JUDGMENT OF THE GENERAL COURT (Second Chamber)
24 March 2021 (*)
(EU trade mark – Invalidity proceedings – EU figurative mark Halloumi χαλλούμι Vermion grill cheese/grill est/grill kase M BELAS PREMIUM GREEK DAIRY SINCE 1927 – Earlier EU collective word mark HALLOUMI – Relative ground for refusal – Bad faith – Article 52(1)(b) of Regulation (EC) No 207/2009 (now Article 59(1)(b) of Regulation (EU) 2017/1001) – Article 53(1)(a) and Article 8(1)(b) and (5) of Regulation No 207/2009 (now article 60(1)(a) and Article 8(1)(b) and (5) of Regulation 2017/1001))
In Case T‑282/19,
Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi, established in Nicosia (Cyprus), represented by S. Malynicz QC, S. Baran, Barrister, and V. Marsland, Solicitor,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Filotas Bellas & Yios AE, established in Alexandreia Imathias (Greece),
ACTION brought against the decision of the Fourth Chamber of the Board of Appeal of EUIPO of 15 February 2019 (Case R 2295/2017‑4), relating to opposition proceedings between the Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi and Filotas Bellas & Yios,
THE GENERAL COURT (Second Chamber),
composed of V. Tomljenović, President, F. Schalin (Rapporteur) and P. Škvařilová‑Pelzl, Judges,
Registrar: A. Juhász-Tóth, Administrator,
having regard to the application lodged at the Court Registry on 30 April 2019,
having regard to the response lodged at the Court Registry on 25 May 2020,
having regard to the order of 26 June 2019 staying the proceedings pending the final decision in Case C‑766/18 P,
having regard to the measure of organisation of procedure of 12 March 2020 and the replies of EUIPO and the applicant lodged at the Court Registry on 25 and 30 March 2020 respectively,
further to the hearing on 30 November 2020,
gives the following
Judgment
Background to the dispute
1        On 26 September 2013, Filotas Bellas & Yios AE, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        Registration as a mark was sought for the following figurative sign:
3        The goods in respect of which registration was sought are in Class 29 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats, halloumi cheese’.
4        On 7 June 2015, the trade mark application was registered which gave rise to a publication in European Union Trade Marks Bulletin No 206/2015 of 10 June 2015.
5        On 17 December 2015, the applicant, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi, filed an application for a declaration of invalidity in respect of all the goods referred to in paragraph 3 above. First, that application was based on the absolute ground for invalidity referred to in Article 52(1)(b) of Regulation No 207/2009 (now Article 59(1)(b) of Regulation 2017/1001), alleging bad faith on the part of the proprietor at the time of filing the application for registration of the contested mark. Secondly, the applicant relied on the relative ground for invalidity referred to in Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001), read in conjunction with Article 8(1)(b) and (5) of that regulation (now Article 8(1)(b) and (5) of Regulation 2017/1001), alleging that there was a likelihood of confusion with an earlier mark.
6        The application for a declaration of invalidity was based on the earlier EU collective word mark HALLOUMI, registered on 14 July 2000 under number 1082965, designating goods in Class 29 and corresponding to the following description: ‘Cheese’.
7        On 29 August 2017, the Cancellation Division rejected the application for a declaration of invalidity in its entirety and ordered the applicant to bear the corresponding costs.
8        On 25 October 2017, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the Cancellation Division’s decision.
9        By decision of 15 February 2019 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal and ordered the applicant to pay the costs of the cancellation and appeal proceedings.
10      First of all, the Board of Appeal found that the appeal, in so far as it was based on the relative ground for invalidity referred to in Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) of that regulation, was unfounded. In that regard, in the first place, it found that some of the goods covered by the contested mark were different from the ‘cheese’ covered by the earlier mark and that there was no likelihood of confusion with regard to those goods. In the second place, concerning similar goods or those presenting some degree of similarity, in the present case goods corresponding to the following description: ‘milk and milk products; edible oils and fats; halloumi cheese’, it noted that, taking into account the weak distinctive character of the earlier mark, the differences between the signs at issue were sufficient to distinguish them even where they designated identical goods.
11      Next, the Board of Appeal found that, as regards Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(5) of that regulation, the evidence adduced was insufficient to prove enhanced distinctiveness and, a fortiori, the reputation of the earlier mark in relation to production standards. Therefore, since the consumers who buy halloumi cheese are unable to distinguish the certified quality, there can be no detriment to the earlier mark. The Board of Appeal concluded in that regard that non-compliance with the regulations governing the use of a collective mark was not a ground for opposition and did not depend on the perception of the target consumer.
12      Lastly, the Board of Appeal found that the absolute ground for invalidity referred to in Article 59(1)(b) of Regulation 2017/1001 did not apply in the present case, because of the descriptive meaning of the word ‘halloumi’, which precluded a finding of bad faith on the part of the proprietor of the contested mark when it requested its registration. According to the Board of Appeal, the alleged bad faith could not be inferred from the decisions of the Greek courts relied on by the applicant.
Forms of order sought
13      The applicant claims that the court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
14      EUIPO contends that the Court should:
–        dismiss the action in its entirety;
–        order the applicant to pay the costs.
Law
15      In view of the date on which the application for registration at issue was filed, namely 26 September 2013, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited). Moreover, in so far as, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the present dispute is governed by the procedural provisions of Regulation 2017/1001.
16      Consequently, in the present case, as regards the substantive rules, the references made by the Board of Appeal in the contested decision and by the parties to the proceedings to Article 8(1)(b), Article 59(1)(b) and Article 60(1)(a) of Regulation 2017/1001 must be understood as referring to Article 8(1)(b), Article 52(1)(b) and Article 53(1)(a) of Regulation No 207/2009, which are identical in content.
17      In support of its action, the applicant relies, in essence, on two pleas in law, alleging, first, infringement of Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) of that regulation, and, secondly, infringement of Article 59(1)(b) of that regulation.
