Court of Justice of the European Communities (including Court of First Instance Decisions)

JUDGMENT OF THE GENERAL COURT (Second Chamber)

23 November 2018 (*)

(EU trade mark — Opposition proceedings — Application for EU figurative mark fino Cyprus Halloumi Cheese — Earlier EU collective word mark HALLOUMI — Relative ground for refusal — Similarity of the signs — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))

In Case T‑416/17,

Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi, established in Nicosia (Cyprus), represented by S. Malynicz QC and V. Marsland, Solicitor,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented initially by M. Rajh and D. Walicka, and subsequently by D. Gája and D. Walicka, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, and intervener before the General Court, being

Papouis Dairies Ltd, established in Nicosia (Cyprus), represented by N. Korogiannakis, lawyer,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 20 April 2017 (Case R 2759/2014-4) concerning opposition proceedings between the Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi and Papouis Dairies,

THE GENERAL COURT (Second Chamber),

composed of M. Prek, President, F. Schalin (Rapporteur) and J. Costeira, Judges,

Registrar: X. Lopez Bancalari, Administrator,

having regard to the application lodged at the Court Registry on 3 July 2017,

having regard to the response of EUIPO lodged at the Court Registry on 15 September 2017,

having regard to the response of the intervener lodged at the Court Registry on 16 October 2017,

having regard to the decision of 5 December 2017 joining Cases T‑416/17 and T‑702/17 for the purposes of the oral part of the procedure,

further to the hearing on 10 July 2018,

gives the following

Judgment

 Background to the dispute

1        On 12 September 2012, the intervener, Papouis Dairies Ltd, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2        The mark for which registration was sought is the following figurative sign in colour:

3        The goods and services for which registration was sought, after the restriction applied during the proceedings before EUIPO, fall within Class 29 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and consist of the following: ‘Cheese made out of cow’s milk and/or sheep’s milk and/or goat’s milk (from any milk proportion and combination), rennet’.

4        The trade mark application was published in European Union Trade Marks Bulletin No 149/2014 of 22 November 2012.

5        On 22 February 2013, the applicant, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi, filed, under Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001), a notice of opposition to registration of the trade mark applied for in respect of the goods and services referred to in paragraph 3 above.

6        The opposition was based on the earlier EU collective word mark HALLOUMI, registered on 14 July 2000 under number 1082965, designating goods in Class 29 and corresponding to the following description: ‘Cheeses’.

7        The grounds put forward in support of the opposition were those set out in Article 8(1)(b) and (5) of Regulation No 207/2009 (now Article 8(1)(b) and (5) of Regulation 2017/1001).

8        On 9 September 2014, the Opposition Division rejected the opposition and ordered the applicant to pay the costs.

9        On 28 October 2014, the applicant filed an appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.

10      By decision of 20 April 2017 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal and ordered the applicant to pay the costs of the opposition and appeal proceedings.

11      First of all, the Board of Appeal recalled that, in accordance with the case-law, for the marks at issue there is an absolute threshold of similarity below which, since those marks are dissimilar, it is possible to eliminate the existence of a likelihood of confusion without regard to other factors.

12      Next, the Board of Appeal carried out an analysis of the mark applied for, after stating that the relevant public was made up of average end consumers, given that cheese was a relatively common consumer product. It noted that the word element ‘fino’ was dominant, because it would attract most attention from the reader. The set of words ‘cyprus halloumi cheese’ in the mark applied for occupies only a secondary position and serves to explain the nature of the goods designated, in particular by the use of the words ‘cyprus’ and ‘cheese’, and that was so whether or not the word ‘halloumi’ was perceived as being descriptive. The Board of Appeal also found that the word ‘fino’, notwithstanding its possible similarity with the English word ‘fine’, was distinctive and that, although it could be an Italian or Spanish word, average consumers in the United Kingdom did not, in any event, speak those languages.

