Vicky Colley

November 2024

UK Opposition 

Fontana filed applications for the marks “GRILLOUMI” and “GRILLOUMAKI” in the UK for services relating to providing food and drink, coffee shops and restaurants, as well as goods including food products, and condiments.  

These applications were opposed by The Foundation on the following grounds of the Trade Marks Act 1994: 

1. Section 5(2)(b) – whereby the marks were similar to The Foundation’s earlier trade mark, “HALLOUMI”, and there is an alleged likelihood of confusion among the public. 
2. Section 5(3) – whereby The Foundation’s earlier mark, “HALLOUMI”, has a reputation in the UK, and the use of the later marks would take advantage of the distinctive character or reputation of “HALLOUMI”. 

However, the opposition was dismissed by the Hearing Officer.  

The High Court Decision 

The Foundation appealed this decision to The High Court, who upheld the UKIPO’s original decision, with the reasoning as set out below:  

Comparison of Goods and Services:
During the initial Opposition, the UKIPO Hearing Officer concluded that while there is some similarity between restaurant services (Class 43) and food products like cheese (Class 29), the average consumer would not expect restaurants to be the source of the ingredients they serve. The Judge agreed with this Decision.  

The Foundation had tried to argue that certain food chains, such as Starbucks and Nandos, sell food products alongside their restaurant services, but the Judge maintained that consumers generally do not associate restaurant services with the production of ingredients like cheese and that these arguments can only go so far. Whilst there are examples of producers of cheese also providing restaurant services, the average consumer would not go to restaurants to do their food shopping.  

Therefore, the similarity between restaurant services and cheese as such was found to be very low. 

Comparison of the Marks:
Regarding the composition of the marks “HALLOUMI” against “GRILLOUMI” and “GRILLOUMAKI”, the initial Hearing Officer noted that there was a medium degree of similarly between the marks, particularly in regards to aural and visual characteristics. The amalgamation of “GRILL” and “HALLOUMI” would be noted by some consumers, but others would only perceive “GRILL”.  This element ensured that the marks were too different to be considered confusing and that the average consumer would not consider these marks to be related to each other or from the same proprietor.   

Additionally, a similar conclusion was found when considering the mark “GRILLOUMAKI”. Fontana AG argued that the addition of the Greek diminutive “-aki’ would associate the average consumer with the mark “halloumi” and its Cypriot origins. However, this was dismissed by the Judge and the “GRILLOUMAKI” mark was subsequently considered to be too different to “HALLOUMI”. 

Critically, it was found that “HALLOUMI” is only weakly distinctive as a trade mark. During the appeal, The Judge noted that the term “halloumi” is widely recognized as descriptive of a specific type of cheese, and not as a trade mark owned by The Foundation as its source. Therefore, the Judge found that, due to the weakly distinctive nature of the mark no likelihood of confusion existed between the marks and the opposition under Section 5(2)(b) failed. 

Reputation and Unfair Advantage (Section 5(3)):
The Foundation finally argued that Fontana’s use of “GRILLOUMI” and “GRILLOUMAKI” would take unfair advantage of the reputation of “HALLOUMI”. However, the judge found that the general public would consider the “HALLOUMI” mark to merely be descriptive as a type of cheese and that there was no evidence that the public recognized the mark as a trade mark owned by The Foundation. The Judge therefore noted that as “HALLOUMI” is a weakly distinctive mark and lacks reputation, “GRILLOUMI” or “GRILLOUMAKI” cannot take advantage of this reputation. The opposition under Section 5(3), therefore failed. 

Next Steps 

This ruling is a further blow to The Foundation’s efforts to protect “HALLOUMI” as a trade mark, and greatly weakens protection afforded by The Foundation’s collective mark. This once again highlights the issues The Foundation faces with distinguishing between geographical indications and trade marks. 

In Europe, The Foundation’s equivalent collective mark for “HALLOUMI” has faced numerous and continuous cancellation and invalidity actions, some of which are still pending, suggesting further uncertainty about the protection of their IP rights. 

However, in April 2021, The Foundation was successful in getting HALLOUMI recognized as a Protected Designation of Origin in the EU, whereby only cheese made in Cyprus to a specific recipe can be sold under the name “Halloumi”.  

Unfortunately, due to Brexit coming into force just months before the PDO was recognized, this protection does not apply to cheese sold in the UK.  

The recent High Court ruling may prompt The Foundation to shift focus from the not-so-successful trade mark protection to pursuing geographical indication (GI) status in the UK.  The protection of PDO under the UK’s new GI scheme would offer greater certainty for the future of the cheese, if achieved.