Appeal brought on 24 September 2018 by the Republic of Cyprus against the judgment of the General Court (Second Chamber) delivered on 13 July 2018 in Case T-825/16: Republic of Cyprus v EUIPO

(Case C-608/18 P)

(2019/C 93/31)

Language of the case: English

Parties

Appellant: Republic of Cyprus (represented by: S. Malynicz QC, Barrister, V. Marsland, Solicitor)

Other parties to the proceedings: European Union Intellectual Property Office, Papouis Dairies Ltd.

Form of order sought

The appellant claims that the Court should:

— allow the appeal against the judgment of the General Court in case T-825/16 Republic of Cyprus v EUIPO and grant the application for annulment;

— order the Office and intervener to bear their own costs and pay those of the appellant.

Pleas in law and main arguments

First, the General Court erred in considering that the Board of Appeal was correct to transpose the conclusions from the General Court's earlier judgments in in Joined Cases T-292/14 and T-293/14 (XAΛΛOYMI and HALLOUMI) and Case T-534/10 (HELLIM) to the present case. Those cases were not concerned with certification marks but different kinds of marks, namely ordinary EU trade marks and collective marks respectively. The essential function of such marks is to act as an indication of the commercial origin of the goods (a plurality of traders linked by membership of an association in the case of a collective mark). Certification marks, by contrast, do not have the essential function of indicating origin, but of distinguishing a class of goods, namely goods which are certified in that they in fact comply with and have been authorised to be made under the regulations for permitted use of the HALLOUMI certification mark. Moreover the relevant public in those earlier General Court judgments was different to the relevant public in the present case.

Secondly, the General Court wrongly held that an earlier national mark — the national certification mark in this case — wholly lacked distinctive character as distinguishing goods which are certified from those which were not; wrongly holding the mark to be descriptive and generic; wrongly undermining the national protection of the national mark; and wrongly calling into question in EUIPO opposition proceedings the validity of the said mark.

Thirdly, the General Court erred in the comparison of the marks and the assessment of the likelihood of confusion. It wrongly approached these questions as if the earlier mark were an origin-indicating trade mark rather than a certification mark. It failed to accord the earlier mark any distinctiveness as a certification mark, i.e. as distinguishing goods which in fact complied with the standards of the certification mark and were in fact made by producers authorised by the certification mark holder. It also failed to consider how certification marks are typically used (i.e. invariably along with a distinctive name, trade mark or logo). It failed to consider the meaning and significance of the contested EUTM, in particular by failing to consider whether the ‘HALLOUMI’ element had an independent distinctive character in the later mark as a sign indicating, contrary to fact, that the goods covered by the contested EUTM were certified.

Fourthly, the General Court failed to consider national provisions and case law as to the scope and effect of national certification marks. The conditions and modalities of Member States' laws on certification marks were not harmonised under the Trade Marks Directives 89/104 (1) or 2008/95 (2) and yet the EUTMR provides that such national marks can form the basis of earlier rights which prevent registration of EUTMs. Such rights should be considered in the light of national case law and national provisions, by analogy with the various national rights under Article 8(4) EUTMR (which rights are also not harmonised and vary greatly in their nature, scope and effect from Member State to Member State).

(1) First 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).

(2) Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008, L 299, p. 25).