13      Finally, the Board of Appeal made a comparison of the conflicting signs. Firstly, it found that the signs at issue were visually different in so far as they coincide only in the word element ‘halloumi’, located in third position among the verbal elements of the contested sign and as the figurative presentation in that sign, although not truly distinctive, reinforces the differences from the earlier sign.

14      Secondly, the Board of Appeal concluded that the signs at issue were also phonetically different. It observed that it was unlikely that, in the mark applied for, the word elements other than ‘fino’ are pronounced, whereas, in any event, although the four words constituting those word elements must all be pronounced, namely ‘fino cyprus halloumi cheese’, their pronunciation differs from that of the word ‘halloumi’, since that is a longer expression including three words not found in the earlier mark.

15      Thirdly, the Board of Appeal also concluded that there was no conceptual similarity between the signs at issue. The mere presence of the word ‘halloumi’ in the sign applied for is not such as to give rise to such similarity, notwithstanding the possible meaning of the other words comprising the word element of the sign applied for. The Board of Appeal emphasises the contradiction in the applicant’s assertion that the word ‘halloumi’ is neither used nor perceived generically as designating a type of cheese, whereas the General Court held the opposite in the judgment of 7 October 2015, Cyprus v OHIM (XAΛΛOYMI and HALLOUMI), T‑292/14 and T‑293/14, EU:T:2015:752). The EU certification marks make it possible, by virtue of Article 66(1) of Regulation No 207/2009 (now Article 74(1) of Regulation 2017/1001) to distinguish the goods and services of one association of producers or traders from those of other undertakings and, with the exception of the possibility provided for in Article 66(2) of Regulation No 207/2009 (now Article 74(2) of Regulation 2017/1001) that such marks designate the geographical provenance of goods or services, they should be treated in all respects in the same way as an individual mark by virtue of Article 66(3) of Regulation No 207/2009 (now Article 74(2) of Regulation 2017/1001) and, in particular, should have inherent distinctive character.

16      In conclusion, the signs at issue should be regarded as not being similar, even to a certain degree as the Opposition Division found, since it was not appropriate to take account of a single individual element of the sign applied for to compare it to the earlier sign. In the absence of similarity between the signs at issue, the conditions required under Article 8(1)(b) of Regulation No 207/2009 are therefore not satisfied, such that the opposition based on that provision is unfounded.

17      The Board of Appeal also found that the opposition based on Article 8(5) of Regulation No 207/2009 must be rejected, since the condition that the marks at issue be identical or similar was not satisfied.

 Forms of order sought

18      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO and the intervener to pay the costs.

19      EUIPO and the intervener contend that the Court should:

–        dismiss the action in its entirety;

–        order the applicant to pay the costs.

 Law

 The single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009

20      In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. That plea consists of five parts. Firstly, the applicant complains that the Board of Appeal assessed the earlier trade mark from the point of view of the United Kingdom consumer, as if it were a United Kingdom national mark, whereas it should have taken account of the consumers of any Member State in respect of which there could be a likelihood of confusion. Secondly, the Board of Appeal wrongly assessed the results of the visual, conceptual and phonetic comparisons of the earlier mark from the perspective of the average consumer, including the perspective of the relevant consumers in Italy, Spain or the United Kingdom. Thirdly, it submits that the Board of Appeal misconstrued Articles 66 to 68 of Regulation No 207/2009 (now Articles 74 to 76 of Regulation 2017/1001) in so far as collective marks do not, by their nature, serve to distinguish a single commercial origin, but can, in any event, indicate geographical origin. Fourthly, the Board of Appeal wrongly considered that the earlier mark was generic, thus depriving it of any distinctive character. Fifthly, the Board of Appeal failed correctly to assess the likelihood of confusion.