The first plea in law, alleging infringement of Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) of that regulation
18      The first plea is comprised, in essence, of two parts.
19      The first part of the first plea can be broken down, in essence, into two complaints.
20      In the first place, the applicant invokes an error of assessment by the Board of Appeal when it found that the goods designated by the contested mark other than the goods corresponding to the following description: ‘Milk and milk products; edible oils and fats; halloumi cheese’ were dissimilar to ‘cheese’ designated by the earlier mark, when it should have reached the conclusion that all the goods designated by the contested mark were similar to ‘cheese’.
21      In the second place, in the light of that incorrect finding, the Board of Appeal wrongly held that there was no need to carry out a global assessment of the likelihood of confusion between the marks at issue as regards the goods covered by the contested mark which it had found to be different from ‘cheese’ covered by the earlier mark.
22      The second part of the first plea can be broken down, in essence, into two complaints.
23      In the first place, the Board of Appeal erred in finding that the earlier mark was descriptive, by referring to the case-law of the General Court resulting from the judgments of 7 October 2015, Cyprus v OHIM (XAΛΛOYMI and HALLOUMI) (T‑292/14 and T‑293/14, EU:T:2015:752), and of 13 July 2018, Cyprus v EUIPO – Papouis Dairies (Pallas Halloumi) (T‑825/16, EU:T:2018:482), when those cases concerned applications for registration of individual marks and not collective marks. Thus, the Board of Appeal incorrectly assessed the characteristics of the earlier mark, as an EU collective mark, by finding that it was descriptive. That led the Board of Appeal to find that that mark was devoid of distinctive character or, at least, that its distinctive character was weak, thus depriving it of any enforceability. Such an approach has the consequence, contrary to the objectives pursued by Regulation 2017/1001, of rendering numerous EU collective marks unenforceable, including those that, under Article 74(2) of Regulation 2017/1001, are nevertheless expressly authorised to designate the geographical origin of the goods or services which they cover.
24      In the second place, as regards the analysis of the evidence adduced, the Board of Appeal allegedly supported its findings relating to the descriptive character of the mark HALLOUMI, by examples of use where the word ‘halloumi’ was followed by a description, as in the expression ‘HALLOUMI – Cyprus traditional cheese’. However, that type of expression demonstrates the lack of descriptive character of the word ‘halloumi’, since, if it were genuinely descriptive, it would be pointless to add a description to that word.
25      In its observations on the inferences to be drawn from the judgment of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO (C‑766/18 P, EU:C:2020:170), the applicant further submits that the Court emphasised the need to carry out a global assessment of the likelihood of confusion, taking into account all the relevant factors. As regards those factors, the Board of Appeal should have recognised the existence, first, of a certain degree of similarity between all the goods designated by the contested mark and ‘cheese’ designated by the earlier mark, secondly, of a certain degree of distinctiveness of the earlier mark, which did not make it possible to preclude a finding of a likelihood of confusion, in particular because, although, in the contested mark, the dominant word element was composed of the combination of the word ‘vermion’ and the word ‘halloumi’, the word ‘halloumi’ remained identifiable in that it made up the earlier mark and that, taking into account its distinctive character, a likelihood of confusion could not be excluded, thirdly, of a conceptual similarity between ‘cheese’ designated by the earlier mark and the representation of grilled cheese in the figurative element of the contested mark. The taking into account of those various factors should have led the Board of Appeal to find that there was a likelihood of confusion.
26      EUIPO disputes the arguments put forward by the applicant and contends that the first plea should be rejected.
27      Pursuant to Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) of that regulation, upon application by the proprietor of an earlier trade mark, an EU trade mark is to be declared invalid if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected.
28      For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
29      It is in the light of those principles that the Board of Appeal’s assessment of the likelihood of confusion between the signs at issue on the part of the relevant public must be examined.
The relevant public
30      In accordance with the case-law, the likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, between two marks should not be assessed on the basis of a comparison of the signs in the abstract and the goods or services which they cover. The assessment of that risk must, instead, be based on the perception that the relevant public will have of those signs, goods and services (see judgment of 2 October 2015, The Tea Board v OHIM – Delta Lingerie (Darjeeling), T‑624/13, EU:T:2015:743, paragraph 24 and the case-law cited).
31      More specifically, according to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods or services concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
32      In paragraph 15 of the contested decision, the Board of Appeal noted that the goods covered by the marks at issue were intended for the general public. Consequently, it found that its assessment should be based on the perception of the general public in the European Union, whose level of attention was at best average when purchasing the goods at issue, since they were foodstuffs for normal consumption.
33      Those findings, which, moreover, are not disputed by the parties, in so far as they appear to be well founded having regard to the evidence in the file, must be upheld. In that regard, it should be noted that both the contested mark and the earlier mark cover foodstuffs for normal consumption aimed at the general public whose attention is generally average when purchasing those foodstuffs (see, to that effect, judgment of 25 October 2006, Castell del Remei v OHIM – Bodegas Roda (ODA), T‑13/05, not published, EU:T:2006:335, paragraph 46).
Comparison of the goods covered by the marks at issue
34      According to the case-law, in assessing the similarity of goods and services, all the relevant factors relating to those goods or services should be taken into account, including, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary (judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 23). Other factors may also be taken into account such as the distribution channels of the goods and services concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
35      In paragraph 19 of the contested decision, the Board of Appeal noted that, in the field of foodstuffs, it was not sufficient, in order to conclude that the goods at issue were similar, that they were foodstuffs intended for human consumption or that those goods were offered in supermarkets, but rather it was necessary to determine whether they will be perceived as having a common commercial origin.
36      In that regard, the Board of Appeal noted, in paragraph 22 of the contested decision, that ‘halloumi cheese’, ‘milk products’ and ‘milk’, designated by the contested mark, were either similar or identical to ‘cheese’ designated by the earlier mark. By contrast, those goods differ in nature from most of the other goods designated by the contested mark, in particular ‘meat, fish, poultry and game; meat extracts’, and cannot be associated with ‘preserved, frozen, dried and cooked fruits and vegetables’. ‘Jellies, jams and compotes’ are spreads obtained from fruit and mostly eaten with bread, which differ in all respects, by their very nature,
from ‘cheese’ covered by the earlier mark.
