Member Article

An article entitled “Cyprus Gets Its Halloumi Back” would leave most people scratching their heads. But a reader of Trademark Lawyer Magazine would immediately appreciate that it deals with the increasingly important issue of geographical indications and designations of origin.

The issue described in the article is almost comical. Halloumi is, of course, a type of cheese, one that is closely associated with the island of Cyprus. Halloumi is a semi-hard cheese that lends itself to both grilling and frying. Halloumi is generally made from goat’s milk or sheep’s milk, but it is sometimes made from cow’s milk (this bit is controversial). The name HALLOUMI has apparently been protected in the USA since the 1990s. The name has, however, not yet been registered in the EU (seemingly because of the controversy surrounding cow’s milk), although an application has been pending for some time.

Halloumi, it seems, is particularly popular with the Brits, with some 40% of all the halloumi produced making its way from Cyprus to the UK. For this reason, presumably the government of Cyprus decided to obtain a UK trade mark registration for the name HALLOUMI covering cheese.

But the Government of Cyprus slipped up. When a United Kingdom company applied to cancel the UK registration (presumably on the basis that it is generic), the Cypriot authorities failed to file the necessary counterstatement. This led to the registration being cancelled. The effect of this would have been very serious for the makers of halloumi, in that it would have been possible for anyone to use the name for cheese. But the Government of Cyprus has now rectified the situation by again registering the name as a certification UK trade mark. The UK Trade Marks Act defines a certification mark as follows: “a mark which is described as such when the mark is applied for and indicates that the goods or services in connection with which it is used are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of service, quality, accuracy or other characteristics”. The certification mark should also distinguish the goods or services from those goods or services which are not certified.

A government minster is quoted in the article as saying this: “We believe this re-registration is a significant development, not only because it corrects a serious mistake made by the ministry, but because it will also ensure our exports to the UK will continue to rise regardless of Brexit.”

In South Africa, the Government of Cyprus also obtained registration of HALLOUMI as a trade mark in class 29 covering “cheese made from sheep’s and/or goat’s milk; cheese made from blends of cow’s milk; all included in class 29”. This registration dates back to 2015, and also proceeded to registration as a “certification mark” and not an ordinary trade mark. In terms of section 42 of the South African Trade Marks Act, 1993, a certification trade mark is defined as a “mark capable of distinguishing, in the course of trade, goods or services certified by any person in respect of kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of the goods or services, other mode or time of production of the goods or of rendering of the services, as the case may be, from goods or services not so certified”.

In terms of the UK and South African acts, it is important to note that a trade mark may not be registered in the name of a person who carries on a trade in the goods or services in respect of which the registration is sought.

As we have described in previous articles, names of this sort are often dealt with differently. There are Geographical Indications (“GIs”), or protected Geographical Indications (“PGIs”) as they are referred to in Europe. PGIs identify products whose quality or reputation is linked to the place of production, although ingredients can come from other areas. There are also Protected Designations of Origin (“PDOs”) in which case, all stages of the production process must occur in the area concerned.

These various forms of protection exist in order to protect the rights of manufacturers within particular regions, and they tend to be registered in the names of trade bodies or regional organisations. Many of the registered names are actually the names of geographical areas (such as Champagne), but others are not (such as Feta).

As we have also discussed in a previous article, South Africa has recently consolidated its law in respect of these types of designations. The Regulations Relating to the Protection of Geographical Indications used on Agricultural Products intended for sale in the Republic of South Africa of 22 March 2019 make it possible to protect GIs used for agricultural products. A few points are worth noting:

• it is a requirement that the “quality, reputation or other characteristic is essentially attributable to its geographic origin.”
• the South African registration system is not limited to South African names, it is open to foreign names too.
• in order to get registration, an applicant must identify the particular geographic area and establish that the defined area produces or processes at least 50% of the production volume of the product concerned.
• the applicant must establish that it is “organised based on democratic principles.”
• an application for registration can be refused on the basis of similarity to an existing GI or trade mark. There is also provision for the cancellation of a registration.
• on registration, the registrant is entitled to use the designations “Protected Geographical Indication” or “PGI”.
• the protection granted by a registration covers the unauthorized use of the name on similar agricultural products.
• the protection will also extend to the unauthorised use of the name on dissimilar agricultural products, where that use exploits the reputation of the protected name.
• the protection further extends to situations where the protected name is alluded to, translated, or used in conjunction with words such as “kind”, “type”, “style” or “imitation”.
  
  

The protection given to PGIs and PDOs may, to some, seem somewhat obscure, but there is no doubt that this is an increasingly important facet of trade mark law.

Manisha Bugwandeen-Doorasamy Executive IP [email protected] +27 82 310 1016