Key Facts
- •Appeal against the Registrar of Trade Marks' decision in trade mark opposition proceedings.
- •Appellant (Foundation) opposed Respondent (Fontana)'s applications for "GRILLOUMI" (Class 43 services) and "GRILLOUMAKI" (Classes 29 & 30 goods).
- •Foundation owns a UK collective mark for "HALLOUMI" (Class 29).
- •Fontana, a Swedish company, claims to have introduced halloumi to Sweden.
- •Oppositions based on ss.5(2)(b) and 5(3) of the Trade Marks Act 1994.
- •Fontana challenged the Foundation's proof of use of its HALLOUMI mark.
Legal Principles
Standard of appeal from the Registry: The appellate court does not re-evaluate but checks for identifiable flaws in the lower court's reasoning (gap in logic, inconsistency, failure to consider material factors).
Lifestyle Equities CV v Amazon UK Services Ltd [2024] UKSC 8, [49]-[50]
Likelihood of confusion under s.5(2) must be assessed globally, considering all relevant factors and from the perspective of the average consumer.
Trade Marks Act 1994, s.5(2); Hearing Officer's summary at §43
Genuine use of a collective mark requires it to distinguish members' goods/services from others, enabling consumers to understand their origin from the association.
Der Grüne Punkt – Duales System Deutschland GmbH v EUIPO, C-143/19P, EU:C:2019:1076, §57
Intention is irrelevant under s.5(2) assessment of likelihood of confusion; objective approach is required.
Case law cited and discussed in sections 30-31
Outcomes
Appeal dismissed for GRILLOUMI.
While the Hearing Officer erred in finding dissimilarity of goods/services, the low degree of similarity, coupled with the weak distinctiveness of HALLOUMI and insufficient evidence of indirect confusion, meant no likelihood of confusion.
Appeal dismissed for GRILLOUMAKI.
Insufficient evidence that "AKI" would be understood as a diminutive by the average consumer; marks deemed too dissimilar to cause confusion.
Appeal dismissed for s.5(3) claims.
Insufficient reputation of HALLOUMI amongst general public; even with a small reputation amongst trade customers, the use of GRILLOUMI did not unfairly take advantage of that reputation.
Respondent's Notice dismissed.
Although evidence of genuine use of HALLOUMI mark was thin, there was sufficient material for the Hearing Officer to reach that finding.