37      In paragraph 23 of the contested decision, the Board of Appeal found that ‘eggs’ also do not have the same nature as ‘cheese’. They cannot be substituted by ‘cheese’, are obtained from different animal species and must be marketed separately from dairy products on account of their fragility.
38      In paragraph 24 of the contested decision, the Board of Appeal noted that ‘edible oils and fats’ covered by the contested mark chiefly comprise butter and margarine. Butter is a milk product which is very similar to cheese in terms of the raw materials used and methods of manufacture. It is usually marketed with cheese on the dairy products shelves of supermarkets. Thus, there is an average degree of similarity between the goods at issue.
39      In the present case, it is necessary to examine whether the Board of Appeal erred in finding that, although some of the goods covered by the contested mark had to be regarded as similar or identical to ‘cheese’ covered by the earlier mark, those goods were not, however, similar to the other goods covered by the contested mark, with the result that, in the light of that finding and with regard to those other goods, it was necessary to rule out the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
40      First of all, it must be pointed out that, if goods such as, in the present case, ‘cheese’ covered by the earlier mark, on the one hand, and all the goods covered by the contested mark, on the other, belong to the general category of foodstuffs intended for human consumption, that is not sufficient to render those goods identical, since their nature, the raw materials of which they are made, their intended purpose and their method of use may be completely different (see, to that effect, judgment of 26 October 2011, Intermark v OHIM – Natex International (NATY’S), T‑72/10, not published, EU:T:2011:635, paragraph 31).
41      Next, in so far as, as the Board of Appeal correctly pointed out without being contradicted by the parties, ‘cheese’ covered by the earlier mark is a product made from milk, so that it belongs in itself to the category of dairy products while having a particular consistency and taste, it appears that its nature, intended purpose, method of use and also its method of distribution, do not differ from those of ‘halloumi cheese’, ‘milk’ and ‘milk products’ covered by the contested mark. It must, therefore, be held, as did the Board of Appeal, that the goods in question are identical.
42      Furthermore, ‘edible oils and fats’ include products of both vegetable origin, such as margarine, and of animal origin, such as butter, which is itself a milk product similar to cheese, in proximity to which it is generally marketed. It must therefore be held, as is stated in paragraph 24 of the contested decision, that those goods, having regard to their composition and method of distribution, have a degree of similarity which may be considered to be average.
43      In addition, as regards ‘meat, fish, poultry and game; meat extracts’ covered by the contested mark, those are goods of animal origin, derived from the muscular tissues of wild or farmed animals. Although they are not identical to ‘cheese’ covered by the earlier mark, the General Court has previously held that such goods, in particular those which fall within the category of charcuterie products, could be considered to be similar to cheese and milk products because of their identical nature and intended purpose and their similar distribution channels (see, to that effect, judgment of 13 December 2007, Cabrera Sánchez v OHIM – Industrias Cárnicas Valle (el charcutero artesano), T‑242/06, not published, EU:T:2007:391, paragraph 41). The Board of Appeal therefore erred in finding that those goods were different from ‘cheese’ covered by the earlier mark, whereas it had to be held that there was a degree of similarity, which could be regarded as weak.
44      Finally, as regards ‘eggs’, although they are indeed goods of animal origin, as is cheese, these generally come from hens, or even ducks, and not from cows or goats. They have a specific dietary use and, as the Board of Appeal correctly pointed out, are generally marketed on a particular shelf and in specific packaging because of their fragility. Although they belong to the category of foodstuffs, ‘eggs’ must nevertheless be regarded as different from ‘cheese’ covered by the earlier mark.
45      Similarly, as regards ‘preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes’ covered by the contested mark, those are foodstuffs of vegetable origin which do not contain cheese and which have a specific nature connected in particular to their keeping qualities, since they are not fresh products, are generally sweet in flavour and are marketed on specific shelves. The Board of Appeal was therefore correct in finding that those goods were different from the ‘cheese’ covered by the earlier mark.
46      In the light of those considerations, it appears that the Board of Appeal erred in its comparison of some of the goods covered by the marks at issue, with the result that the first complaint in the first part is in part well founded. The global assessment of the likelihood of confusion should therefore have been conducted with regard to ‘meat, fish, poultry and game; meat extracts’ designated by the contested mark, like the other goods designated by that mark in respect of which an identity or a certain degree of similarity with ‘cheese’ covered by the earlier mark was accepted. The possible consequences of that error in the light of the lawfulness of the contested decision will be examined in the context of the global assessment of the likelihood of confusion, which will be carried out below.
47      On the other hand, the Board of Appeal cannot be criticised for having found that, with regard to the goods covered by the contested mark which were not similar to the goods covered by the earlier mark, that finding alone made it possible to conclude that there was no likelihood of confusion (see paragraph 28 above), without there being any need to carry out a global assessment of that likelihood in relation to those goods. In that regard, the second complaint in the first part of the plea is unfounded and must be rejected.
The distinctive character of the earlier mark
48      It must be borne in mind that, in the judgment of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO (C‑766/18 P, EU:C:2020:170, paragraphs 72 and 73), the Court noted, first, that the degree of distinctive character of an earlier mark determined the scope of the protection conferred by that mark and that EU collective marks had to have distinctive character, whether intrinsically or through use, and, secondly, that Article 66(2) of Regulation No 207/2009 (now Article 74(2) of Regulation 2017/1001) is not an exception to that requirement of distinctiveness. While that provision permitted, by way of derogation from Article 7(1)(c) of Regulation No 207/2009 (now Article 7(1)(c) of Regulation 2017/1001), registration as EU collective marks of signs which may serve to designate the geographical origin of goods or services, it did not, on the other hand, allow the signs thus registered to be devoid of distinctiveness. Accordingly, where an association applies for registration, as an EU collective mark, of a sign which may designate a geographical origin, it is therefore incumbent on it to ensure that that sign has elements which enable the consumer to distinguish the goods or services of its members from those of other undertakings.
