Grating result for the Halloumi collective: High Court finds in favour of GRILLOUMI and GRILLOUMAKI applications

Claire Lehr and Lauren Barlow of our Intellectual Property team recently wrote an article for World Trademark Review, examining the High Court’s judgment in the latest episode of the long-running history of disputes between the Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi and Fontana Food AB  (Foundation for the Protection of the Traditional Cheese of Cyprus Named Halloumi v Fontana Food AB ([2024] EWHC 2311 (Ch), 9 September 2024)). The case is particularly interesting since it involved a collective mark, HALLOUMI, that name being recognised by many in the United Kingdom as a Cypriot cheese made from goat or sheep milk.

• There is a low degree of similarity between “cheese” and “restaurant services”
• While consumers may know what Halloumi cheese is, they would not associate GRILLOUMI with the collective mark for HALLOUMI
• Use of GRILLOUMI and GRILLOUMAKI would not pose an unfair advantage to the reputation of the collective mark

Background
The appeal was brought by the foundation, which had unsuccessfully opposed Fontana’s two trademark applications for GRILLOUMI (in Class 43) and GRILLOUMAKI (in Class 29), on the basis of its collective trademark HALLOUMI, registered in Class 29 for “cheese”. By way of reminder, a collective mark indicates that the goods or services bearing the mark originate from members
of a trade association. In the present case, the foundation is comprised of Halloumi cheese producers, noting that “membership of the foundation is not compulsory for producers of halloumi in Cyprus and so halloumi can be legitimately made and marketed by non-members”. This difference produced some interesting discussions in the analysis of the case.
The foundation brought an appeal under Sections 5(2) and 5(3) of the Trademarks Act 1994. Under Section 5(2) of the act, the foundation claimed, among other things, that the following had been wrongly assessed:

1. indirect confusion;
2. comparison of the goods and services in Classes 29 and 43; and
3. lack of consideration of Fontana’s intentions when it registered the marks.

The hearing officer was also criticised by the foundation for incorrectly assessing unfair advantage under Section 5(3) of the act…

You can read the full article here (pdf).

This article first appeared on WTR Daily, part of World Trademark Review, in October 2024. For further information, please go to www.worldtrademarkreview.com.