As the UK prepares to depart from the EU, it will introduce shortly a national regime for the protection of geographical indicators. Against this background, it is interesting to read how the scope of registered collective marks was interpreted widely by the High Court so as to defeat a UK trade mark application that had incorporated the entirety of an earlier collective mark as only one of its elements.
The decision demonstrates how, despite being subject to the general rules pertaining to trade marks, collective marks can be useful and powerful assets. It also serves as a reminder of the approach to be adopted when assessing the extent to be which collective marks might share visual, aural and/or conceptual similarity with other marks.
Background
In November 2018, Babel Sajt Kft (the "Applicant") applied to register in the UK the figurative trade mark shown right (the "Mark") in Class 29 for "Milk and milk products; dairy and dairy products; cheese and cheese products".
In February 2019, the Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi (the "Foundation") opposed the registration of the Mark for all goods under sections 5(2)(b) and 5(3) of the Trade Marks Act 1994. The Opponent relied upon the prior grant of European Union ("EU") trade mark no. 1082965 for the word HALLOUMI (the "Earlier Mark"), registered for "Cheese" in Class 29.
The Earlier Mark is a collective mark to be used by members of the Foundation who produce Halloumi cheese in accordance with the rules of the Foundation. An EU collective mark is an type of EU trade mark ("EUTM") described as a mark that is capable of distinguishing the goods or services of the members of an association, where the association is treated as the proprietor of the mark from those of other undertakings[1].
The opposition was rejected by the UK Intellectual Property Office ("UKIPO"). Having carried out a 'global assessment', the Hearing Officer had concluded that:
- with its vivid colour, stylised incomplete flower like device and prominent usage of HAJDU, the Mark held little visual similarity to the single named Earlier Mark such that, in the Hearing Officer's opinion, the consumer’s eye is drawn more to the HAJDU element which is more noticeable because of its size and position
- since the Earlier Mark would be pronounced “HA-LOO-ME” and the Mark would probably be pronounced “HAJ-DOO HA-LOO-ME”, there was a only medium degree of aural similarity. Indeed, if just the first word of HAJ-DOO was articulated, then the respective marks would have a very low level of aural similarity
- crucially in assessing possible conceptual similarity, having found that the average consumer would be taken to a member of the buying public, then in the Hearing Officer's view, such a person would recognise the Earlier Mark as referring to a type of cheese produced by an entity known as Hajdu.
Despite the similarity or identity of goods, the Hearing Officer – who also held that the Earlier Mark was not particularly distinctive – concluded that there was no likelihood of direct or indirect confusion.
The High Court decision
The Foundation appealed the UKIPO's decision of 11 March 2020 to the High Court. Having heard the Foundation's appeal in July 2020, Mr Justice Marcus Smith gave judgment[2] on 30 October 2020.
The judge agreed with the Hearing Officer that, unless the EUTM Regulation expressly provides otherwise, EU collective marks fall to be considered like any other EUTMs. However, he held that – although there was no distinction in the applicable law – particular attention needs to be paid to the intrinsic differences between EU collective marks and other types of EUTMs when seeking to determine how similar an EU collective mark is to other EUTMs (whether such EUTM is collective or not). In this way, the judge rejected the Hearing Officer's approach to how additional verbal and figurative elements made for significant and noticeable points of difference such the Mark and Earlier Mark were not similar, even though the Earlier Mark is wholly contained in the Mark.
The judge pointed out that, when using a collective mark, members of the association that owns the collective trade mark will seek to differentiate (i) their association from the rest of the world; and (ii) themselves from other members of that association by adding their own elements. Here, the Applicant had incorporated into the Mark a near slavish copy of the Earlier Mark. Whilst the judge agreed that the Hearing Officer was right to consider the Mark as a whole, he held that she erred in "failing also to consider the combinatorial aspect of [the Mark], and in particular the fact that a separate element within [the Mark] actually comprised the [Earlier Mark]" [paragraph 43 (2)].
The judge concluded that, by adopting this approach, the Hearing Officer had failed to consider the possibility that the average consumer might have regarded the Mark as an amalgam of (i) the Earlier Mark (a badge designating origin of the product from a member of the Foundation) and (ii) the mark of the individual Foundation member. In other words, the average consumer might have treated the Mark as conveying a message of origin, namely, “This halloumi is made by Hajdu, a member of the Foundation”. As such, the Hearing Officer did not make the correct comparison: "It seems to me that in failing to consider this possibility, the Hearing Officer fell into error. Moreover, this is not an error of factual evaluation; it is a failure to assess or consider material facts when conducting a critical part of the analysis within section 5(2)(b) of the Trade Marks Act 1994" [paragraph 43(3)].
Furthermore, the judgment states that the Hearing Officer was wrong to conclude that the average consumer would only perceive the Earlier Mark as being a reference to a type of cheese. The Earlier Mark was a registered right and, as the Applicant had not sought to have it declared invalid on the basis that it was generic and thus devoid of distinctiveness, the Earlier Mark was presumed to be validly registered in the name of the Foundation [paragraph 47]. The judge also held that the Hearing Officer was wrong to conclude without any evidence that the distinctiveness of the Earlier Mark "is inherently weak" [paragraph 48][3].
The Foundation had filed voluminous amounts of evidence about its involvement at UK trade fairs as well as other activities and campaigns through which it promotes itself to UK trade buyers such as supermarkets. Whereas the judge accepted that the Hearing Officer's assessment as to the identity of the average consumer being an individual shopper should be properly respected – even if he would have himself reached a different conclusion – he held that the Hearing Officer fell into error in not paying proper regard to how the Earlier Mark was a collective mark. As such, trade consumers, if not individual shoppers, "would be aware of the difference between an EU collective mark (as designating the product of an association of producers, governed by the specific rules of that association) and an EUTM (designating a single undertaking as the origin of the product)" [paragraph 54].
The decision of the Hearing Officer had been made on the papers. Rather than remit the matter back to the UKIPO, the judge proceeded to carry out his comparison of the Mark and the Earlier Mark. In particular, he concluded that there was a very strong likelihood of confusion that at least trade purchasers would associate the Mark with the Earlier Mark. He allowed the appeal of the Foundation, set aside the decision of the Hearing Officer and declared that the application to register the Mark was rejected.
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[1] Article 74(1) of the European Union Trade Mark Regulation 2017/1001
[2] Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v Babel Sajt Kft [2020] EWHC 2858
[3] Referring to the CJEU decision in Formula One Licensing BV v OHIM, Case C-196/11 P
