Facts

The Foundation for the Protection of the Traditional Cheese of Cyprus Named Halloumi appealed against a decision from the IPO Hearing Officer dismissing its opposition to the UK registration, owned by Babel Sajt Kft, of the following figurative mark in Class 29 for “Milk and milk products; dairy and dairy products; cheese and cheese products”:

The Foundation based its opposition on, amongst other things, s 5(2)(b) of the Trade Marks Act 1994 and relied on its EU collective word mark for HALLOUMI registered in Class 29 for “Cheese”.

The Hearing Officer rejected the Foundation’s opposition on all bases and the Foundation appealed to the High Court in respect of the decision in relation to s 5(2)(b).

Decision

The Foundation contended that the Hearing Officer had misapplied the test of distinctiveness and confusion due to the collective nature of the Foundation’s Mark.

Mr Justice Marcus Smith said that, as the Foundation’s mark was a word mark with no additional elements, it was clearly less distinctive than Babel’s mark. However, the key point was that it had been registered and therefore had to be regarded as having an inherent distinctiveness. Whilst the Hearing Officer had acknowledged this, she had then gone on to find that the distinctiveness of the mark was weak, without providing any reasoning.

Smith J said that the Hearing Officer had also erred when assessing the visual and aural similarity between the marks by seeing the Foundation’s mark as a part of Babel’s mark, such that the distinguishing features of the Foundation’s mark were subsumed into Babel’s mark. She had therefore failed to recognise that the Foundation’s mark, a separate and self-standing mark in its own right, had been incorporated into Babel’s mark, and that this incorporation contributed to the “overall impression”. Babel’s mark was, in fact, an amalgam of the two marks, Smith J said.

The Hearing Officer had also erred by not considering that the average consumer might see Babel’s mark as an amalgam of: (i) the Foundation’s mark (a badge designating origin of the product from a member of the Foundation); and (ii) the mark of an individual Foundation member, i.e. Hajdu. In Smith J’s view, this was a failure to assess or consider material facts in relation to a critical part of the analysis within s 5(2)(b).

Smith J also agreed with the Foundation that the Hearing Officer had erred by finding that the Foundation’s mark was merely a designation of a generic, i.e. cheese. If that were the case, he said, the Foundation’s mark should never have been registered in the first place.

In addition, Smith J said that the Hearing Officer had erred by disregarding the Foundation’s evidence that trade consumers, such as supermarkets (who are familiar with collective marks and can differentiate them from ordinary EUTMs), were in fact a significant proportion of the relevant public and therefore of the “average consumer”. This had happened because of the Hearing Officer’s failure to take proper account of the fact that the Foundation’s mark was a collective mark.

Accordingly, Smith J allowed the appeal and said that, given that the Hearing Officer had erred in principle, her decision should be set aside. (Foundation for the Protection of the Traditional Cheese of Cyprus Named Halloumi v Babel Sajt Kft [2020] EWHC 2858 (Ch) — to read the judgment in full, click here).