concluded that the General Court committed an error of law by failing to make a comprehensive assessment and referred the case back to the General Court to re-examine the likelihood of confusion.
The ruling stated that although the European Union Trademark Regulations expressly provide for the possibility of registering a term referring to a geographical origin as a collective trademark, this provision does not preclude the trademark from having a distinctive character, either intrinsically or because it has been acquired through use.
Similarly, the CJEU recalled that assessing the likelihood of confusion in the case of a collective mark must be carried out in the same way as for an individual mark, and that the principle of interdependence must be respected when assessing the likelihood of confusion, failure to do so being grounds for declaring the judgment invalid.
In view of the foregoing, we can conclude that even in cases where a collective mark is considered to have a weak distinctive character because it is a term referring to a geographical origin, the fact remains that this does not relieve it of the obligation to conduct a comprehensive assessment taking into account the interdependence of the relevant factors.