Date: 1 June 2019
The past year has been ripe with decisions concerning cheese!
For example, in C-310/17 Levola Hengelo BV v Smilde Foods BV EU:C:2018:899, the CJEU confirmed that the taste of a spreadable cheese cannot be protected by copyright law.
In summary, Levola (makers of a cheese called Heksenkass) brought a case before the Dutch Courts, alleging that a rival cheese called Witte Wievenkass which was produced by Smilde Foods tasted the same as Heksenkass and, therefore, infringed its copyright in the taste of Heksenkass. The Dutch Court of Appeal referred the matter to the CJEU. In the Advocate General’s opinion, the taste of a food product is subjective and depends on the taster and their environment, meaning that taste is legally uncertain in scope. Unsurprisingly, the CJEU agreed with the Advocate General, and held that the taste of a food product cannot be classified as a “work” that qualifies for copyright protection.
Turning to cheesy trade mark decisions, the Republic of Cyprus (“Cyprus”) has not had much luck contesting EUTM applications on the basis of its earlier UK certification word mark for “HALLOUMI” registered for “Cheese made from sheep’s and/or goat’s milk; cheese made from blends of cow’s milk; all included in Class 29”.
In October 2012, the Pancyprian Organisation of Cattle Farmers (P.O.C.F) filed a EUTM application for the logo (shown below) with
the words “Cowboys Halloumi” encircling a cowboy hat:
In the same year, Papouis Dairies Ltd filed an application for the EU figurative trade mark shown below:
In essence, the General Court agreed with the Board of Appeal that the UK public perceived the word “halloumi” as a description of the characteristics or even the origin of the goods, rather than an indication of its certified quality or an indication of quality (see Cases T-847/16 and T-825/16).
Accordingly, the Court found that the earlier certification mark for the word ‘halloumi’ was descriptive of the characteristics and origin of the product which it covered, and so possessed only a weak inherent distinctive character.
There was no evidence of the existence of any enhanced distinctive character and, therefore, the Court concluded that, in view of the weak distinctive character of the earlier mark and its descriptive meaning, the identical nature of the goods in question and the similarity of the conflicting signs due to the common presence of the descriptive term ‘halloumi’ was not sufficient to create a likelihood of confusion. It followed that the Board had been correct to find that there was no likelihood of confusion and Cyprus’s appeal was dismissed.
A few months later, the rubbery cheese was dealt another blow by the General Court in Case T-384/17 Republic of Cyprus v EUIPO, in which the Republic of Cyprus again failed to successfully contest a EUTM on the basis of its certification mark for “HALLOUMI”. This time, the EUTM application in question was for the figurative mark shown below, which covered a range of goods and services in Classes 29, 30 and 43, including cheese and related products.
Unlike standard trade marks, certification marks do not distinguish commercial origin, but rather a class of goods and the characteristics of those goods.
The court confirmed that “unlike individual trade marks, the distinguishing function of certification marks should be understood as enabling the goods and services of an undertaking, which belong to a certain class and comply with certification rules, to be distinguished from the goods and services of other undertakings, which are not certified”.
As regards the assessment of the visual, conceptual and aural similarity of the signs at issue, the court agreed with the Board of Appeal’s finding that the term “bbqloumi” would attract the public’s attention, and that the public would also focus on the plate of food in the foreground of the image, therefore both those elements were co-dominant.
The UK registration for the HALLOUMI certification mark, owned by the Permanent Secretary of the Ministry of Energy, Commerce and Tourism of the Republic of Cyprus (“the Ministry”), was cancelled following the filing of an application for invalidity by John & Pascalis (a London-based importer and distributor of food products) because the Ministry had failed to file its notice of defence and counterstatement within the specified two month deadline.
Having failed to file its notice of defence, the UKIPO wrote to the Ministry to let them know that they had 14 days to either request an appeal or provide written submissions as to why the Registrar should exercise his power of discretion to treat the application as defended. The Ministry claimed that they had not received the letter until after the additional 14-day deadline had passed but in fact they had received the letter inviting them to file written submissions on the date that they had received the notice of cancellation.