49      In that regard, the Court has already held that the registration of a sign as a collective mark cannot, per se, give rise to a presumption that the mark has average distinctive character (judgment of 13 June 2012, Organismos Kypriakis Galaktokomikis Viomichanias v OHIM – Garmo (HELLIM), T‑534/10, EU:T:2012:292, paragraph 52).
50      In addition, although by analogy with the approach taken in the judgment of 24 May 2012, Formula One Licensing v OHIM (C‑196/11 P, EU:C:2012:314, paragraphs 43 to 47), with regard to validly registered national trade marks, it is indeed possible to acknowledge a certain degree of distinctiveness of a validly registered EU collective mark, it is however for the proprietor of such a mark to show what level of distinctiveness it has, since he intends to rely on it in support of opposition proceedings or even cancellation proceedings. It must also be recalled that, in accordance with Article 95(1) of Regulation 2017/1001, the burden of proof before EUIPO lies in that regard with the opponent concerned (see, to that effect, judgment of 6 December 2017, Tulliallan Burlington v EUIPO – Burlington Fashion (BURLINGTON), T‑123/16, not published, EU:T:2017:870, paragraph 60 and the case-law cited).
51      In paragraphs 26 to 33 of the contested decision, the Board of Appeal stated that, because of its descriptive character, the inherent distinctive character of the earlier mark was weak for ‘cheese’. As regards the enhanced distinctiveness acquired through use by the relevant public, that has not been demonstrated in the light of the evidence adduced by the applicant, which relates merely to halloumi cheese and, in respect of only one item of evidence, to the mark HALLOUMI as an EU collective mark.
52      In the present case, it is common ground, first of all, that the earlier mark consists exclusively of the word ‘halloumi’. That word corresponds to the generic name for a type of cheese produced in Cyprus, with the result that, given the descriptive character of the single word of which it is composed, the earlier mark has an inherent distinctive character that must be regarded as weak.
53      In that regard, in paragraph 71 of the judgment of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO (C‑766/18 P, EU:C:2020:170), the Court recalled that the distinctiveness of the EU collective word mark HALLOUMI, which also corresponds to the earlier mark in the present case, did not have to be assessed in a particular way on the ground that it was a collective mark and, in paragraph 76 of that judgment, that there was no need to call into question the General Court’s assessment of the degree of distinctiveness of that mark, which was considered to be weak. In those circumstances, the Board of Appeal cannot be criticised, when assessing the inherent distinctiveness of the earlier mark, for having referred to decisions of the Court which concerned earlier rights also composed of the single word ‘halloumi’, as individual marks or certification, in proceedings relating to applications for registration or opposition, since the assessment of the distinctiveness of the rights in question met criteria which could be perfectly transposed to the present case.
54      Contrary to the applicant’s submissions, that does not amount to denying the very existence of the distinctive character of a validly registered trade mark, or to depriving that mark of the rights which it confers on its proprietor, but simply to finding that it cannot confer more rights than those it draws objectively from its distinctive character. Moreover, it must be borne in mind that, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion, in particular, where the goods in question are identical and the signs at issue are similar (see judgment of 13 April 2011, Sociedad Agricola Requingua v OHIM – Consejo Regulador de la Denominación de Origen Toro (TORO DE PIEDRA), T‑358/09, not published, EU:T:2011:174, paragraph 45 and the case-law cited).
55      Next, it must be stated that nothing in the applicant’s argument makes it possible to call into question the finding in paragraph 30 of the contested decision that, among the items of evidence submitted by the applicant, only one refers to the earlier mark as a collective mark, without, moreover, referring to the applicant or one of its members. The examination of the file before the Board of Appeal permits the conclusion that the other evidence which was adduced contains almost exclusively references to the word ‘halloumi’ as a speciality cheese from Cyprus. Those other items of evidence do not therefore make it possible to conclude that consumers, faced with the earlier mark, will associate it with something other than halloumi cheese, in view of the fact that it refers to the generic name of that type of cheese, rather than to the commercial origin of the goods in so far as they come from members of the association which is the proprietor of that mark or, as the case may be, from undertakings economically linked to those members or to that association.
56      Similarly, there is no reason to call into question the reasoning set out in paragraph 32 of the contested decision, according to which the decisions of the national courts relied on by the applicant before the Board of Appeal are irrelevant to the present case, in particular because, when the contested decision was adopted, they were not definitive, concerned a different earlier right or examined issues unrelated to the dispute in the present case.
57      It must also be pointed out, as regards the applicant’s argument relating to the need to protect EU collective marks which, pursuant to the provisions of Article 74(2) of Regulation 2017/1001, are expressly authorised to designate the geographical origin of the goods or services covered, that the Court noted, in paragraph 74 of the judgment of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO (C‑766/18 P, EU:C:2020:170), that, even supposing that the EU collective mark HALLOUMI implicitly refers to the Cypriot geographical origin of the goods covered, that mark must nevertheless still fulfil its essential function, namely to distinguish the goods or services of the members of the association which is the proprietor of that mark from those of other undertakings. The generic nature of the word ‘halloumi’, since that word alone constitutes the earlier mark, necessarily limits the effects of that mark in the light of that function.
58      For the sake of completeness, it should be noted, as was stated in the Opinion of Advocate General Kokott in Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO (C‑766/18 P, EU:C:2019:881, point 86), that the need for more extensive protection on the basis of EU trade mark law does not exist in the present case, since the rules governing protected designations of origin and protected geographical indications, as laid down in Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs (OJ 2012 L 343, p. 1), could provide sufficient protection outside the scope of trade mark law.
59      The first complaint in the second part of the first plea must therefore be rejected.
60      Lastly, as regards the second complaint in the second part of the first plea, alleging an incorrect analysis by the Board of Appeal concerning the evidence, the applicant merely states that, where there is evidence including a reference to the word ‘halloumi’ followed by other words, as for example in the expression ‘HALLOUMI – Cyprus traditional cheese’, the word ‘halloumi’ is not descriptive, since it would otherwise be pointless to add a description to that word. Such an argument in no way calls into question the Board of Appeal’s findings, as set out in paragraph 30 of the contested decision, according to which, among the evidence adduced, it could identify only one reference to the mark HALLOUMI as a collective mark registered in the European Union. Therefore, that evidence which, as the applicant itself states, referred only to the word ‘halloumi’ and not to the mark HALLOUMI, as such, is not capable of demonstrating the existence of enhanced distinctiveness acquired through use, even though that evidence was adduced for that purpose.