21      EUIPO and the intervener seek an order that the applicant’s single plea be dismissed.

 The first part, alleging an incorrect assessment of the earlier mark as a United Kingdom mark and not as an EU mark

–       Arguments of the parties

22      According to the applicant, the Board of Appeal incorrectly considered the earlier mark to be a United Kingdom trade mark, as is apparent from paragraphs 2 and 19 of the contested decision, in particular when it examined the meaning of the word ‘fino’ from the point of view of United Kingdom consumers. However, the assessment of the earlier mark should have been made from the point of view of consumers in any Member State, in particular Spanish and Italian consumers in respect of whom the Board of Appeal took the view that the word ‘fino’ was entirely descriptive. That error led it to consider, incorrectly, that the word ‘fino’ was the sole or dominant element with regard to which the comparison of the marks at issue should be carried out, the other elements being insignificant.

23      EUIPO submits that the Board of Appeal did not disregard the fact that the earlier mark is an EU collective mark, particularly in the light of the explanations concerning the nature of such a mark which are set out in paragraph 24 of the contested decision. While it is true that, in paragraph 19 of the contested decision, there is a reference to the English-speaking public in the context of the assessment of the distinctive character of the word ‘fino’, the arguments following in paragraph 20 of that decision relating to the visual comparison are not restricted to the point of view of the United Kingdom public. The Board of Appeal also merely stated that the word ‘fino’ appeared in Spanish and Italian language dictionaries.

24      Similarly, as regards the phonetic or conceptual comparison, the conclusion contained in the contested decision as to the lack of similarity between the signs at issue applies to the entire territory of the European Union. Any non-explicit error in the contested decision should be regarded as irrelevant to the legality of the contested decision, so that the first part should be rejected.

25      The intervener, for its part, contends, firstly, that the reference to a United Kingdom mark in paragraph 2 of the contested decision is a clerical error and, secondly, that the analysis of the mark applied for in paragraph 19 of the contested decision simply takes account of the fact that the mark applied for contains word elements in English, so that the first part of the plea should be rejected.

–       Findings of the Court

26      It is apparent in essence from the first part that the applicant complains that the Board of Appeal, on the one hand, has incorrectly expressly described the earlier mark as a United Kingdom national trade mark and, on the other, has carried out the examination of the perception of that mark with regard to the United Kingdom public.

27      While it is true that, in the table in paragraph 2 of the contested decision, the Board of Appeal described the earlier mark as a United Kingdom national trade mark, that is obviously an error of fact with no effect on the legality of that decision. Indeed, from the first paragraph of the contested decision, it is recalled that the opposition is based on an EU collective mark, the number and date of registration of which are specified and, in paragraph 24 of that decision, the Board of Appeal recalled the substantive provisions governing EU collective marks, as derived in particular from Article 66 of Regulation No 207/2009. The error alleged, moreover, is not capable of altering the meaning of the contested decision nor the understanding by the applicant of that decision (see, by analogy, judgment of 21 January 2016, Spokey v OHIM — Leder Jaeger (SPOKeY), T‑846/14, not published, EU:T:2016:24, paragraph 21).

28      Moreover, as regards the definition of the relevant public with regard to whom the assessment of the perception of the contested mark must be made, it must be recalled that, in accordance with the case-law, the likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, between two conflicting marks, should not be assessed on the basis of a comparison in the abstract of those signs and the goods or services which they designate, but the assessment of that risk must, instead, be based on the perception that the relevant public will have of those signs, goods and services (judgment of 24 May 2011, ancotel v OHIM — Acotel (ancotel.), T‑408/09, not published, EU:T:2011:241, paragraph 29).

