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

JUDGMENT OF THE GENERAL COURT (Second Chamber)

21 April 2021 (*)

(EU trade mark – Opposition proceedings – Application for the EU word mark GRILLOUMI – Earlier EU collective word mark HALLOUMI – Relative ground for refusal – Likelihood of confusion – Detriment to reputation – Article 8(1)(b) and Article 8(5) of Regulation (EC) No 207/2009 (now Article 8(1)(b) and Article 8(5) of Regulation (EU) 2017/1001))

In Case T‑555/19,

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

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,

defendant,

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

Fontana Food AB, established in Tyresö (Sweden), represented by P. Nihlmark and L. Zacharoff, lawyers,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 29 May 2019 (Case R 1355/2018-4), relating to opposition proceedings between Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi and Fontana Food,

THE GENERAL COURT (Second Chamber),

composed of V. Tomljenović, President, F. Schalin (Rapporteur) and P. Škvařilová-Pelzl, Judges,

Registrar: A. Juhász-Tóth, Administrator,

having regard to the application lodged at the Court Registry on 9 August 2019,

having regard to the response of the intervener lodged at the Court Registry on 18 October 2019,

having regard to the decision of 23 October 2019 to stay the proceedings,

having regard to the written question put to the parties by the Court and their replies to that question, lodged at the Court Registry on 25, 27 and 30 March 2020,

having regard to the response of EUIPO lodged at the Court Registry on 25 May 2020,

having regard to the change in the composition of the Chambers of the General Court,

further to the hearing on 20 October 2020,

gives the following

Judgment

 Background to the dispute

1        On 25 October 2016, the intervener, Fontana Food AB, 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        Registration as a mark was sought for the word sign GRILLOUMI.

3        The services in respect of which registration was sought are in Class 43 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 correspond to the following description: ‘Services for providing food and drink; coffee-shop services; restaurants’.

4        The trade mark application was published in European Union Trade Marks Bulletin No 207/2016 of 2 November 2016.

5        On 2 February 2017, the applicant, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the services referred to in paragraph 3 above.

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

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

8        On 15 May 2018, the Opposition Division rejected the opposition and ordered the applicant to pay the costs.

9        On 13 July 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.

10      By decision of 29 May 2019 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal and ordered the applicant to pay the costs incurred for the purposes of the opposition and appeal proceedings.

11      First, as regards the assessment of the likelihood of confusion pursuant to Article 8(1)(b) of Regulation 2017/1001, the Board of Appeal found that the goods and services covered by the marks at issue were dissimilar, with the result that the opposition was unfounded with regard to that provision. In particular, it took the view that, although the services covered by the mark applied for could arguably be considered to be similar to foodstuffs on the ground that there was a complementary connection, the existence of such a connection had not, however, been proved with regard to cheese.

12      Secondly, as regards the assessment of the risk that there would be unfair advantage taken of the distinctive character or the repute of the earlier mark or detriment to its distinctive character or repute pursuant to Article 8(5) of Regulation 2017/1001, the Board of Appeal found that the evidence submitted by the applicant was insufficient to prove that the earlier mark had enhanced distinctiveness, let alone a reputation, as a distinctive collective trade mark designating cheese, whether in Cyprus or in any other EU Member State. Furthermore, it took the view that the applicant had not demonstrated, even if only prima facie, that there was a future risk, which was not hypothetical, of unfair advantage being taken of the repute or the distinctive character of the earlier mark or of detriment to its repute or distinctive character.

 Forms of order sought

13      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO to pay the costs.

14      EUIPO and the intervener contend that the Court should:

–        dismiss the action in its entirety;

–        order the applicant to pay the costs.

 Law

15      Given the date on which the application for registration at issue was filed, namely 25 October 2016, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited). Furthermore, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the present case is governed by the procedural provisions of Regulation 2017/1001.