61      In those circumstances, the applicant’s argument alleging an incorrect analysis of the evidence, which, it must be found, concerns the word ‘halloumi’ and not the mark HALLOUMI, is ineffective in so far as it relates to an alleged under-estimation of the distinctive character acquired by the earlier mark.
62      In the light of the foregoing considerations, the second complaint in the second part and, therefore, that part in its entirety must be rejected.
The dominant or most distinctive elements of the contested mark
63      In paragraph 38 of the contested decision, the Board of Appeal gave a description of the contested mark, stating that that it was a figurative composition consisting of the word ‘halloumi’ written in large light green letters, with the word ‘χαλλούμι’ in light blue directly underneath, then below that word, and closer to the centre of the sign, is the word ‘vermion’, written in slightly smaller and bolder light blue letters, with the hardly legible words ‘grill cheese/grill est/grill kase’ in very small blue script below. Those words appear on a white rectangular background overlaying a photograph of pieces of halloumi cheese on a bed of greens above the words, in inverted commas, ‘mediterranean cuisine under authentic cypriot recipe’ in very small blue script. Under those elements there is a white element resembling a lower case stylised ‘m’ on a circular yellow background, under which the word ‘belas’ appears in bold grey capital letters and the wording ‘premium Greek dairy since 1927’ in small letters.
64      The Board of Appeal found, in paragraph 39 of the contested decision, that, despite the presence of the word ‘halloumi’ in the upper part of the contested mark, it could not be considered that it formed the ‘beginning’ of that mark which, given its complex nature, did not have a beginning as such. Thus, the word ‘vermion’, although slightly smaller than the word ‘halloumi’ but larger than the word ‘χαλλούμι’, appears in an equally eye-catching position closer to the centre of the mark, whereas the word ‘belas’, written in bold grey letters in the lower right-hand part, will not be overlooked. Given that consumers tend to focus their attention on words rather than figurative elements, the yellow spot containing the white element is of secondary importance in the overall impression. On account of its position and stylisation, and contrary to what the description of the sign at issue suggests, it will not be perceived as being related to the word ‘belas’ placed below. The relevant public will understand the word ‘halloumi’ as referring to a type of cheese and will not take into account its descriptive meaning. As for the word ‘χαλλούμι’, it will be understood by the relevant Greek public as meaning ‘halloumi’ or will be perceived as a Greek word with no discernible meaning by the rest of the relevant public. In both cases, the impact on the overall impression is low. Since consumers have no reason to focus their attention on words that they cannot read, the expressions ‘grill cheese/grill est/grill kase’ and ‘mediterranean cuisine under authentic cypriot recipe’ are also of secondary importance. They will be understood by the relevant English-speaking public as mere explanations of the nature and quality of the goods at issue and of the photograph of grilled halloumi cheese, or will not be understood at all. Irrespective of any language skills, the relevant public will perceive the photograph of grilled halloumi cheese as a mere illustration of the goods in question and therefore as being devoid of any distinctive character.
65      Furthermore, as regards the distinctive elements of the contested mark, the Board of Appeal also found, in paragraphs 40 and 41 of the contested decision, that the word ‘halloumi’ was descriptive of cheese for the relevant public. That descriptive character is reinforced by the figurative elements representing grilled cheese and by the heading ‘grill cheese/grill est/grill kase’. Consequently, the words ‘vermion’ and ‘belas’, which have no meaning with regard to the goods in question, are the dominant and distinctive elements of the mark. In that regard, the word ‘vermion’ has no meaning for the relevant public. The name of a mountain range in Greece, known as a ski resort, does not convey any meaning that could describe the goods applied for in Class 29, irrespective of whether, among the relevant public, the Cypriot public is, or is not, familiar with that name.
66      Those findings of the Board of Appeal, apart from the fact that they are not expressly challenged by the parties, appear to be correct and must be upheld. In particular, while it is true that the word ‘vermion’ designates a place, that place is in Greece, whereas the word ‘halloumi’ refers specifically to a cheese produced in Cyprus, with the result that there is nothing to suggest that the relevant public is likely to establish a link between the word ‘vermion’ and the place of origin of the goods in question or their ingredients. The word elements ‘vermion’ and ‘belas’ therefore constitute, for the whole of the relevant public defined as being the general public of the European Union, the dominant and most distinctive elements of the contested mark.
The comparison of the signs at issue
67      The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
68      In the first place, as regards the visual comparison, it must be pointed out that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have graphic form capable of creating a visual impression (see judgment of 4 May 2005, Chum v OHIM – Star TV (STAR TV), T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited).
69      In accordance with the case-law, where a trade mark is composed of word and figurative elements, the word element of the mark is, in principle, more distinctive than the figurative element, since the average consumer will more easily refer to the goods in question by citing the name rather than describing the figurative element of the trade mark (see judgment of 9 September 2008, Honda Motor Europe v OHIM – Seat (MAGIC SEAT), T‑363/06, EU:T:2008:319, paragraph 30 and the case-law cited).
70      The earlier mark is composed of the word ‘halloumi’, whereas the contested mark is a figurative composition consisting of several word elements and a photograph (see paragraph 63 above).
71      In so far as it is apparent from the analysis of the contested mark that, among the elements of which it is comprised, the words ‘vermion’ and ‘belas’ are the dominant and most distinctive elements, the word ‘halloumi’ is merely secondary in the overall impression produced by that mark.
72      Therefore, it is necessary to uphold the finding of a very low degree of visual similarity between the signs at issue, since those signs are the same only in respect of the word ‘halloumi’ to which consumers will pay only scarce attention on account, first, of its secondary nature and, secondly, of its descriptive meaning.
73      In the second place, as regards the phonetic comparison, the Board of Appeal found, in paragraph 43 of the contested decision, that the phonetic similarity of the signs at issue was low because, despite the presence of the word ‘halloumi’ in each of those signs, consumers will shorten the pronunciation of the contested mark in order to pronounce only ‘vermion’ or ‘belas’.
