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Monday, 29 June 2015

Benna, Bnina, Baina: a carefully-scripted ruling from the CJEU

 Case C 147/14 Loutfi Management Propriété intellectuelle SARL v AMJ Meatproducts NV, Halalsupply NV is a Court of Justice of the European Union (CJEU) ruling last Thursday in a Community trade mark-related reference from Belgium. This ruling did not require any rocket-science, which is why the CJEU reached its decision without the need to trouble the Advocate General for any advice.  It is however one of those comforting rulings that reassure trade mark practitioners that principles which are of general application, such as those relating to comparison of marks, apply to specific and somewhat unusual situations too, unless there is any compelling reason why this should not be so.

In the underlying dispute Loutfi was the proprietor of two Community trade marks. The first, depicted on the right, was filed on 24 September 2009 and registered on 22 March 2010 for goods in Class 29 (including meat, fish, poultry and game), in Class 30 (including sugar, bread, pastry products and honey) and Class 32 (including beers, mineral waters and other non-alcoholic beverages) That Community trade mark registration referred to the sign combining the colours red, white and green.

The second, depicted on the left, was filed on 24 August 2011 and registered on 8 January 2012 for goods in Class 29 (including meat, fish, poultry and game) and in Class 30 (including sugar, bread, pastry products and honey). This mark was also referred to as combining the colours red, white and green.

In November 2011 Meatproducts (then known as ‘Deko Vleeswarenfabriek’), filed the Benelux trade mark EL BAINA, depicted on the right, for ‘meat, meat products, prepared meat products, prepared poultry products, processed meats, processed meats with beef, processed meats with poultry, processed meats with game, prepared meals with beef, fish, poultry and game not included in other classes; meat extracts; these products being prepared in accordance with Islamic precepts’ (Class 29) and for ‘prepared dishes not included in other classes; coffee, tea, cocoa, sugar, rice, tapioca, flours, cereal products, bread, pastry and patisserie products, these products being prepared in accordance with Islamic precepts’ in Class 30. This trade mark was registered on 10 February 2012. Another business, Halalsupply, subsequently took over the business of Meatproducts, including the latter’s trade mark portfolio.

In trade mark proceedings in Belgium, Loutfi applied to the President of the Rechtbank van koophandel te Brussel (Commercial Court, Brussels) under Articles 9(1)(a) and (b) of Regulation (207/2009, for a seizure order against Meatproducts and Halalsupply and any party holding products sold under the mark EL BAINA, their packaging and related documents. This application, which was granted, was lifted three months later by the same court, following an application made by the defendants. Loufti then appealed to the Hof van beroep te Brussel (Court of Appeal, Brussels). That court found that the defendants’ sign referred to the same goods, or at least to similar goods to those identified in Loutfi’s two Community trade marks, that both parties’ goods were marketed as ‘halal’ products prepared in accordance with a ritual prescribed by the Muslim religion and, consequently, mainly intended for a Muslim public. Further, the court considered that the relevant public must, in the present case, be defined as being the public composed of Muslim consumers of Arab origin who consumed ‘halal’ food products in the European Union and who had at least a basic knowledge of written Arabic.

Comparing the marks, the court noted that the word elements ‘EL BNINA’, ‘EL BENNA’ and ‘EL BAINA’, being Arabic terms written in Latin script, were dominant both in the Community trade marks and in the defendants’ sign, with the depiction of those words in Arabic script being rather less prominent. Further, while the Arabic words appearing in Latin and Arabic script on Loutfi’s two Community marks and in the defendants’ sign had some visual similarity, their pronunciation and meaning differed substantially since, in Arabic, ‘el benna’ means ‘taste’, ‘el bnina’, ‘softness’ and ‘el baina’, ‘sight’. The court concluded that the examination of the likelihood of confusion between the parties’ respective marks could vary according to whether the meaning and the pronunciation of the word elements in the Arabic language, in both Latin and Arabic script, were taken into account. Accordingly the Hof van beroep te Brussel decided to stay the proceedings and to refer the following question to the Court for a preliminary ruling:
‘Having regard, in particular, to Articles 21 [non-discrimination on religious and other grounds] and 22 [respect for cultural, religious and linguistic diversity] of the Charter of Fundamental Rights of the European Union, must Article 9(1)(b) of Regulation 207/2009 be interpreted as meaning that, in the assessment of the likelihood of confusion between a Community trade mark in which an Arabic word is dominant and a sign in which a different, but visually similar, Arabic word is dominant, the difference in pronunciation and meaning between those words may, or even must, be examined and taken into account by the competent courts of the Member States, even though Arabic is not an official language of the European Union or of the Member States?’
The CJEU, adding that there was no need to consider Articles 21 and 22 of the Charter of Fundamental Rights of the European Union [and without explaining why these provisions were cited in the first place] in what was effectively a straightforward trade mark matter, ruled as follows:
Article 9(1)(b) ... must be interpreted as meaning that, in order to assess the likelihood of confusion that may exist between a Community trade mark and a sign which cover identical or similar goods and which both contain a dominant Arabic word in Latin and Arabic script, those words being visually similar, in circumstances where the relevant public for the Community trade mark and for the sign at issue has a basic knowledge of written Arabic, the meaning and pronunciation of those words must be taken into account.
The IPKat believes that this is entirely correct and notes that this ruling will offer guidance to dealers for the responsible labelling of not merely halal products but also for kosher products and those of any other minority linguistic, religious or cultural groups.

Halal food requirements here

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