16      Consequently, in the present case, so far as concerns the substantive rules, the references made by the Board of Appeal in the contested decision and by the parties to the proceedings in their written pleadings to Article 8(1)(b), Article 8(5) or Article 74(2) of Regulation 2017/1001 must be understood as referring to Article 8(1)(b), Article 8(5) or Article 66(2) of Regulation No 207/2009.

17      In support of the action, the applicant relies in essence on two pleas in law, the first of which alleges infringement of Article 8(1)(b) of Regulation No 207/2009 and the second of which alleges infringement of Article 8(5) of that regulation.

18      The first plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, is divided, in essence, into three parts.

19      First, the applicant alleges that the Board of Appeal made an error of assessment in so far as it found that the services covered by the mark applied for and the cheese covered by the earlier mark were dissimilar, although there is, according to the applicant, a complementary connection between them. It submits that the Board of Appeal’s reasoning is wrong in the light of four considerations.

20      First of all, it argues that the Board of Appeal wrongly applied a criterion of mutual indispensability between the services and goods at issue in examining whether there was a complementary connection between them, whereas it would have been sufficient to state that they could be used or offered together. Next, it submits that the Board of Appeal disregarded the case-law of the Court in which it has been held, regarding foodstuffs, including milk and dairy products, that those goods are necessarily used in the serving of food and drink, with the result that there is a complementary connection between those goods and those services. In addition, it claims that the Board of Appeal misapplied the case-law resulting from the judgment of 15 February 2011, Yorma’s v OHIM – Norma Lebensmittelfilialbetrieb (YORMA’S) (T‑213/09, not published, EU:T:2011:37), in relation to the criterion of complementarity. Lastly, it argues that the Board of Appeal relied on the incorrect and unsubstantiated finding that there are no cheese restaurants. The applicant submits that the Board of Appeal therefore erred in law, because, on the basis of the incorrect finding that there was no similarity between the services and the goods at issue, it found that it was not necessary to carry out a global assessment of the likelihood of confusion. It maintains that in the judgment of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO (C‑766/18 P, EU:C:2020:170), the Court of Justice also confirmed the necessity of carrying out, in circumstances such as those in the present case, a global assessment of the likelihood of confusion, an assessment which the applicant submits should, in the light of the degree of similarity between the goods and services at issue, which is high, have led to a finding that there was a likelihood of confusion.

21      Secondly, the applicant submits that the Board of Appeal also erred in that, in assessing the distinctiveness of the earlier collective mark, it referred to the case-law of the Court relating to applications for individual EU trade marks. It argues that EU collective marks constitute a distinct category which fulfils functions that are different from those of individual marks. It claims that by simply referring to that case-law and not providing a specific statement of reasons, the Board of Appeal also failed to comply with its obligation to state reasons.

22      Thirdly, the applicant submits that the Board of Appeal, by erroneously relying on the regime relating to individual marks, found that the earlier collective mark was descriptive and described only a ‘specialty cheese from Cyprus’, thus denying it any distinctive character. It argues that in those circumstances, the Board of Appeal frustrated the application of the regime relating to collective marks as set out in Regulation No 207/2009, and in particular in Article 66(2) of that regulation, under which a collective mark may legitimately designate a geographical origin. According to the applicant, although that aspect of that provision does not apply directly to the earlier mark, because the term ‘halloumi’ is not the name of a place, that term nevertheless indicates a geographical origin, since the earlier mark relates to cheese from Cyprus which is produced by producers who are members of the applicant. It submits that the Board of Appeal’s approach ultimately amounts to rendering all collective marks ineffectual, because, although their registration is permitted, EUIPO then denies them any distinctive character and deprives them of any enforceability. In addition, the applicant claims that the Board of Appeal incorrectly analysed the evidence containing the mark HALLOUMI followed by a description of the type of goods covered by that mark. It submits that that evidence shows exactly that the term ‘halloumi’ is not descriptive, because the description with which that term is associated would have been pointless if that term was itself descriptive of the goods in question.

