JUDGMENT OF THE GENERAL COURT (Second Chamber)
8 December 2021 (*)
(EU trade mark – Opposition proceedings – Application for the EU word mark GRILLOUMI – Earlier national certification word marks ΧΑΛΛΟΥΜΙ HALLOUMI – Relative ground for refusal – No likelihood of confusion – Similarity between services and goods – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑556/19,
Republic of 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, intervener before the General Court, being
Fontana Food AB, established in Tyresö (Sweden), represented by P. Nihlmark and L. Zacharoff, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 29 May 2019 (Case R 1284/2018-4) relating to opposition proceedings between the Republic of Cyprus and Fontana Food,
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 9 August 2019,
having regard to the response of EUIPO lodged at the Court Registry on 26 August 2020,
having regard to the response of the intervener lodged at the Court Registry on 21 October 2019,
having regard to the decision of 23 October 2019 to stay the proceedings,
having regard to the decision of 9 March 2021 joining Cases T‑556/19 and T‑593/19 for the purposes of the oral part of the procedure,
having regard to the change in the composition of the Chambers of the General Court,
further to the hearing on 10 May 2021,
gives the following
Judgment
Background to the dispute
1        On 25 October 2016, the intervener, Fontana Food AB, 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 word sign GRILLOUMI.
3        The services in respect of which registration was sought are in Class 43 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: ‘Services for providing food and drink; coffee-shop services; restaurants’.
4        The trade mark application was published in European Union Trade Marks Bulletin No 207/2016 of 2 November 2016.
5        On 2 February 2017, the Republic of Cyprus filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the services referred to in paragraph 3 above.
6        The opposition was based inter alia on the following earlier marks:
–        the Cypriot certification word mark XAΛΛOYMI HALLOUMI, registered on 25 June 1992 under the number 366765, designating the goods in Class 29 and corresponding to the following description: ‘Dairy product and specifically folded cheese known as fresh halloumi’;
–        the Cypriot certification word mark XAΛΛOYMI HALLOUMI, registered on 25 June 1992 under the 366766, designating the goods in Class 29 and corresponding to the following description: ‘Dairy product and specifically folded cheese known as mature halloumi’.
7        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of Regulation No 207/2009 (now Article 8(1)(b) and Article 8(5) of Regulation 2017/1001).
8        On 8 May 2018, the Opposition Division rejected the opposition and ordered the Republic of Cyprus to pay the costs.
9        On 6 July 2018, the Republic of Cyprus filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.
10      By decision of 29 May 2019 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal and ordered the Republic of Cyprus to pay the costs incurred for the purposes of the opposition and appeal proceedings.
11      As regards, in particular the assessment of the likelihood of confusion pursuant to Article 8(1)(b) of Regulation 2017/1001, the Board of Appeal found that the goods and services covered by the marks at issue were dissimilar, with the result that the opposition was unfounded with regard to that provision. In particular, it took the view that, although the services covered by the mark applied for could arguably be considered similar to certain foodstuffs on the ground that they are complementary, the existence of such complementarity had not, however, been proved with regard to cheese.
Forms of order sought
12      The Republic of Cyprus claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
13      EUIPO and the intervener contend that the Court should:
–        dismiss the action in its entirety;
–        order the Republic of Cyprus to pay the costs.
Law
14      In view of the date of submission of the application for registration at issue, that is to say, 25 October 2016, which is decisive for the purposes 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). Furthermore, since, in accordance with 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), these proceedings are governed by the procedural provisions of Regulation 2017/1001.
15      Accordingly, in this case, with regard to the substantive rules, the references made by the Board of Appeal, in the contested decision, and by the parties, in their arguments, to either Article 8(1)(b) or Article 8(5) of Regulation 2017/1001 must be understood as referring to either Article 8(1)(b) or Article 8(5) of Regulation No 207/2009.
16      In support of the action, the Republic of Cyprus relies in essence on two pleas in law, the first of which alleges infringement of Article 8(1)(b) of Regulation No 207/2009 while the second alleges infringement of Article 8(5) of that regulation.
17      It is appropriate to begin by examining the first plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
18      The first plea is divided, in essence, into three parts.
19      By the first part, the Republic of Cyprus alleges that the Board of Appeal made an error of assessment in that it found that the services covered by the mark applied for were dissimilar to cheese, a product in Class 29 and covered by the earlier marks, whereas, according to the applicant, those services and that product are complementary. It submits that the Board of Appeal’s reasoning was erroneous in four respects.
