Fontana Food AB (Fontana), a Swedish food company that manufactures and sells several Greek-type products, including the cheese Grilloumi, successfully registered the word “Grilloumi” as an EU trademark in 2009, in classes 29 and 30. In 2016 Fontana filed an application to register Grilloumi for goods and services in class 43 – “services for providing food and drink; coffee-shop services: restaurants”.
The application was opposed by the Republic of Cyprus in 2017 based on two Cypriot certification marks for goods in class 29 being: “Dairy product and specifically folded cheese known as halloumi” and that “identical or similar marks should not be registered for identical or similar goods and services where there exists a likelihood of confusion”.
In 2019 this was rejected by the European Union Intellectual Property Office Fourth Board of Appeal, holding there was no identity or similarity with the goods and services applied for i.e. food services.
In December 2021 the Court overturned the Fourth Board of Appeal's decision but observed that a likelihood of confusion cannot be excluded at the outset, without properly being examined and the case was remitted to the Second Board of Appeal. In 2022, after further review, it was held by the Second Board of Appeal that there was no likelihood of confusion and when the trademarks were considered together it was determined that the only similarity was to a below-average degree. Cyprus has two months to file an appeal.
This latest decision raises a number of issues to be considered in detail in similar cases going forward including the extent of the likelihood of confusion needed, the nature of distinctive character, the level of similarity required and the effectiveness of a PDO as a means of protection.
This article was co-written by Christopher Barr, Trainee Solicitor.