23      EUIPO contends in response that complementarity relating to the fact that the goods and services at issue can be used together is not in itself conclusive to establish that there is similarity. It submits that only a sufficiently pronounced complementary connection would lead consumers to think of a common commercial origin.

24      In that regard, it argues that the mere fact that foodstuffs are consumed in a restaurant is not a sufficient reason to find that the goods and services at issue are similar. It submits that, as regards in particular unprocessed foodstuffs such as ‘cheese’, the public is unlikely to think that they are produced by undertakings which specialise in restaurant services and the service of making prepared meals, or even that they come from restaurants run by cheese producers, even though there are restaurants which specialise in cheese dishes. It argues that such a situation is conceivable only with regard to goods other than cheese, goods which consumers may reasonably think come from the undertaking which distributes them, like coffee in a coffee shop, ice cream in an ice cream parlour, beer in a pub or ready-made meals in restaurants offering takeaways.

25      It maintains that, although, as the applicant submits, in the judgment of 15 February 2011, YORMA’S (T‑213/09, not published, EU:T:2011:37), the Court found that there was a similarity between a wide array of foodstuffs, including cheese, and ‘restaurant, pub and café’ services in Class 43 on the basis of the fact that those foodstuffs were ‘necessarily used’ in the provision of those services and that they ‘m[ight] be offered for sale in places in which food and drink are served’, that is, however, a far-fetched finding which does not correspond to reality. It submits that, in a situation where consumers buy in those places the service of the provision of food and drink which may include those goods, they mostly do not know the trade mark under which those goods are sold and they do not visit those establishments in order to buy goods such as raw meat, a dozen eggs or a wheel of cheese.

26      Furthermore, EUIPO argues that the abovementioned judgment does not take into consideration the question of whether the consumer perceives the services and goods concerned as having a common origin, whereas that criterion is decisive in the light of the facts of the present case. That does not, in its submission, mean that marks covering cheese do not have any protection against applications for registration of marks covering restaurant services, but the proprietor of those marks will have to rely on other grounds of opposition, cancellation or infringement, such as those arising out of the provisions of Article 8(5) of Regulation No 207/2009.

27      It contends that the Board of Appeal’s assessment relating to the lack of similarity between the goods and services at issue is therefore correct, with the result that the first part of the first plea must be rejected and that plea must be rejected in its entirety, since the other parts in support of that plea must be held to be ineffective.

28      The intervener submits first of all that, in order to find that goods and services are complementary, the condition relating to the existence of a close connection between those goods and those services must be satisfied. It maintains that the Board of Appeal correctly applied that criterion in the present case. It argues that the judgment of 10 September 2008, Boston Scientific v OHIM – Terumo (CAPIO) (T‑325/06, not published, EU:T:2008:338), to which the applicant refers, also reinforces that analysis by holding that there needs to be a close connection between complementary goods, and not only the possibility of a connection or the existence of a coincidental connection, like the simple fact that foodstuffs are necessary in the preparation of food or for services for providing food and drink. Furthermore, it submits that, even though the Court has already held that milk and dairy products, on the one hand, and the service of the provision of food and drink, on the other hand, are complementary, such an assessment is not capable of being applied to the present case in which the category of goods at issue is narrower.

29      Next, the intervener submits that, as regards the case-law of the Court, the Court has already held on several occasions that the inherent distinctive character of the mark HALLOUMI is weak on account of its descriptiveness and that a descriptive mark lacks distinctiveness, regardless of whether it is an individual or collective mark. Furthermore, it argues that, as there is no geographical place called Halloumi, the exception relating to Article 66(2) of Regulation No 207/2009 is not applicable in the present case.