20      According to the Republic of Cyprus, first, the Board of Appeal wrongly applied a standard of mutual indispensability of the services and goods at issue, whereas it sufficed to show that they could be used or offered together. Secondly, the Board of Appeal failed to take account of the Court’s case-law according to which foodstuffs, including milk and dairy products, are necessarily used in the serving of food and drink, with the result that those goods and those services are complementary. Thirdly, the Board of Appeal misapplied the case-law resulting from the judgment of 15 February 2011, Yorma’s v OHIM – Norma Lebensmittelfilialbetrieb (YORMA’S) (T‑213/09, not published, EU:T:2011:37), in relation to the criterion of complementarity. Lastly, the Board of Appeal relied on the incorrect and unsubstantiated finding that there are no cheese restaurants. The Board of Appeal therefore erred in law, since, on the basis of the erroneous finding that the services and the goods at issue were not similar, it found that there was no need to proceed to a global assessment of the likelihood of confusion. In the circumstances of the case, the finding of any degree of similarity between the goods and services at issue would have been sufficient to justify proceeding to a global assessment of the likelihood of confusion.
21      EUIPO contends, first, that it fully endorses the assessment made by the Board of Appeal in the contested decision concerning the comparison of the goods and services covered by the marks at issue. In that regard, it argues that a finding that those goods and services are similar cannot result either from the fact that they all relate to foodstuffs or from the fact that they are complementary in the sense that they may be used or purchased together, which is the case for practically all foodstuffs. The ultimate test is whether the relevant consumer may think that the same or economically linked undertakings are responsible for manufacturing the goods at issue or for providing the services at issue.
22      As regards the comparison of the goods covered by the earlier marks with the services covered by the mark applied for, EUIPO argues that the mere possibility that foodstuffs could be consumed in a restaurant is not a sufficient reason to find that there is a relevant degree of complementarity capable of leading to a finding of similarity within the meaning of Article 8(1)(b) of Regulation No 207/2009. The existence of a ‘connection’ or ‘closeness’ between products and services covered by competing rights could at best give rise to the application of the provisions of Article 8(5) of Regulation No 207/2009. Moreover, unlike prepared meals, and even supposing that there are restaurants specialising in cheese dishes, it cannot be sustained that the relevant public could think that the goods ‘cheese’ come from the same undertaking as that offering ‘provision of food and drink’ or ‘restaurant services’ or from economically linked undertakings.
23      Furthermore, it maintains that, although, as the Republic of Cyprus submits, in the judgment of 18 February 2016, Harrys Pubar and Harry’s New York Bar v OHIM – Harry’s New York Bar and Harrys Pubar (HARRY’S BAR) (T‑711/13 and T‑716/13, not published, EU:T:2016:82), the Court found that there was a similarity between a wide array of foodstuffs, including cheese, and ‘restaurant, pub and café’ services in Class 43 on the basis of the fact that those foodstuffs were ‘necessarily used’ in the provision of those services and that they ‘[might] be offered for sale in places in which food and drink are served’, that is, however, rather far-fetched and does not correspond to reality. It submits that, in a situation where consumers buy in those places the service of provision of food and drink which may include those goods, they mostly do not know the trade mark under which those goods are sold and they would not visit those establishments in order to buy goods such as raw meat, a dozen eggs or a wheel of cheese. Furthermore, EUIPO argues that the abovementioned judgment does not take into consideration the question whether the consumer may perceive the services in question and goods such as ‘meat; fish; poultry and game; meat extract; preserved, dried and cooked fruits and vegetables; jellies, jams, marmalades, compotes; eggs; milk and dairy products; butter; cheese; edible oils and fats; milk-based beverages; instant drinks based on milk; yoghurt’ as having a common origin, whereas that is a decisive criterion in the light of the facts of the present case.
24      That does not mean that marks registered for cheese do not have any protection against applications for registration of marks covering services for providing food and drink, but the proprietor of the former marks will need to resort to other grounds of opposition, cancellation or infringement, such as those under Article 8(5) of Regulation No 207/2009.
25      The intervener submits first of all that, that the Board of Appeal was entitled to find that there was no similarity between the services covered by the mark applied for and the goods covered by the earlier marks. In order to find that goods and services are complementary, the condition relating to the existence of a close connection between them must be satisfied. It maintains that the Board of Appeal correctly applied that criterion in the present case, when it compared the goods covered by the earlier marks and the services covered by the mark applied for. It argues that the judgment of 10 September 2008, Boston Scientific v OHIM – Terumo (CAPIO) (T‑325/06, not published, EU:T:2008:338) reinforces that analysis by confirming the need for a close connection between complementary goods, and not just a possible or coincidental connection, such as the simple fact that foodstuffs are necessary in the preparation or serving of food. Furthermore, it submits that, even though the Court has already held that milk and dairy products, on the one hand, and the provision of food and drink, on the other, are complementary, such an assessment is not capable of being applied to the present case in which the category of goods at issue is narrower.
