The UK High Court has rejected an appeal by halloumi cheese producers against a decision made by the UK Intellectual Property Office (UK IPO) to allow two trademarks, Grilloumi and Grilloumaki, on to the UK trademark register.

The appellant is the Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi, the owner of a UK collective mark for the word halloumi in Class 29 for ‘cheese’.

The application for invalidation was based on section 5(2)(b) of the UK Trade Marks Act on the grounds that Swedish company Fontana Food’s Grilloumi mark was similar to the foundation’s earlier halloumi mark and for “identical or similar goods or services as the earlier mark”. Fontana had filed for Grilloumi in trademark Class 43, which includes services for providing ‘food and drink’, ‘coffee shop services’ and ‘restaurants’. 

The foundation criticised the comparison made by the UK IPO hearing officer, Heather Harrison, between the goods and services involved and her approach to the assessment of indirect confusion.

However, in the High Court judgment delivered by deputy judge Tom Mitcheson on 9 September, he agreed with the hearing officer when considering Grilloumi that there was a low degree of similarity between services for providing ‘food and drink’, ‘coffee-shop services’, ‘restaurants’ and ‘cheese’. 

He said: “I do not consider that there is any basis to find that she fell into error and should have found a greater degree of similarity between goods and services, as was urged on me by the foundation.”

The hearing officer and the court did say that although goods and services were similar to a “low degree”, there was no likelihood of confusion. Mitcheson stressed the importance of “disentangling” the descriptive use of halloumi from any relevant trademark use.

Although Grilloumi may call to mind halloumi in the descriptive sense, any link to halloumi in the trademark sense was “too weak to conclude that the services being offered under the former are provided by a member of the foundation”, he ruled.

He added that he did not consider that there was “any inconsistency with the hearing officer’s finding” that Grilloumi was likely to bring halloumi to mind. “Bringing another mark to mind is insufficient for a finding of likelihood of indirect confusion,” he said. 

It also objected to Grilloumaki in Class 29 that includes, among others, eggs, milk and milk products, and Class 30 that includes coffee and tea.

For Grilloumaki the focus was on the comparison of marks and the failure to place weight on the fact that ‘aki’ would be seen as signifying a diminutive in the Greek language. The foundation said that the hearing officer should have accepted that ‘(m)aki’ would be seen as a diminutive by the average consumer and therefore there would be a much higher degree of conceptual similarity between the marks.

In his judgment, Mitcheson said that even if the evidence presented was enough to establish that ‘aki’ designates a diminutive in the Greek language, there was insufficient evidence to demonstrate that the average UK consumer would understand this. “I therefore reject the criticism of the hearing officer in relation to her comparison of the marks,” he said. 

Halloumi has a protected designation of origin (PDO) status, which means only approved producers from Cyprus can market the cheese under that name. But Mitcheson pointed out that this case concerned a collective trademark and was to be distinguished from a geographical indication or a PDO, which are intended to protect the name of a product that comes from a specific region or follows a particular traditional production process.

Fontana has a subsisting UK registration for Grilloumi in Class 29 for cheese which is not currently the subject of invalidation proceedings.

This is the latest instalment in a long history of litigation between the two parties. Last October the General Court of the EU rejected the Republic of Cyprus’s opposition to Fontana Food’s Grilloumi being registered as an EU trademark.

The Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi was represented by Hogarth Chambers’ Simon Malynicz KC (instructed by Clifford Chance). Fontana Food was represented by partner and trademark lawyer Ian Bartlett at Beck Greener.