29      Furthermore, in accordance with the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).

30      In the present case, the Board of Appeal found, in paragraph 14 of the contested decision, that the relevant public consisted of the average end consumer, given that cheese was a relatively common consumer product. Furthermore, in the analysis set out in its decision of 15 January 2016, the Opposition Division found that, in the light of the category of the goods at issue and their low price, the level of attention of that public ranged from low to average. That decision, together with its statement of reasons, forms part of the context in which the contested decision was adopted, so that that context is known to the applicant and enables the Court fully to carry out its judicial review as to whether the assessment of the likelihood of confusion was well founded (see, to that effect, judgment of 21 November 2007, Wesergold Getränkeindustrie v OHIM — Lidl Stiftung (VITAL FIT), T‑111/06, not published, EU:T:2007:352, paragraph 64). The marks being essentially registered for identical goods, namely ‘cheese’ that falls under the category of consumer products, it may indeed be presumed that they are aimed at the average consumer, who is deemed to be reasonably well informed and reasonably observant and circumspect (see, to that effect, judgment of 25 October 2006, Castell del Remei v OHIM — Bodegas Roda (ODA), T‑13/05, not published, EU:T:2006:335, paragraph 46).

31      Contrary to the applicant’s submissions, the Board of Appeal did not seek, in paragraph 19 of the contested decision, to limit its analysis to the public of the United Kingdom only, but has merely referred to the perception of the term ‘fino’ by that public on account of its resemblance to the English word ‘fine’, and its meaning in Spanish or Italian, solely in assessing the distinctiveness of that term as it appears in the trade mark applied for.

32      It thus appears that the Board of Appeal took into account the relevant public of the goods concerned in the EU and that its conclusions, both as regards the definition of that public, comprising the general public of the EU, and the level of attention of that public towards the products concerned, since they appear well founded in the light of the evidence in the file, must be upheld. Accordingly, the first plea must be rejected.

 The second part, alleging an incorrect assessment of the similarity of the signs

–       Arguments of the parties

33      The applicant submits that, in holding that there is a lack of similarity between the signs at issue, the Board of Appeal must have carried out a comparison on the basis of a dominant element of the mark applied for, namely the word ‘fino’ so that it regarded all the other elements as insignificant, particularly the term ‘halloumi’ which was excluded from the comparison on the various levels. However, that conclusion is absurd from the point of view of the average consumer of the goods covered by the earlier mark, in particular to the Italian or Spanish consumer for whom the word ‘fino’ is wholly descriptive, preventing it from having dominant character, and even to the UK consumer, who is used to regarding that word, since it is close to the English word ‘fine’, as laudatory, and which, moreover, includes the English words ‘Cyprus’ and ‘cheese’.

34      Visually, the Board of Appeal failed to take into account the prominence and the distinctive character of the word ‘halloumi’, giving excessive distinctiveness to the word ‘fino’ which, moreover, it must be noted, has a meaning in English, since it denotes a type of sherry known to the average consumer in the United Kingdom.

35      On the phonetic level, the Board of Appeal, taking as its basis the difference in the number of syllables of which the signs at issue are composed, greatly distorted the facts by holding that there was no similarity between those signs, whereas they had in common the element ‘halloumi’, consisting of three syllables.

36      On the conceptual level, the Board of Appeal failed to take into account the meaning of the earlier mark in the eyes of United Kingdom consumers, and their understanding of the contested mark. Since an EU collective mark can convey geographical considerations, consumers would regard the degree of conceptual similarity as being high.

37      EUIPO responds that it does not share the applicant’s view that the finding of a lack of similarity of the signs at issue as set out in the contested decision could arise only from a comparison based on a dominant element in the mark applied for, with the result that all the other elements were regarded as insignificant. On the contrary, the comparison was made by taking account of the overall impression produced by the signs at issue, and the presence of the word ‘halloumi’ in each of the marks, in accordance with the case-law of the Court. However, some features of the mark applied for, in particular the dominant element ‘fino’, the figurative stylisation, the inclusion of the word forming the earlier mark in an expression with a clear descriptive meaning, precluded the signs at issue, looked at in their entirety, being found to be similar.

