Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 29/01/2020

ΝΙΚΟΛΑΟΣ ΣΙΑΡΚΟΣ

ΙΠΠΟΚΡΑΤΟΥΣ 81

GR-10680 ΑΘΗΝΑ

GRECIA

Application No:	018126405
Your reference:	903232253
Trade mark:	HALLOUMAKI
Mark type:	Figurative mark
Applicant:	ΚΟΛΙΟΣ ΑΝΩΝΥΜΗ ΕΤΑΙΡΙΑ-ΕΛΛΗΝΙΚΗ ΒΙΟΜΗΧΑΝΙΑ ΓΑΛΑΚΤΟΣ ΔΕΚΑΤΟ ΤΕΤΑΡΤΟ (14ο) ΧΙΛΙΟΜΕΤΡΟ ΕΘΝΙΚΗΣ ΟΔΟΥ ΘΕΣΣΑΛΟΝΙΚΗΣ - ΛΑΓΚΑΔΑ GR-57200 ΘΕΣΣΑΛΟΝΙΚΗ GRECIA

The Office raised an objection on 03/10/2019 pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 03/12/2019, which may be summarised as follows.

1. The mark at hand, , does not have any descriptive meaning in relation to the objected goods. While the applicant admits that the term HALLOUM(I) designates a specific composition of the cheese from goat’s, sheep’s and cow’s milk, it argues that the suffix ‘AKI’ indicates originality and “reduces the descriptiveness of the element ‘HALLOUM’.

2. The combination as a whole does not have any meaning for the relevant public which is the European consumer and not the Greek public.

3. The applicant makes reference to the decision of the 4^th Board of appeal R2652/2014-4, ‘HALLOUMITSA’ which found that the term is fanciful and therefore eligible for registration.

4. The Office has accepted in the past similar trade marks such as EUTM 11 039 336, ‘MR HALLOUMIS’, EUTM  11 209 384, ‘HALLOUMAKIS’, EUTM 11 274 925 CYPRUS HALLOUMI, and EUTM 1269461‘HALLOUMITSA’.

Pursuant to Article 94 EUTMR, it is up to the Office to take a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest underlying each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 25).

By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR

pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 31).

‘The signs and indications referred to in Article 7(1)(c) [EUTMR] are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T-118/00, Tabs (3D), EU:T:2001:226, § 59).

A trade mark composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) [EUTMR], unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts.

This clearly applies to the present case. The sign is a straightforward combination of two descriptive elements, which does not create an impression sufficiently far removed from that produced by the mere combination of the elements of which it is composed to amount to more than the sum of its parts. As only analysed in the communication of 03/10/2019, the sign is a combination of the words ‘Halloumi’ (a type of cheese as admitted also by the applicant) and ‘aki’ which is Greek is a suffix denoting something small, diminutive ( -άκι [áki] : υποκοριστικό επίθημα για το σχηματισμό ουδέτερων ουσιαστικών παράγωγων: 1. κυρίως από ουσιαστικά· (πρβ. -αδάκι, -αλάκι, -ουδάκι, -αράκι): (αρνί) αρνάκι, (δωμάτιο) δωματιάκι, (λουλούδι) λουλουδάκι, (μαρούλι) μαρουλάκι, Source: http://www.greek-language.gr/greekLang/modern_greek/tools/lexica/triantafyllides/search.html?lq=%22-%CE%AC%CE%BA%CE%B9%22&dq=). The Office insists that the relevant consumers, that is the Greek-speaking part of the public, notwithstanding certain stylised elements consisting of the use of a common and legible typeface of green colour, would perceive the sign as providing information that the goods are small pieces or blocks of Halloumi cheese. Therefore, the sign describes the kind and size goods in question.

Pursuant to Article 1 EUTMR, a European Union trade mark has a unitary character and has equal effect throughout the European Union. Accordingly, a mark must be refused registration even if it is devoid of distinctive character only in part of the European Union.

The Office refutes the applicant’s claim that the words have no meaning for the European consumer which excludes the Greek-speaking part of the public.

As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, according to settled case law, ‘decisions concerning registration of a sign as a European Union trade mark … are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, the registrability of a sign as a European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice (15/09/2005, C 37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T 36/01, Glass pattern, EU:T:2002:245, § 35).

‘It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another’ (27/02/2002, T 106/00, Streamserve, EU:T:2002:43, § 67).

The examples put forward by the applicant cannot be compared to the present case as EUTM 11 039 336, ‘MR HALLOUMIS’ does not grant protection for cheese and the remaining marks are highly stylized.

The opponent refers to previous decisions of the Boards of Appeal to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

In the present case, the previous case referred to by the opponent, the Boards of Appeal decision R2652/2014-4, ‘HALLOUMITSA’ is not relevant to the present proceedings as the suffix of the mark, ‘MITSA,’ is meaningless in all EU languages and the mark at issue is highly stylised as mentioned above.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 18 126 405 is hereby rejected for the following goods:

Class 29 Τυρί που πληροί τις προδιαγραφές της προστατευόμενης ονομασίας προέλευσης Χαλλούμι.

The application may proceed for the remaining services.

According to Article 67 EUTMR, you have a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

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