26      Next, the intervener submits that the Court has previously found on several occasions that the inherent distinctive character of the mark HALLOUMI was weak on account of its descriptive character and that a descriptive mark lacked distinctiveness, regardless of whether it was an individual or a certification mark. In that regard, the Republic of Cyprus was incorrect to base its line of argument on the premiss that certification marks are so different from individual marks that the absolute grounds for invalidity under Article 7 of Regulation No 207/2009 do not apply to them.
27      The intervener argues, lastly, that the distinctiveness of any earlier mark must be assessed in the context of any opposition and there is no exception to that assessment for certification marks. The Board of Appeal also correctly assessed the evidence submitted by the Republic of Cyprus relating to the alleged distinctiveness of the earlier marks. That evidence shows only that the term ‘halloumi’ is perceived by consumers as the designation of a type of cheese. Furthermore, it submits that the use of a descriptive term among consumers does not make it more distinctive in their eyes.
28      Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered 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. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
29      Where, as in this case, the earlier marks relied on in the opposition are national certification marks, which have been registered under national legislation transposing Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), the likelihood of confusion must be understood – by analogy with the rules governing collective marks – as being the risk that the public might believe that the goods or services covered by those earlier trade marks and those covered by the trade mark applied for all originate from persons authorised by the proprietor of those earlier marks to use them or, where appropriate, from undertakings economically linked to those persons or to that proprietor (see, to that effect and by analogy, 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 64).
30      Furthermore, although, in the event of opposition by the proprietor of a certification mark, the essential function of that type of mark must be taken into account in order to understand what is meant by likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No207/2009, the fact remains that the case-law establishing the criteria with regard to which the existence of such a likelihood of confusion must be assessed in practice is applicable to cases concerning an earlier certification mark (see, by analogy, 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 65).
31      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, 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 September 2016, Sun Cali v EUIPO – Abercrombie & Fitch Europe (SUN CALI), T‑512/15, EU:T:2016:527, paragraph 45 and the case-law cited).
32      It is in the light of those considerations that it must be examined whether the Board of Appeal was right in finding, as regards the marks at issue, that there was no likelihood of confusion on the part of the relevant public for the purposes of Article 8(1)(b) of Regulation No 207/2009.
33      As regards the definition of the relevant public, the Board of Appeal pointed out, in paragraph 13 of the contested decision, that the goods and services covered by the marks at issue were aimed at the end consumer, who was deemed to be reasonably well informed and reasonably observant and circumspect. It therefore found that, since the earlier marks were registered in Cyprus, the assessment had to be based on the perception of the general public in that country.
34      In that regard, it must be pointed out that the mark applied for covers commonly used services and that the earlier marks are registered in respect of everyday consumer goods, in the present case cheese, and that those services and goods are all aimed at the general public, which will, when purchasing them, display a generally average level of attention. The Board of Appeal’s findings as regards the definition of the relevant public, which appear to be well founded in the light of the information in the case file, and have not, moreover, been disputed by the parties, must therefore be upheld.
35      As regards the comparison of the goods and services at issue, the Board of Appeal concluded, in paragraph 21 of the contested decision, that the goods and services covered by the marks at issue were dissimilar, after stating, in paragraph 18 of that decision, that, although the services covered by the mark applied for could arguably be considered to be similar to foodstuffs, in particular when restaurants sold food to take away or to consume at the bar, that did not apply to cheese. According to the Board of Appeal, although the difference between a point of sale for foodstuffs and a self-service restaurant may be fluid, the focus, as regards the services in Class 43, is, however, still on the service nature of a restaurant and not on the sale of a foodstuff itself. It found, in that regard, that, if an establishment containing a restaurant or an area like a self-service restaurant were to sell cheese over the counter, that situation would not relate to ‘restaurant services’, but to the goods as such.
36      In paragraphs 19 and 20 of the contested decision, the Board of Appeal furthermore found, in essence, that the evidence which the Republic of Cyprus had submitted in order to show that some restaurants and catering outlets served predominantly cheese-based meals or offered such meals for immediate consumption were insufficient to prove that, from the point of view of the relevant public, the services for providing food and drink at issue and the cheese served in those premises were, in the light of their complementarity, similar. It found, in essence, that there was no indication that consumers would perceive a common origin between the services provided by those providers and the cheese that they serve.
37      In this case, it is necessary to examine whether the Board of Appeal was right in finding that the services covered by the mark applied for and the goods covered by the earlier marks were dissimilar, with the result that the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 had to be ruled out.
38      In accordance with the case-law, in assessing the similarity of goods and services, all the relevant factors relating to those goods and 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. Other factors may also be taken into account such as, for example, 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).