38      EUIPO adds that an element which is descriptive in certain circumstances, which could be the case here of the word ‘fino’ with regard to the Italian or Spanish consumer, could nevertheless be the dominant element of a mark and could have the most distinctive character among the other elements. As regards the average consumer in the United Kingdom, EUIPO considers that it is unlikely that that consumer would give the word ‘fino’ the meaning of the English word ‘fine’. Moreover, with regard to the fact that ‘fino’ is also an English word designating a type of sherry, that word would be perceived as meaningless as regards the goods covered by the mark applied for and, in any event, the concept of a type of sherry is too far removed from the goods which the mark applied for covers for the view to be taken that it has only a limited distinctive character. The Board of Appeal was therefore correct to conclude that the word ‘fino’ was the dominant element of the mark applied for and that, with regard to the United Kingdom public, it was the wholly distinctive element of that mark.

39      With regard to the phonetic comparison, the Board of Appeal correctly excluded the existence of a similarity between the signs at issue, since they contain sufficient characteristics which rule out the public perceiving them as similar, in particular the fact that the three shared syllables were preceded in the mark applied for by four syllables which have no counterpart in the earlier mark. Moreover, it is likely that the series of three words ‘cyprus halloumi cheese’, which at most explains the nature of the goods in question, is not pronounced in the mark applied for, since it is preceded by the word ‘fino’, to which the public could confine itself in order to shorten the pronunciation of that mark.

40      With regard to the conceptual comparison, EUIPO states that it supports the Board of Appeal’s reasoning that, although the word ‘halloumi’ designates a type of Cypriot cheese, no argument can be drawn from the presence of that term in a mark in the context of application of Article 8(1)(b) of Regulation No 207/2009, which is consistent with the principle of a comparison of the signs at issue based on the overall impression produced by them, taking account, in particular, of their distinctive and dominant components.

41      The intervener states that it supports the Board of Appeal’s analysis which regards the element ‘fino’ of the mark applied for as distinctive and dominant, the design contained in that mark contributing to the consumer perceiving the sign as a whole as distinguishing the commercial origin of the goods in question. However, the series of words ‘cyprus halloumi cheese’ merely make it possible to understand to what the products referred. The term ‘fino’ does not have a descriptive meaning for consumers in the EU and it allows the mark at issue to perform its function of designating the commercial origin. However, in accordance with the case-law of the Court, the term ‘halloumi’ should be recognised as having a descriptive meaning.

42      The marks at issue are totally different due to the presence of the word ‘fino’ in the mark applied for, as its dominant element, accompanied by a drawing in the form of a ribbon, which does not appear in the earlier mark. In addition, the word ‘halloumi’, including as an EU collective mark, does not have pronounced distinctive character and does not make it possible to distinguish authorised users from those which are not.

43      According to the intervener, the Board of Appeal properly carried out a separate analysis of the signs at issue, before reaching the conclusion that there was no visual, aural and conceptual similarity. The presence of the word ‘halloumi’ in the mark applied for does not affect its visual appearance. On a phonetic level, the difference stems from the different number of syllables in each of the signs at issue. Finally, at the conceptual level, apart from the fact that the applicant’s arguments are not very clear, the applicant does not allege that the contested mark includes geographical considerations, nor, if such considerations were proven, how they would create a high degree of conceptual similarity.

–       Findings of the Court

44      The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, account being taken, in particular, of their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

(1)    The distinctive and dominant elements

45      For the purposes of assessing the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods for which the mark has been registered (judgments of 13 June 2006, Inex v OHIM — Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35, and of 13 December 2007, Cabrera Sánchez v OHIM — Industrias Cárnicas Valle (el charcutero artesano), T‑242/06, not published, EU:T:2007:391, paragraph 51).

46      With regard to the assessment of the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the complex mark (judgments of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35, and of 8 February 2007, Quelle v OHIM — NARS Cosmetics (NARS), T‑88/05, not published, EU:T:2007:45, paragraph 58).

47      The assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited).

48      It is only if all the other components of the mark are insignificant that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components of the mark are insignificant in the overall impression created by that mark. Moreover, the fact that an element is not insignificant does not mean that it is dominant, just as the fact that an element is not dominant in no way means that it is insignificant (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraphs 43 and 44).

