Is the HALLOUMI trade mark distinctive? The UK High Court very recently looked at this question. It emphasised the importance of distinguishing between descriptive or generic use of a mark, and use in the trade mark sense, particularly in relation to collective marks. 

Background

This is the latest episode in a bitterly contested series concerning two of Fontana Food AB’s trade mark applications: GRILLOUMI (in Class 43) and GRILLOUMAKI (in Class 29). The Foundation - an association of halloumi producers and the owner of the UK collective trade mark for HALLOUMI (in Class 29) - opposed. The UK IPO ultimately rejected the Foundation’s opposition, and perhaps not surprisingly an appeal in the High Court ensued. 

These two parties are certainly no strangers to the inside of a courtroom. In parallel EU proceedings, the EU General Court in October 2023 found in favour of Fontana. Regular readers may also recall the General Court’s decision in relation to Fontana’s GRILLOUMI and GRILLOUMI BURGER marks back in 2021.  

The appeal 

The Foundation argued under s.5(2) of the Trade Marks Act 1994 (the “Act”) that the Hearing Officer incorrectly assessed indirect confusion and criticised her comparison of the goods and services. The Foundation also said that the Hearing Officer should have taken into consideration the intention of Fontana when it sought to register the marks (i.e. Fontana “deliberately [intended] to allude to HALLOUMI”).

Lastly, the Foundation complained under s.5(3) of the Act that the Hearing Officer incorrectly assessed unfair advantage. However, this was dealt with only briefly in this judgment.

The decision

The judge ultimately agreed with the Hearing Officer, dismissing the appeal. Below are some of the key points in his decision:

1. In relation to goods and services, the judge determined that there was only a low degree of similarity between restaurant services and cheese. The judge stated that “…consumers are very unlikely to go to a local restaurant in lieu of the supermarket when they fancy some cheese.”
    
2. As to confusion, the judge emphasised that halloumi is used widely as a descriptive term, and the likelihood of confusion was low. The test under s.5(2) does not ask whether use of GRILLOUMI “calls to mind” halloumi cheese per se, but whether there is a risk that the public would believe the goods covered by the marks applied for belong to members of the Foundation. Although GRILLOUMI may call to mind halloumi in the descriptive sense, any link to HALLOUMI in the trade mark sense was too weak to conclude that the services offered under the GRILLOUMI mark are provided by a member of the Foundation. 
    
3. With respect to indirect confusion between HALLOUMI and GRILLOUMAKI, the judge concluded that the marks are “just too different”. Interestingly, the Foundation had argued that the Hearing Officer should have accepted that “[M]AKI” would be seen as a diminutive by the average consumer, increasing the degree of conceptual similarity. The judge rejected this point: “…even if the material in [evidence] was enough to establish that AKI designates a diminutive in the Greek language, there is insufficient evidence to demonstrate that the average consumer would understand this.”
    
4. With respect to Fontana’s alleged intention to “allude” to HALLOUMI, the judge rejected the relevance of intention under s.5(2) (which requires an objective approach). However, it may be a relevant factor under s.5(3) or for passing off. 
    
5. Finally, the judge dismissed the Foundation’s s.5(3) opposition.. He concluded, that “there is no basis to accept that Fontana deliberately chose to use GRILLOUMI to take advantage of the Foundation’s reputation in the collective mark HALLOUMI.” The judge once again emphasised that ‘halloumi’ is overwhelmingly used descriptively, or what he referred to as the “elephant in the room”. 

Practical implications

Collective marks are interesting in that they do not distinguish goods or services from one particular trader, rather that the goods or services bearing that mark come from a member of the collective. In the case of halloumi cheese, not every producer is a member of the Foundation, and non-members can legitimately manufacture and market halloumi. 

Collective marks that are used descriptively (such as a ‘grillable’ Cypriot cheese) can become problematic, because distinctiveness could be diluted. In this case the failure of the general public to appreciate that HALLOUMI is a collective mark “…highlights the importance of disentangling the descriptive meaning of halloumi (which is what members of the public will overwhelmingly understand when seeing either HALLOUMI or GRILLOUMI) and its collective trade mark use, which is what is deserving of protection.”

Members of the Foundation will, however, take some comfort in the EU Commission’s 2021 registration of Χαλλούμι/Halloumi/Hellim as a protected designation of origin (PDO) in the EU, although this protection does not extend to the UK post-Brexit. Members of the Foundation could, of course, register HALLOUMI as a geographical indication (GI) in the UK, however at the time of writing no such application had been submitted. 

Foundation for the Protection of the Traditional Cheese of Cyprus Named Halloumi v Fontana Food Ab [2024] EWHC 2311 (Ch). The full judgment can be found here.