A trade mark decision that’s hard to swallow
Lightly grilled with a slice of lemon, the somewhat squeaky Cypriot cheese of halloumi is much loved in the UK. However, Cyprus has just suffered a major blow in its protection for the name of this delicious cheese by failing to successfully defend three invalidity actions against its UK trade marks.
Described as a “black page in the history of Cypriot halloumi” the anger of this decision in Cyprus cannot be overstated. But the issue that really leaves a bad taste in the mouth is that the loss of the combined actions was entirely avoidable and in fact, only came about because of the failure of the Cypriot ministry to respond to the invalidity proceedings on time.
So what happened? Well, in December last year a British company called John & Pascalis Ltd applied to revoke the HALLOUMI marks and the UK Intellectual Property Office set its standard 2-month response deadline. This is normally more than enough time to defend an action however, rather crucially, the Cypriot ministry had previously changed their address for service from the address of their UK solicitors to a ministry address in Nicosia. This meant that the UKIPO’s notification, and its subsequent reminder, were not properly dealt with by the ministry and were effectively lost in the bureaucratic system. In the absence of a defence the UKIPO had no choice but to find the marks invalid. An appeal was filed but, in a damning judgment, the High Court found that the “evidence simply demonstrates that the ministry was the author of its own misfortune”.
Given the ramifications there is no doubt that Cyprus will fight on and it has already filed a new UK trade mark application however, for brand owners who do not have the resources of a small nation to fall back on, this decision provides serious food for thought.
Whichever way you cut it, this is a lesson in the importance of brand management. It’s not enough to register a trade mark and forget about it, instead owners need to be constantly prepared to defend invalidity actions, ideally by ensuring that they have a legal representative on record who can quickly deal with third party attacks and meet procedural deadlines. Without this help, the trade mark can be lost and even the biggest of big cheeses will struggle to get it back.
Written by Will Miles