39      Since the comparison concerns, on the one hand, the services covered by the mark applied for, which correspond to services for providing food and drink, restaurant services and coffee-shop services in Class 43, and, on the other, the goods covered by the earlier marks, in the present case cheese, which falls within the broader category of the foodstuffs in Class 29, the Board of Appeal was entitled, without committing any error and as it had, moreover, been requested to do by the Republic of Cyprus, to examine whether there was a similarity on account of their complementarity rather than on account of factors such as their nature, their intended purpose or their method of use. The goods and services at issue are not identical and it is indisputable that, in the light of the factors relating to their nature, their intended purpose or their method of use, they are not similar (see, to that effect, judgment of 18 February 2016, HARRY’S BAR, T‑711/13 and T‑716/13, not published, EU:T:2016:82, paragraph 58 and the case-law cited).
40      Although the criterion of complementarity of the goods and services at issue represents only one factor among several others – such as the nature, use or distribution channels of those goods or services – in the light of which their similarity can be assessed, the fact remains that it is an autonomous criterion capable of being the sole basis for the existence of such a similarity (see, to that effect, judgment of 21 January 2016, Hesse v OHIM, C‑50/15 P, EU:C:2016:34, paragraph 23).
41      In that regard, it must be borne in mind that goods and services are complementary where they are closely connected in the sense that one is indispensable or important for using the other, so that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services (see, to that effect, judgment of 4 February 2013, Hartmann v OHIM – Protecsom (DIGNITUDE), T‑504/11, not published, EU:T:2013:57, paragraph 44 and the case-law cited).
42      As is apparent from the case-law of the Court, it must be pointed out that the goods in Class 29, including cheese, are necessarily used in the serving of food and drink, with the result that those services and those goods are complementary. First, cheese may be offered to the clientele of many restaurants, or even of coffee shops, by being incorporated as an ingredient in dishes that are intended to be sold and consumed on the premises or to be taken away. Secondly, cheese, without being processed as an ingredient, may be sold as such to consumers, in particular in restaurants in which the activity is not confined to the preparation and serving of cooked dishes, but also consists of selling food which is intended to be consumed away from the place in which it is sold. Such goods are therefore used in and offered in the context of services for providing food and drink, restaurant services or coffee-shop services. Those goods are consequently closely connected with those services (see, to that effect, judgments of 13 April 2011, Bodegas y Viñedos Puerta de Labastida v OHIM – Unión de Cosecheros de Labastida (PUERTA DE LABASTIDA), T‑345/09, not published, EU:T:2011:173, paragraph 52, and of 18 February 2016, HARRY’S BAR, T‑711/13 and T‑716/13, not published, EU:T:2016:82, paragraph 59 and the case-law cited).
43      In the light of those considerations, it must be held, contrary to what the Board of Appeal found, that the complementary connection between cheese and services for providing food and drink, restaurant services and coffee-shop services must lead to the finding that there is a certain degree of similarity between, on the one hand, the ‘services for providing food and drink; coffee-shop services; restaurants’ in Class 43 covered by the mark applied for and, on the other, the ‘cheese’ in Class 29 covered by the earlier marks. However, that degree of similarity must be qualified as weak, since, first, the nature of the services and goods at issue is obviously different, because the former are fungible and the latter are not (see, to that effect, judgment of 24 January 2019, Brown Street Holdings v EUIPO – Enesan (FIGHT LIFE), T‑800/17, not published, EU:T:2019:31, paragraph 25 and the case-law cited), and, secondly, the ‘services for providing food and drink; coffee-shop services; restaurants’ in Class 43 covered by the mark applied for can be complementary to a wide range of food products, of which cheese forms only a part.
44      However, the existence of such a similarity means that the possibility that the relevant public might be led to think that the services and the goods at issue have the same commercial origin cannot, from the outset, be excluded.
45      Consequently, since the Board of Appeal erred in finding that those goods and those services were dissimilar, it wrongly concluded that one of the cumulative conditions for a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 to exist was not satisfied. Accordingly, it was required to carry out an examination of the other factors that are capable of contributing towards the existence of such a likelihood of confusion, before, as the case may be, carrying out a global assessment of that likelihood of confusion.
46      In view of all of the foregoing considerations, the first part of the first plea must be held to be well founded and, consequently, without it being necessary to examine the second and third parts of the first plea or the second plea, the form of order sought by the Republic of Cyprus must be upheld by annulling the contested decision.
Costs
47      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
48      Since EUIPO has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by the Republic of Cyprus, in accordance with the form of order sought by the applicant.
49      In accordance with Article 138(3) of the Rules of Procedure, the intervener must bear its own costs.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 29 May 2019 (Case R 1284/2018-4);
2.      Orders EUIPO to bear its own costs and to pay those incurred by the Republic of Cyprus;
3.      Orders Fontana Food AB to bear its own costs.
Tomljenović
Schalin
Škvařilová-Pelzl
Delivered in open court in Luxembourg on 8 December 2021.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.