In an attempt to rectify this unfortunate series of events, the Ministry’s solicitors requested a retrospective extension of the second extension (i.e. the 14-day period) pursuant to Rule 77 of the Trade Mark Rules, despite having failed to file its defence. However, the Registrar said no, sorry, time’s up: “the fact that a decision has been issued in this case declaring the mark to be invalid means the Registry is now functus officio”.
The Ministry sought to appeal the Registrar’s decision. The High Court rejected the appeal and also refused the Ministry’s application to adduce further evidence. Although the High Court was not swayed by John & Pascalis’ argument that the 14-day period was inextensible because it was part and parcel of the rule 41(6) process and the time limit in rule 41(6) was inextensible, the Ministry’s problem was that, by that point, the Registry had already made its cancellation decision.
What was very unusual in this case was that the Registry exercised its right to appear in the appeal because it raised a very important issue concerning the Registrar’s powers under the Trade Mark Act and the Rules. As the Registrar pointed out in its submissions, the ability to treat the Registrar’s decisions as final and to reject attempts to re-open them in one way or another by administrative action is hugely important to the practical running of the IPO. Allowing respondents to such applications to contest them after adverse decisions had been issued, simply because they didn’t get round to it at the time would create substantial additional burden on the IPO. Mr Justice Arnold fully accepted this reasoning, and he was quite scathing about the Ministry’s evidence because it simply demonstrated that it had been the author of its own misfortunes: “the Ministry’s internal procedures were so disorganised that the UKIPO’s letter was passed from official to official […] but no action was taken.” Given that the evidence showed that the problem had been caused by the Ministry’s own internal inefficiencies, it was hardly surprising that they failed to establish any extenuating circumstances to allow any over-turning of the decision or extension of the deadlines. The cheesy message to take away from this one is make sure that you read your post, docket your deadlines and keep your clients up to speed.
Cheese of a different variety featured in Case R 2333/2017-1. In June 2015, Mr Andrew Hines successfully registered the word CHEESE as a EUTM for “grains and agricultural, horticultural and forestry products not included in other classes; seeds” in Class 31. The reader might think that this trade mark suggests a type of edible cheese but as the Board of Appeal explained, the term “CHEESE” is known to those active in the marijuana industry as the name of a variety of marijuana seed. The things you learn from trade mark decisions! The question of the identity of the relevant consumers – those in the marijuana industry or the public at large - was crucial during the cancellation proceedings.
It all started in 2016 when two Spanish companies from the marijuana industry (Sweet Seeds and Pot Sistemak) opposed the CHEESE mark and filed a request for declaration of invalidity claiming, amongst other things, that the EUTM was descriptive by nature, devoid of distinctive character and exclusively used language customary to a specific trade, pursuant to Article 7(1)(b), (c) and (d) of the EUTMR. The applicants argued that the EUTM consisted of a word which referred to a kind of cannabis seed, and the term “CHEESE” would be known by manufacturers, retailers and consumers active in the relevant industry as the name of a variety of marijuana seed.
Article 7(1)(c) EUTMR pursues an aim which is in the public interest, namely that descriptive signs should not be monopolised by a single undertaking (C-108/97 & C-109/97, Chiemsee, EU:C:1999:230, § 25).
In addition, it is in the public interest that names of plants are not registered as a trade mark, as provided by Article 20(1) of the International Convention for the Protection of New Varieties of Plants (‘UPOV Convention’). Therefore, the Board had to first assess whether the term CHEESE designated a plant denomination which was associated with the category of goods concerned when the EUTM application was filed, or whether it was reasonable to assume that such an association could be established in the future. The Board said that “In view of the function of Article 7(1)(c) EUTMR, the examination must be assessed in view of the relevant public of both in trade, including competitors, and consumers, as those acquiring the products (R 1743/2007-1, Vesuvia), including a part of the public knowing specialised terminology (T-226/07 Pranahaus)”.