74      That assessment must be upheld. Although the presence of the word ‘halloumi’ in the earlier mark and in the word element of the contested mark results in a certain degree of phonetic similarity, that similarity is very greatly reduced by the presence of other word elements in the contested mark which are intended to be pronounced to a greater extent by consumers when they refer to that mark.
75      In the third place, the Board of Appeal found, in paragraph 44 of the contested decision, that it was not possible to carry out a conceptual comparison, because the contested mark as a whole has no meaning, and that the presence of a descriptive term cannot give rise to any relevant conceptual similarity.
76      That analysis by the Board of Appeal cannot, however, be upheld. Although it is true that the earlier mark conveys the concept of a type of Cypriot cheese, namely halloumi cheese, it is possible that, to a certain extent, the contested mark conveys a similar concept. For the relevant public, the word ‘halloumi’, associated with the photograph of pieces of halloumi cheese on a bed of greens, could also refer to the concept of halloumi cheese.
77      However, in so far as the word ‘halloumi’ plays only a secondary role in the contested mark, in particular in relation to the dominant words ‘vermion’ and ‘belas’, it is likely that the concept that it conveys, even when associated with the photograph of pieces of halloumi cheese on a bed of greens, will not be immediately perceived by the relevant public, indeed, for that public, the presence of the words ‘vermion’ and ‘belas’ illustrates to a greater extent the fanciful nature of the contested mark, since those words do not convey any precise concept or, in respect of the word ‘vermion’, refers at most to a place not directly related to the goods concerned.
78      In those circumstances, contrary to what the Board of Appeal found in the contested decision, the signs at issue are not totally different on a conceptual level, but have a degree of conceptual similarity which may be classified as low.
79      It must therefore be held that the Board of Appeal made two errors when comparing the signs at issue, in this instance in the assessment of the conceptual similarity. The possible impact of that error on the lawfulness of the contested decision will be examined below as part of the global assessment of the likelihood of confusion.
The global assessment of the likelihood of confusion
80      A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
81      In the present case, it should be borne in mind that, in paragraph 49 of the contested decision, the Board of Appeal concluded that, because the marks at issue coincided only in the descriptive element ‘halloumi’, while differing in the distinctive elements of the contested mark, namely the words ‘vermion’ and ‘belas’, which are not to be found in the earlier mark, and taking into account the weak distinctive character of the earlier mark, the differences between those marks were sufficient to safely distinguish them whether designating identical goods, or a fortiori similar goods.
82      In that regard, in so far as the existence of a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar, the finding that there is no likelihood of confusion must, in any event, be endorsed as regards ‘eggs’ and ‘preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes’, covered by the contested mark, since they are different from the goods covered by the earlier mark.
83      By contrast, as regards the other goods covered by the contested mark which are identical or similar, to varying degrees, to the goods covered by the earlier mark, the existence of a likelihood of confusion cannot automatically be excluded, with the result that the global assessment of that likelihood must be carried out in the light of all the relevant factors.
84      First, as regards the factor relating to the similarity of the signs at issue, that factor relates, first, to the presence of the word ‘halloumi’ in the contested mark, whereas that word also corresponds to the only element of which the earlier mark is composed, which is the source of a very low degree of visual similarity and a low degree of phonetic and conceptual similarity, and, secondly, to the fact that the word ‘halloumi’, associated with the photograph of pieces of halloumi cheese on a bed of greens, is likely to refer to the concept of halloumi cheese.
85      Those considerations must, however, be seen in the light of the fact that, when the public is confronted with the word element of which the contested mark consists, its attention will be drawn more to the distinctive elements of that mark, in this case the words ‘vermion’ and ‘belas’, which are not present in the earlier mark. Furthermore, while it is true that the word ‘halloumi’, associated with the photograph of pieces of halloumi cheese on a bed of greens, is likely to refer to the concept of halloumi cheese, the figurative element in the contested mark also plays a significant differentiating role, in so far as the earlier mark, which is a word mark, does not include that element.
86      Thus, the word ‘halloumi’, the main element giving rise to the similarity between the signs at issue, does not, as it were, contribute to the distinctive character of the contested mark, since the elements ‘vermion’ and ‘belas’ of that mark were regarded as the elements which would most attract the attention of the relevant public because of their distinctive and dominant character, whereas the earlier mark, for its part, enjoyed only weak inherent distinctiveness.
87      Although the finding that the earlier mark has weak distinctive character does not in itself preclude a finding that there is a likelihood of confusion (see, to that effect, order of 27 April 2006, L’Oréal v OHIM, C‑235/05 P, not published, EU:C:2006:271, paragraphs 42 to 45), it appears, however, that where the elements of similarity between two signs arise from the fact that, as in the present case, they share a component which has a weak inherent distinctive character, the impact of such elements of similarity on the global assessment of the likelihood of confusion is itself low (see, to that effect, judgments of 22 February 2018, International Gaming Projects v EUIPO – Zitro IP (TRIPLE TURBO), T‑210/17, not published, EU:T:2018:91, paragraph 73 and the case-law cited, and of 20 September 2018, Kwizda Holding v EUIPO – Dermapharm (UROAKUT), T‑266/17, EU:T:2018:569, paragraph 79).
88      In those circumstances, the low degree of similarity which exists in the present case between the signs at issue will be unlikely to contribute to the existence of a likelihood of confusion, since those signs coincide in an element, the word ‘halloumi’, which is not, as such, dominant and which is, moreover, inherently weakly distinctive for the relevant public which will understand it at most as a possible reference to halloumi cheese.
89      Secondly, as regards the distinctive character of the earlier mark, first, it has a low degree of inherent distinctiveness and, secondly, the applicant has not demonstrated the existence of enhanced distinctiveness acquired through use, in so far as the evidence adduced does not make it possible to find that the relevant public, faced with the earlier mark, will associate it with something other than halloumi cheese, having regard to the fact that it refers to the generic name for that type of cheese, rather than to the commercial origin of the goods designated by that mark, in that they come from the members of the association which is the proprietor of that mark or, as the case may be, undertakings economically linked to those members or that association.