30      Lastly, the intervener pleads the irrelevance of the applicant’s argument that, if the term ‘halloumi’ had been a geographical place and its registration as an EU collective mark had been accepted on the basis of the exception for geographical indications set out in Article 66(2) of Regulation No 207/2009, the reasoning adopted by the Board of Appeal would have had the consequence that that mark would be denied any enforceability in view of its weak distinctive character. It submits that the distinctiveness of any earlier mark must be assessed in any opposition and that there is no exception for collective marks with regard to that assessment. Furthermore, the intervener submits that the Board of Appeal carried out a correct assessment of the evidence which the applicant had provided and which related to the alleged distinctive character of the earlier mark. It argues that that evidence shows at most that the term ‘halloumi’ will be perceived as the designation of a type of cheese. Furthermore, it submits that the use of a descriptive term vis-à-vis consumers does not have the effect of rendering it more distinctive in their eyes.

31      Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

32      Where the earlier mark is an EU collective mark, the likelihood of confusion must be understood as being the risk that the public might believe that the goods or services covered by the earlier trade mark and those covered by the trade mark applied for all originate from members of the association which is the proprietor of the earlier trade mark or, where appropriate, from undertakings economically linked to those members or to that association (judgment of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, C‑766/18 P, EU:C:2020:170, paragraph 64).

33      Furthermore, although, in the event of opposition by the proprietor of a collective mark, the essential function of that type of mark, as set out in Article 66(1) of Regulation No 207/2009, must be taken into account in order to understand what is meant by likelihood of confusion, within the meaning of Article 8(1)(b) of that regulation, the fact remains that the case-law establishing the criteria with regard to which the existence of such a likelihood of confusion must be assessed in practice is applicable to cases concerning an earlier collective mark (judgment of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, C‑766/18 P, EU:C:2020:170, paragraph 65).

34      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 September 2016, Sun Cali v EUIPO – Abercrombie & Fitch Europe (SUN CALI), T‑512/15, EU:T:2016:527, paragraph 45 and the case-law cited).

35      It is in the light of those considerations that it must be examined whether the Board of Appeal was right in finding that there was, for the purposes of Article 8(1)(b) of Regulation No 207/2009, no likelihood of confusion on the part of the relevant public.

36      As regards the definition of the relevant public, the Board of Appeal pointed out, in paragraph 12 of the contested decision, that the goods and services covered by the marks at issue were aimed at the end consumer, who was deemed to be reasonably well informed and reasonably observant and circumspect. It therefore found that the relevant public consisted of the general public in the European Union, the level of attention of which was at best average when purchasing the goods and services at issue.

37      In that regard, it must be pointed out that the mark applied for covers commonly used services and that the earlier mark is registered in respect of everyday consumer goods, in the present case cheese, and that those services and goods are all aimed at the general public, which will, when purchasing them, display a generally average level of attention. Since they appear to be well founded in the light of the information in the case file, the Board of Appeal’s findings as regards the definition of the relevant public, which have not, moreover, been disputed by the parties, must therefore be upheld.

38      As regards the comparison of the goods and services at issue, the Board of Appeal concluded, in paragraph 20 of the contested decision, that the goods and services covered by the marks at issue were dissimilar, after stating, in paragraph 17 of that decision, that, although the services covered by the mark applied for could arguably be considered to be similar to foodstuffs, in particular when restaurants sold food to take away or to consume at the bar, that did not apply to cheese. According to the Board of Appeal, although the difference between a point of sale for foodstuffs and a self-service restaurant may be fluid, the focus, as regards the services in Class 43, is, however, still on the service nature of a restaurant and not on the sale of a foodstuff itself. It found, in that regard, that, if an establishment containing a restaurant or an area like a self-service restaurant were to sell cheese over the counter, that situation would not relate to ‘restaurant services’, but to the goods as such.

39      In paragraph 18 of the contested decision, the Board of Appeal furthermore found, in essence, that the documents which the applicant had provided in order to show that some restaurants and catering outlets served predominantly cheese-based meals or offered such meals for immediate consumption were insufficient to prove that, from the point of view of the relevant public, the services for providing food and drink and restaurant services at issue and the cheese served in those premises were, in the light of their complementarity, similar. It found, in essence, that there was no indication that consumers would perceive a common origin between the services provided by those providers and the cheese that they serve.