49      It should also be noted that where some elements of a trade mark are descriptive of the goods and services in respect of which that mark is protected or of the goods and services covered by the application for registration, those elements are recognised as having only a weak, or even very weak, distinctive character (see, to that effect, judgments of 12 September 2007, Koipe v OHIM — Aceites del Sur (La Española), T‑363/04, EU:T:2007:264, paragraph 92, and of 13 December 2007, el charcutero artesano, T‑242/06, not published, EU:T:2007:391, paragraph 52 and the case-law cited). Most often, it will be possible to recognise those elements as having distinctive character only because of their combination with the other elements of the mark. Owing to their weak, or even very weak, distinctive character, descriptive elements of a trade mark are not generally regarded by the public as being dominant in the overall impression conveyed by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on consumers and to be remembered by them (see judgment of 13 December 2007, el charcutero artesano, T‑242/06, not published, EU:T:2007:391, paragraph 53 and the case-law cited). That does not mean, however, that the descriptive elements of a mark are necessarily insignificant in the overall impression conveyed by that mark. In that regard, it is appropriate, in particular, to ascertain whether other elements of the mark are likely to dominate, alone, the image of the mark which the relevant public will remember (judgment of 20 September 2016, Excalibur City v EUIPO — Ferrero (MERLIN’S KINDERWELT), T‑566/15, not published, EU:T:2016:517, paragraph 28).

50      In the present case, the Board of Appeal found, in paragraphs 18 to 20 of the contested decision, that, in the mark applied for, the word element ‘fino’ was dominant, because it would draw most of the reader’s attention. The series of words ‘cyprus halloumi cheese’, written on a ribbon, has only a secondary position and it serves to explain the nature of the goods designated, in particular by the use of the words ‘cyprus’ and ‘cheese’, and that is the case whether or not the word ‘halloumi’ was perceived as being descriptive. The Board of Appeal also found that the word ‘fino’, notwithstanding its possible similarity with the English word ‘fine’, was distinctive and that, although it could be an Italian or Spanish word, average consumers in the United Kingdom did not, in any event, speak those languages. The marks at issue coincide by only one of the four word elements comprising the mark applied for and the figurative presentation of the mark applied for strengthens its difference from the earlier mark.

51      In the first place, with regard to the determination of the distinctive element(s) making up the mark applied for, it must be noted that, where a mark consists of word and figurative elements, the word element of the mark is, in principle, more distinctive than the figurative element, because the average consumer will more readily refer to the goods in question by citing their name than by describing the figurative element (see judgment of 9 September 2008, Honda Motor Europe v OHIM — Seat (MAGIC SEAT), T‑363/06, EU:T:2008:319, paragraph 30 and the case-law cited).

52      In the present case, it appears that the figurative elements comprising the mark applied for are not very original, whether the oval shape in the middle of which the word ‘fino’ is placed or the red ribbon of the lower part of the mark applied for which bears the series of three words ‘cyprus halloumi cheese’, and that their main contribution is to highlight the word elements which make up the mark applied for. Among those word elements, although the Board of Appeal found that the word ‘fino’ was distinctive and that it was capable of identifying the goods covered by that mark, it is also true that that word bears a similarity to the English word ‘fine’, which means ‘perfect’, and that it is identical to the Italian and Spanish words ‘fino’, which mean in particular ‘purpose’ and which may be used to characterise food to highlight its quality. In addition, it cannot be ruled out, taking into account the Latin origin of the word, that it is also understood by consumers of a substantial part of Member States and that its laudatory nature mitigates its distinctiveness with regard to the goods in question. For the many consumers in the EU who understand the meaning, the degree of distinctiveness of the word ‘fino’ can only be low, or even very low.

53      The series of the three other words making up the mark applied for, namely ‘cyprus halloumi cheese’, having regard to the clear link which it has with the goods designated by the mark applied for, is also very weakly distinctive. However, it cannot be ruled out that each of the words in question is considered individually by a part of the relevant public, in particular by the EU public which does not speak English and for whom the words ‘cyprus’ and ‘cheese’ have no meaning.