90      Thus, the level of protection conferred by the earlier mark, having regard to its low degree of inherent distinctiveness, must itself be low.
91      Thirdly, it is necessary to take into consideration the fact that some of the goods designated by the contested mark, namely ‘halloumi cheese’ and ‘milk’ and ‘milk products’, are identical to the goods designated by the earlier mark and that other such goods, namely ‘meat, fish, poultry and game; meat extracts’ and ‘edible oils and fats’ are similar to different degrees.
92      In that regard, it should be borne in mind that all the goods in question are everyday consumer goods, during the purchase of which the relevant public will display an average level of attention (see paragraph 33 above).
93      It could be concluded that there is a likelihood of confusion only if the relevant public was likely to be misled as to the commercial origin of the goods covered by the contested mark.
94      However, in the present case, that likelihood does not appear to be established, even in respect of the goods covered by the contested mark which are identical to ‘cheese’ covered by the earlier mark.
95      The relevant public, when faced with the contested mark and assuming that it also directs its attention to the element ‘halloumi’ contained in that mark, which is unlikely in view of the fact that that element is not very distinctive and that it is descriptive in relation to the goods marketed, or even if it perceives that the photograph of pieces of halloumi cheese on a bed of greens is likely to refer to the concept of halloumi cheese, will not establish a link between that mark and the earlier mark, since, first, it will at most establish a link between that mark and the product that it designates, namely halloumi cheese and, secondly, the marks at issue, considered as a whole, are similar only to a low degree.
96      In the light of all the foregoing considerations, it must be held that, notwithstanding the errors that it made, first, in the comparison of the goods designated by the marks at issue and, secondly, in the comparison of those marks, the Board of Appeal was right to conclude in the present case that there was no likelihood of confusion. Consequently, the first plea must be rejected.
Second plea in law, alleging infringement of Article 59(1)(b) of Regulation 2017/1001
97      The second plea consists of two parts.
98      First, according to the applicant, the Board of Appeal applied an incorrect test to assess the bad faith of the proprietor of the contested mark, since it found, in essence, that, as the earlier mark consisted of a word which designated a specific type of cheese, a cheese producer could not be criticised for using that term to describe the cheese it produced. That reasoning was based on the incorrect finding that the earlier mark is descriptive.
99      Secondly, in support of its conclusion that there was no bad faith on the part of the proprietor of the contested mark, the Board of Appeal found that there was no indication of dishonest intention on the part of that proprietor, whereas, in the Court’s case-law, dishonesty is not a criterion for assessing bad faith. The Board of Appeal therefore erred and should have concluded that the contested mark was filed in bad faith and was therefore invalid on that basis.
100    EUIPO disputes the arguments put forward by the applicant and contends that the second plea in law should be rejected.
101    Article 59(1)(b) of Regulation 2017/1001, under the heading ‘Absolute grounds for invalidity’, states as follows:
‘An EU trade mark shall be declared invalid on application to [EUIPO] or on the basis of a counterclaim in infringement proceedings:
…
(b)      where the applicant was acting in bad faith when he filed the application for the trade mark.’
102    First of all, it should be recalled that, if a concept set out in Regulation 2017/1001 is not defined by that regulation, its meaning and scope must be determined by considering its usual meaning in everyday language, whilst also taking into account the context in which it occurs and the objectives pursued by that regulation (see, to that effect, judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 43 and the case-law cited).
103    That applies to the concept of ‘bad faith’ referred to in Article 59(1)(b) of Regulation 2017/1001, in the absence of any definition of that concept by the EU legislature.
104    While, in accordance with its usual meaning in everyday language, the concept of ‘bad faith’ presupposes the presence of a dishonest state of mind or intention, that concept must moreover be understood in the context of trade mark law, which is that of the course of trade. In that regard, Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) and Regulations No 207/2009 and 2017/1001, which were adopted successively, have the same objective, namely the establishment and functioning of the internal market. The rules on the EU trade mark are aimed, in particular, at contributing to the system of undistorted competition in the Union, in which each undertaking must, in order to attract and retain customers by the quality of its goods or services, be able to have registered as trade marks signs which enable the consumer, without any possibility of confusion, to distinguish those goods or services from others which have a different origin (see judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 45 and the case-law cited).
105    Consequently, the absolute ground for invalidity referred to in Article 59(1)(b) of Regulation 2017/1001 applies where it is apparent from relevant and consistent indicia that the proprietor of an EU trade mark has filed the application for registration of that mark not with the aim of engaging fairly in competition but with the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, or with the intention of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark, in particular the essential function of indicating origin (see, to that effect, judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 46 and the case-law cited).
106    Next, the intention of an applicant for a trade mark is a subjective factor which must, however, be determined objectively by the competent administrative or judicial authorities. Consequently, any claim of bad faith must be the subject of an overall assessment, taking into account all the factual circumstances relevant to the particular case (see, to that effect, judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli, C‑529/07, EU:C:2009:361, paragraphs 37 and 42). It is only in that manner that a claim of bad faith can be assessed objectively.
107    Furthermore, it must be noted that, according to the case-law, in the case of an application for a declaration of invalidity based on Article 59(1)(b) of Regulation 2017/1001, there is no requirement whatsoever that the applicant for that declaration be the proprietor of an earlier mark designating identical or similar goods or services to those of the mark in respect of which the applicant seeks a declaration of invalidity (see, to that effect, judgment of 13 November 2019, Outsource Professional Services v EUIPO, C‑528/18 P, not published, EU:C:2019:961, paragraph 72 and the case-law cited).
108    It is to be inferred from the interpretation provided by the Court of Justice in paragraph 53 of the judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli (C‑529/07, EU:C:2009:361), merely that, where it is established that use by a third party of an identical or similar sign for identical or similar goods or services existed and was capable of causing confusion, it is necessary to examine, in the context of the overall assessment of the relevant circumstances of the particular case, whether the applicant for registration of a mark had knowledge of this. That factor is, however, only one relevant factor among others to be taken into consideration (see, to that effect, judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 55). The fact that the applicant knew or must have known that a third party had long been using, in at least one Member State, an identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought is not sufficient, in itself, to permit the conclusion that that applicant was acting in bad faith (judgment of 11 June 2009, Chocoladefabriken Lindt Sprüngli, C‑529/07, EU:C:2009:361, paragraph 40).
