Quebec Court of Appeal Sears “Halloumi” Trademark (Again)

Quebec Court of Appeal Sears “Halloumi” Trademark (Again)

Katie Graham is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

The Ministry of Energy, Commerce and Industry of the Republic of Cyprus (“Cyprus”) lost its latest attempt to obtain trademark protection for its famous cheese, “Halloumi,” in a decision dated January 20, 2023. The Quebec Court of Appeal (QCCA) dismissed the appeal and agreed with the trial judge, ruling in favour of the Canadian dairy company, Saputo Produits Laitiers Canada S.E.N.C. (“Saputo”).

Halloumi, also commonly spelt as “Haloumi” or “Halomi”, is often associated with the Mediterranean island of Cyprus where it was first manufactured as early as 1556. It is the second most important export for Cyprus and its popularity in Canada has widely increased over the past 20 years, with many Canadian dairy manufacturers, including Saputo and President’s Choice, producing and selling halloumi cheese.

In 1995, Cyprus filed an application to register “Halloumi” as a certification mark for cheese of the following defined standard: “the cheese is produced only in Cyprus using the historic method unique to that country, namely: traditionally, it has been produced from sheep's and/or goat's milk. In the case of mixtures, cow's milk is also allowed.” Certification marks are a type of trademark that can be licensed to manufacturers as an indication to consumers that its products meet the owner’s defined standard. Common examples of certification marks include VQA for Ontario wine, Wi-Fi, and 100% Canadian Dairy.

While this certification mark was registered in the UK and the US, the Trademarks Opposition Board (TMOB) rejected the mark on the basis that there was evidence of commercial use of “Halloumi” or similar terms in Canada already and thus, the mark is not distinctive to cheese “produced only in Cyprus.” The TMOB’s decision was upheld by both the Federal Court and Federal Court of Appeal, with leave to the Supreme Court of Canada dismissed in 2012.

Cyprus entered into a contractual agreements with Saputo in 1999 and 2004, stipulating that Saputo “shall not use the trademark HALOMI on its products, or any other trademark confusingly similar with HALLOUMI or HALOMI.” Cyprus sued Saputo for breach of contract and requested a permanent injunction preventing Saputo from making further use of “Halloumi” or similar marks on its packaging. The Superior Court of Quebec ruled in favour of Saputo given that the law in Canada is settled that “Halloumi,” or similar words, could not be used as a trademark and therefore, the above contractual provision does not apply. On appeal, the QCCA agreed with the trial judge.

Canada’s rejection of trademark protection for “Halloumi” raises important questions surrounding cultural appropriation, a controversy recently brought up in the UK for the trademark “Taquería” (see here). Halloumi cheese is integral to Cyprus’ cultural heritage since its preparation is “directly linked to the traditional rural life and social solidarity that characterizes even today the villages of Cyprus.” However, the now widespread recognition of halloumi cheese in Canada presents a significant hurdle to Cyprus in protecting its historic cheese-making methods. To distinguish halloumi produced in Cyprus from that of Canadian retailers, Cyprus will likely need to seek a more fanciful certification mark that goes beyond the mere description of “Halloumi” (or similar terms).