54      It thus appears that, individually, all the elements comprising the mark applied for, whether a word or a figurative element, are weakly, or even very weakly, distinctive. In those circumstances, although the mark applied for, taken as a whole, can draw its distinctive character from the highlighting of the word elements by the figurative elements, or even by the contrast between the words ‘cyprus’ and ‘cheese’, taken from the English language, and the words ‘fino’ and ‘halloumi’, which do not come directly from English, that distinctiveness appears to be weak or even very weak. In that regard, it must be recalled that, in any event and by analogy with the solution adopted in the judgment of 24 May 2012, Formula One Licensing v OHIM (C‑196/11 P, EU:C:2012:314, paragraphs 43 to 47), for validly registered national trade marks, a certain degree of distinctiveness must be acknowledged in an EU trade mark in respect of which registration has not been met with an absolute ground for refusal.

55      In the second place, as regards the determination of the dominant component(s) forming the mark applied for, it appears that the word ‘fino’ is written in the upper part of the mark applied for, in large, stylised, lower case characters in dark blue, surrounded by a ring of white and red which reinforces the visual effect. In those circumstances, the Board of Appeal was able to find, without committing an error, that it was the dominant element in the mark applied for.

56      By contrast, although, as the Board of Appeal pointed out, it is also true that the words ‘cyprus halloumi cheese’ occupy a secondary position in the mark applied for, it cannot, however, be ruled out that, separately or together, they must be taken into account in the comparison of the signs in the overall impression created by them.

57      In order to explain the approach of the Board of Appeal in taking the view that the common presence of the word ‘halloumi’ in the marks at issue was not likely to give to similarity, EUIPO refers to the solution adopted in the judgments of 20 September 2016, MERLIN’S KINDERWELT (T‑566/15, not published, EU:T:2016:517); of 14 October 2009, Ferrero v OHMI — Tirol Milch (TiMi KiNDERJOGHURT) (T‑140/08, EU:T:2009:400); and of 4 March 2015, Three-N-Products v OHIM — Munindra (PRANAYUR) (T‑543/13, not published, EU:T:2015:134).

58      However, in those three judgments, the word element which is common to the earlier marks and the disputed marks, namely ‘kinder’ in the first two cases and ‘ayur’ in the third, was incorporated into a word element, namely ‘kinderwelt’, ‘kinderjoghurt’ and ‘pranayur”, which could be considered as constituting an inseparable unit (judgment of 20 September 2016, MERLIN’S KINDERWELT, T‑566/15, not published, EU:T:2016:517, paragraph 42).

59      In the present case, the configuration of the earlier mark is different, however, since the word ‘halloumi’ does indeed form part of a series of three words, but one in which it retains its autonomy and, consequently, its visibility to the public. Contrary to EUIPO’s submissions, the solution arising from the three judgments to which it refers cannot be transposed to the present case and it cannot be ruled out that, in the overall impression produced by the mark applied for, the word ‘halloumi’ is not insignificant and can be taken into consideration.

(2)    The visual similarity

60      The Board of Appeal found, in paragraph 20 of the contested decision, a lack of visual similarity, stating that, even if all the word elements of the mark applied for were given equal weight, which in any event was not the case, the marks in question still coincide by only one of the four word elements which make up the mark applied for, namely ‘halloumi’, placed in third position. The figurative presentation of that mark, although not in itself very distinctive, strengthens the differences from the earlier mark.

61      That conclusion of the Board of Appeal cannot be followed. Indeed, although the overall impression created by the mark applied for is visually dominated by the word ‘fino’ because of its central position and its size, colour and inclusion in a golden, oval background which highlights it, the word element ‘halloumi’, situated in the lower part, is also situated in a central position, written in white letters on a red background, enabling it easily to stand out from the two words with which it is associated in the series of three words ‘cyprus halloumi cheese’. The figurative elements of the mark applied for do not alter this impression, because they are not very original and do not modify the visibility of the word element ‘halloumi’.