Since the argument was that “cheese” designated a specific hybrid, rather than a registered variety, it was conceivable that such designation had become usual only in certain territories. The evidence hinted at least to the UK, the Netherlands and Spain, but neither party adduced evidence that the hybrid in question was known under different names in different territories within the EU. It was also highly probable that (on the filing date, at least) the designation could be used to give the name to the hybrid in other territories. Moreover, the Board said that “cheese is a standard word of the English language, largely understood both in its meaning as a dairy product and as an exclamation used to encourage people to smile just before a photo is taken of them throughout the entire Union. For this reason, it is likely that the name of a hybrid called ‘cheese’ will be used in the whole of the EU.”
Based on the submitted evidence, “CHEESE” was perceived as a descriptive term for a particular strain or plant name. According to the website amsterdammarijuanaseeds.com/cheese-marijuana-seeds:
“Cheese weed is known for its sharp, sour aroma: that’s where the name comes from. This marijuana is great for chilling with friends and it’s perfect for medical use as well. A cheese strain grows into the weirdest and funniest cannabis available, guaranteed to make you laugh. Smoking cheese weed gives a strong body high and a long lasting happy giggle. Smile and say cheese”.
The Board said it was obvious that the specific group of cannabis consumers would understand the word CHEESE as ‘One of the most popular indoor growing strains around. Cheese cannabis seeds ensure a happy harvest’. As a result, the relevant consumer would not perceive it as unusual but rather as a meaningful expression: a particular variety of marijuana seeds. It followed that the relevant marijuana-smoking public would immediately and without further thought make a connection between the sign in question and the characteristics of the goods in question, all of which rendered the sign descriptive (T-234/06, Cannabis, EU:T:2009:448). This meant that the relevant consumer, without making any mental effort or being required to stop and think, would immediately perceive said sign as being obviously descriptive in connection with the kind of goods concerned and the purpose thereof (R 1881/2015-1, KB KRITIKAL BILBO).
Accordingly, the Board upheld the Cancellation Division’s decision, commenting that it was “a legally sound conclusion within the scope of the parties’ submissions and evidence”. In addition, the Cancellation Division’s decision was in line with the previous examiner’s decision rejecting the identical trade mark in 2012. Since Article 7(1) EUTMR states that once it is clear that one of the absolute grounds for refusal applies, it is no longer necessary to consider any other, the applicant’s arguments also alleging a breach of Article 7(1)(b) and (d) EUTMR were not considered as the EUTM was already in breach of the law. The Board added that the word ‘cheese’ described the possible smell of plants in a more general context, and remarked that “the odour of a plant may be a decisive characteristic of the product, be it in a positive or in a negative way. This in itself justifies the refusal of the trade mark”. In summary, the EUTM was found to be invalid as the word CHEESE (to the relevant industry) “is not seen as the indication of origin but as the name of the specific product”.
The growing movement to legalise cannabis worldwide has sparked commercial interest in IP from companies active in the marijuana industry, and examples from the EU case law indicate that the most common reasons for refusal of marks for cannabis-related products are that the marks are descriptive and devoid of distinctive character (e.g. “KNOW YOUR CANNABIS” and “MEDICAL MARIJUANA) or contrary to Article 7(1)(f) of the EUTMR, which prohibits the registration of “trade marks which are contrary to public policy or to accepted principles of morality” (e.g “SPECTRUM CANNABIS” and “VAPZ WEED STIX”). However, in this particular case, the success of the application for cancellation depended on what was deemed to be the “relevant industry”. The concept of relevance was also critical in Case R 495/2005-G, in which the mark SCREW YOU was considered in line with Article 7(1)(f) EUTMR, and the definition of the relevant public differed according to the goods applied for. The goods listed in the application under Classes 9, 25, 28 and 33 were ordinary items marketed in outlets used by the general public, and the use of the mark in relation to such goods was deemed by the Board to be contrary to public policy/morality as it would inevitably cause a significant section of that public to be upset and affronted. The Board therefore upheld the examiner’s objection in relation to those goods.