40      The Board of Appeal also stated, in paragraph 14 of the contested decision, that, in the case which gave rise to the judgment of 25 September 2018, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO – M. J. Dairies (BBQLOUMI) (T‑328/17, not published, EU:T:2018:594), which concerned an opposition based on the same earlier right, namely the EU collective word mark HALLOUMI, the applicant had not challenged before the Court the finding that the goods covered by that mark and services which were similar to those at issue in the present case were dissimilar.

41      In the present case, it is necessary to examine whether the Board of Appeal was right in finding that the services covered by the mark applied for and the goods covered by the earlier mark were dissimilar, with the result that the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 had to be ruled out.

42      According to settled case-law, in assessing the similarity of goods and services, all the relevant factors relating to those goods and services should be taken into account, including, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as, for example, the distribution channels of the goods and services concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).

43      Since the comparison relates, on the one hand, to the services covered by the mark applied for, which correspond to services for providing food and drink, restaurant services and coffee-shop services in Class 43, and, on the other hand, to the goods covered by the earlier mark, in the present case cheese, which falls within the broader category of the foodstuffs in Class 29, the Board of Appeal was entitled, without committing any error and as it had, moreover, been requested to do by the applicant, examine whether there was a similarity on account of their complementarity rather than on account of factors such as their nature, their intended purpose or their method of use. The goods and services at issue are not identical and it is indisputable that, in the light of the factors relating to their nature, their intended purpose or their method of use, they are not similar (see, to that effect, judgment of 18 February 2016, Harrys Pubar and Harry’s New York Bar v OHIM – Harry’s New York Bar and Harrys Pubar (HARRY’S BAR), T‑711/13 and T‑716/13, not published, EU:T:2016:82, paragraph 58 and the case-law cited).

44      In that regard, it must be borne in mind that goods and services are complementary where there is a close connection between them, in the sense that one is indispensable or important for the use of the other, with the result that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services (see, to that effect, judgment of 4 February 2013, Hartmann v OHIM – Protecsom (DIGNITUDE), T‑504/11, not published, EU:T:2013:57, paragraph 44 and the case-law cited).

45      As is apparent from the case-law of the Court, it must be stated that the goods in Class 29, inter alia, cheese, are necessarily used in the serving of food and drink, with the result that those goods and those services are complementary. First, cheese may be offered to the clientele of many restaurants, or even of coffee shops, by being incorporated as an ingredient in dishes that are intended to be sold on the premises or to be taken away. Secondly, cheese, without being processed as an ingredient, may be sold as it is to consumers, in particular in restaurants in which the activity is not confined to the preparation and serving of cooked dishes, but also consists of selling food which is intended to be consumed away from the place in which it is sold. Such goods are therefore used in and offered by means of services for providing food and drink, restaurant services or coffee-shop services. Those goods are consequently closely connected with those services (see, to that effect, judgments of 13 April 2011, Bodegas y Viñedos Puerta de Labastida v OHIM – Unión de Cosecheros de Labastida (PUERTA DE LABASTIDA), T‑345/09, not published, EU:T:2011:173, paragraph 52, and of 18 February 2016, HARRY’S BAR, T‑711/13 and T‑716/13, not published, EU:T:2016:82, paragraph 59 and the case-law cited).

46      As regards the Board of Appeal’s statement that, in the case which gave rise to the judgment of 25 September 2018, BBQLOUMI (T‑328/17, not published, EU:T:2018:594), the applicant had not challenged the finding of the same Board of Appeal that there was no similarity between, on the one hand, ‘restaurant services; fast food restaurant services; cafeterias; catering’ in Class 43 and, on the other hand, ‘cheese’ in Class 29, it must be pointed out that there was nothing to preclude, in the present case, the applicant from calling such a finding into question, in particular because it took the view that certain factors, which have already been referred to in support of the case-law resulting from the judgment of 18 February 2016, HARRY’S BAR (T‑711/13 and T‑716/13, not published, EU:T:2016:82) justified its doing so.