62      In those circumstances, it must be concluded that there is a similarity between the signs at issue due to the presence of the word ‘halloumi’ in the mark applied for, but as it is the sole component of the earlier mark, that similarity must be regarded as weak.

(3)    The phonetic similarity

63      The Board of Appeal found, in paragraph 22 of the contested decision, there was no phonetic similarity, stating that the word elements other than ‘fino’ would probably not be pronounced and that, even if they were, the pronunciation of the marks at issue differ as a result in particular of their difference in length.

64      Nor can that finding of the Board of Appeal’s finding be followed. Although it is possible that, when faced with the mark applied for, the relevant public merely reads and pronounces the word ‘fino’, since, although having distinctive character which cannot be regarded as low, it constitutes the dominant element with regard to that public, it cannot be excluded that part of that public, even if a minority, reads that mark in full or pronounces the word ‘fino’ followed by the word ‘halloumi’. On that basis, the view must be taken that the fact that the earlier mark is contained within the mark applied for inevitably results in a phonetic similarity, which, moreover, in view of the difference in the number of syllables composing each of the signs, must be regarded as low.

(4)    The conceptual similarity

65      The Board of Appeal concluded in paragraph 23 of the contested decision that, if the word ‘halloumi’ in the mark applied for did not give rise to any relevant visual and phonetic similarity, it could not give rise to any relevant conceptual similarity, which is the case regardless of whether one of the other words making up that mark had a meaning. The Board of Appeal highlights the inconsistency of the applicant’s position, which is to claim that the word ‘halloumi’ is imaginative, whereas that would not enable the mark applied for to convey a concept, and it does so when, in its case-law, the Court has already established that the term ‘halloumi’ designates a type of cheese from Cyprus. No argument can therefore be drawn from the presence of the word ‘halloumi’ in the mark applied for in the presence of other word elements.

66      That analysis by the Board of Appeal does not appear to be accurate. Although it is undeniable that the earlier mark conveys the concept of a type of Cypriot cheese, in this case halloumi cheese, as the Court has already held in the judgment of 7 October 2015, XAΛΛOYMI and HALLOUMI (T‑292/14 and T‑293/14, EU:T:2015:752, paragraph 24), it cannot be excluded that, to some extent, the mark applied for conveys a similar concept. Indeed, although the series of three words ‘cyprus halloumi cheese’ is only very weakly distinctive, it is precisely because it is linked with the goods designated by the mark applied for, but that does not, however, mean that none of the words at issue, in particular the word ‘halloumi’, cannot be considered individually by a part of the relevant public. It cannot therefore be held that there is a lack of conceptual similarity. The word ‘fino’ does indeed constitute the dominant element of the mark applied for, but the concept conveyed by the earlier mark in so far as it includes the series of three words ‘cyprus halloumi cheese’, each component of which may be considered individually, must lead to a finding that there is a low degree of conceptual similarity.

67      Thus, contrary to the finding in the contested decision, it must be held that the signs at issue have a low degree of visual, phonetic and conceptual similarity.

68      The Board of Appeal was therefore incorrect to find that there was no similarity between the signs at issue, which made it unnecessary to complete the overall comparison of the signs taking into account the interdependence of all relevant factors.

69      In those circumstances, the contested decision must be annulled without it being necessary to examine the third, fourth and fifth parts.

 Costs

70      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

71      Since EUIPO has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant.

72      In accordance with Article 138(3) of the Rules of Procedure, the intervener must bear its own costs.

On those grounds,

THE GENERAL COURT (Second Chamber),

hereby:

1.      Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 20 April 2017 (Case R 2759/2014-4) concerning opposition proceedings between the Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi and Papouis Dairies Ltd;

2.      Orders EUIPO to bear its own costs and to pay those incurred by the Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi;

3.      Orders Papouis Dairies to bear its own costs.

Delivered in open court in Luxembourg on 23 November 2018.

*      Language of the case: English.

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