109    Lastly, the potentially descriptive nature of an element of which a trade mark of the European Union consists, in particular a word element, does not prevent a finding that the proprietor of that trade mark had acted in bad faith when it applied for its registration (see, by analogy, judgment of 13 November 2019, Outsource Professional Services v EUIPO, C‑528/18 P, not published, EU:C:2019:961, paragraph 69).
110    In paragraphs 55 and 56 of the contested decision, the Board of Appeal considered that it saw nothing dishonest in the fact that a cheese producer used words designating a specific type of cheese in order to describe the cheese it produced and that mere knowledge of the existence of earlier rights held by competitors did not constitute bad faith. The wording of the contested mark is a reference to the tradition of halloumi cheese production in Cyprus and not to the certification system put in place by the applicant from 1992, with the result that the mere fact that the proprietor of the contested mark was not authorised to produce halloumi cheese under the certification system did not constitute bad faith. Whether other Greek dairy companies could decide to produce halloumi cheese in Cyprus was therefore irrelevant. Similarly, it was not necessary to take into account the decisions of Greek courts concluding that the proprietor of the contested mark had acted in bad faith.
111    In the present case, it is common ground that, when the proprietor of the contested mark filed the application for registration of that mark on 26 September 2013, the earlier mark had already been registered for several years, namely since 14 July 2000. Although the documents in the case do not enable the Court to rule with certainty on that point, it is conceivable that, when the contested mark was filed, the proprietor of that mark was aware of the existence of the earlier mark.
112    However, the earlier trade mark has the specific feature of consisting of a single word, namely ‘halloumi’, which also corresponds to the generic name for a particular type of cheese produced in Cyprus according to a special recipe (see, to that effect, judgment of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, C‑766/18 P, EU:C:2020:170, paragraph 76).
113    In that regard, it must be pointed out that the evidence produced by the applicant during the proceedings before EUIPO in order to demonstrate the distinctive character acquired through use of the earlier mark, some of which dates from the beginning of the 20th century, makes it possible to establish long-standing use of the word ‘halloumi’ to designate a type of cheese produced in Cyprus, well before the registration of the earlier mark.
114    In those circumstances, although the possible descriptiveness of an element of which an EU trade mark is constituted, in particular a word element, does not preclude a finding that the proprietor of that mark acted in bad faith (see paragraph 109 above), the use of the word ‘halloumi’ among the word elements of which a complex figurative mark, like the contested mark, is composed, must at most be regarded as the use of a word which is descriptive of the goods designated by that mark, since those goods may be halloumi cheese or may contain that type of cheese in their composition.
115    The rights which the applicant derives from the registration of the earlier mark cannot, in all circumstances, confer on it an exclusive right to use the word ‘halloumi’, when, moreover, the extent of its rights under that mark is determined by the distinctiveness of that mark, whether inherent or acquired through use, which it must be recalled is weak.
116    Furthermore, the bad faith of the proprietor of the contested mark cannot be inferred from a possible failure to observe the rules for use of the earlier mark. It should be noted in that regard that, under Article 66(2) of Regulation No 207/2009 (now Article 74(2) of Regulation 2017/1001), ‘an EU collective mark shall not entitle the proprietor to prohibit a third party from using in the course of trade such signs or indications, provided that he uses them in accordance with honest practices in industrial or commercial matters’. There is nothing in the present case to suggest that the generic word ‘halloumi’ was used by the proprietor of the contested mark in the context of use not in accordance with honest practices in industrial or commercial matters.
117    Moreover, concerning the reference by the Board of Appeal to the criterion of dishonesty, contrary to what the applicant claims, that criterion appears several times in the Court’s case-law, as is submitted by EUIPO (see, to that effect, judgments of 14 February 2019, Mouldpro v EUIPO – Wenz Kunststoff (MOULDPRO), T‑796/17, not published, EU:T:2019:88, paragraph 80; of 14 May 2019, Moreira v EUIPO – Da Silva Santos Júnior (NEYMAR), T‑795/17, not published, EU:T:2019:329, paragraph 23; and of 23 May 2019, Holzer y Cia v EUIPO – Annco (ANN TAYLOR and AT ANN TAYLOR), T‑3/18 and T‑4/18, EU:T:2019:357, paragraph 31). That criterion is also referred to, in essence, in point 60 of the Opinion of Advocate General Sharpston in Chocoladefabriken Lindt Sprüngli (C‑529/07, EU:C:2009:148), in the sense that the ‘dishonest intention’ of the person making an application for registration of an EU trade mark makes it possible to assess that person’s subjective motivation. The Board of Appeal was therefore entitled, without committing any error, to rely on that criterion in particular in order to assess the alleged bad faith of the proprietor of the contested mark.
118    Lastly, for the same reasons as those set out in paragraph 56 above, the decisions of the national courts relied on by the applicant before the Board of Appeal must be regarded as irrelevant for the purpose of determining whether there was bad faith on the part of the proprietor of the contested mark.
119    In the light of the foregoing considerations, it must be concluded that, first, the Board of Appeal did not apply any incorrect criterion in order to assess the possible bad faith of the proprietor of the contested mark and, secondly, the overall assessment of the relevant circumstances of the present case does not make it possible to reach a finding of bad faith on the part of the proprietor of the contested mark when filing the application for registration of that mark.
120    The two parts of the second plea in law must therefore be declared unfounded and, accordingly, the second plea in law must be rejected and the action dismissed in their entirety.
Costs
121    Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
122    In the present case, since the applicant has been unsuccessful, it must be ordered to bear its own costs and to pay the costs incurred by EUIPO, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO).
Tomljenović
Schalin
Škvařilová-Pelzl
Delivered in open court in Luxembourg on 24 March 2021.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.