47      To deny the applicant that opportunity would be tantamount to holding it to be bound by the findings which the Board of Appeal made in a previous case. However, it must be borne in mind that decisions concerning applications for registration of signs as EU trade marks which the Boards of Appeal of EUIPO take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, like the registrability of a sign as an EU trade mark, the comparison between goods and services covered by competing rights must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on the basis of a previous practice of the Boards of Appeal (see, by analogy, judgment of 6 July 2011, i-content v OHIM (BETWIN), T‑258/09, EU:T:2011:329, paragraph 77 and the case-law cited).

48      Furthermore, it is apparent from settled case-law that the purpose of actions before the Court under Article 65(2) of Regulation No 207/2009 (now Article 72(2) of Regulation 2017/1001) is to review the legality of decisions of the Boards of Appeal. Pursuant to Article 76 of Regulation No 207/2009 (now Article 95 of Regulation 2017/1001), that review must be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 1 February 2005, SPAG v OHIM – Dann and Backer (HOOLIGAN), T‑57/03, EU:T:2005:29, paragraph 17 and the case-law cited).

49      In the present case, it is therefore for the Court, before which an action for annulment of the contested decision has been brought, to assess the legality of that decision by taking into consideration all the arguments which the applicant brought before the Board of Appeal. The Court must therefore examine those arguments, even if they relate to assessments which are similar to those already carried out by the Board of Appeal in a previous decision, the legality of which has been subject to review by the Court, and which, even though they were not formally challenged before the Court, were nevertheless endorsed by it as being well founded, as is the case here with regard to the assessments relating to the comparison of the goods and services at issue that were endorsed in the judgment of 25 September 2018, BBQLOUMI (T‑328/17, not published, EU:T:2018:594), and then in the judgment of 20 January 2021, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO – M. J. Dairies (BBQLOUMI) (T‑328/17 RENV, not published, EU:T:2021:16). The Court cannot be bound by an incorrect assessment of the facts by that Board of Appeal, since that assessment is part of the findings the legality of which is being disputed before it (see, by analogy, judgment of 18 December 2008, Les Éditions Albert René v OHIM, C‑16/06 P, EU:C:2008:739, paragraph 48). The same is true where, in a previous decision in another case, the Court has endorsed an incorrect assessment on the part of the Board of Appeal.

50      In the light of those considerations, it must be held, contrary to what the Board of Appeal found, that the complementary connection between cheese and services for providing food and drink, restaurant services and coffee-shop services must lead to the finding that there is a certain degree of similarity between, on the one hand, the ‘services for providing food and drink; coffee-shop services; restaurants’ in Class 43 covered by the mark applied for and, on the other hand, the ‘cheese’ in Class 29 covered by the earlier mark.

51      However, the existence of such a similarity means that the possibility that the relevant public might be led to think that the services and the goods at issue have the same commercial origin cannot, from the outset, be excluded.

52      Consequently, since the Board of Appeal erred in finding that those goods and those services were dissimilar, it erred in finding that one of the cumulative conditions for a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 to exist was not satisfied (see the case-law referred to in paragraph 34 above). Consequently, it was required to carry out an examination of the other factors that are capable of contributing towards the existence of such a likelihood of confusion, before, as the case may be, carrying out a global assessment of that likelihood of confusion.

53      In view of all of the foregoing considerations, the first part of the first plea must be held to be well founded and, consequently, without it being necessary to examine the second and third parts of the first plea or the second plea, the form of order sought by the applicant must be upheld by annulling the contested decision.

 Costs

54      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.

55      Since EUIPO has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by the applicant, in accordance with the form of order sought by the applicant.

56      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 29 May 2019 (Case R 1355/2018-4), relating to opposition proceedings between Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi and Fontana Food AB;

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

3.      Orders Fontana Food to bear its own costs.

Delivered in open court in Luxembourg on 21 April 2021.

* Language of the case: English.

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