With special thanks to trainee, Alex Beresford, for her contribution to this article.
Last week, Leighton Cassidy commented in the World Intellectual Property Review on the EU General Court's recent decision in Marriott Worldwide Corp. v EUIPO (T-151/17). The EU General Court annulled a decision of the EUIPO which had previously rejected Marriott Worldwide Corporation's application to invalidate a trade mark.
In 2012, Austrian-born Johann Graf successfully registered the image below as a figurative trade mark in class 43 for 'Services for providing food and drink; Catering and providing food and drink for cafes, hotels and restaurants’.
Two years later, Marriott became aware of this mark and filed an application for a declaration of invalidity based on two of their earlier identical registered figurative trade marks (below) from 2010. These marks were also registered in class 43 for the same food and drinks services as well as various accommodation and hotel services.
The application for a declaration of invalidity was also based on the earlier copyright of the design of the griffin (above), registered at the US Copyright Office in March 2010 for which Marriott had obtained a licence to use and claimed protection under UK law.
In 2017, the Fourth Board of Appeal (BoA) of the EUIPO dismissed Marriott's appeal finding that the signs were "visually and conceptually different" and that it was not possible to compare them phonetically, since they were not pronounced. Having established the "different character of the signs", the application was rejected. The BoA also found that Marriott had failed to demonstrate the existence of the alleged copyright, that it doubted that the design of a griffin protected by the alleged copyright could constitute an "original artistic work" within the meaning of UK law, that the contested mark did not constitute a reproduction, as a whole or in part, of the design of a griffin supposedly protected by the alleged copyright and that Marriott had failed to demonstrate the EU trade mark application had been filed in bad faith by the intervener, Johann Graf.
Appeal to the General Court
On appeal, Marriott argued that:
- In finding that the graphic representations were animals "in a rather standard sitting position" and that those signs were "visually and conceptually different", the BoA had examined of its own motion, facts and arguments which the intervener had not raised. He had "merely alleged" a lack of similarity likely to give rise to a likelihood of confusion and not the lack of any similarity per se.
- In relation to the copyright aspect, in the absence of any argument raised by the parties, the BoA could not take the view that Marriott had not proven the existence of the alleged copyright. That assertion had appeared for the first time in the context of the contested decision whereas the Cancellation Division had found that the griffin design could, in essence, enjoy copyright protection.
- The BoA had erred in making the comparison between the marks. In particular, the BoA should have taken into account the fact that the consumer perceives the marks as a whole and does not proceed to analyse their various details. Therefore, they were wrong to hold that the signs were "visually and conceptually different" and, consequently, not to assess the likelihood of confusion. Marriott claimed that, visually, the signs were similar to a "relatively high level". In particular, it observed that both of the signs depicted "black-on-white silhouettes of mythical creatures shown in profile". Those creatures "adopt the same sitting position on their hind legs, the tail curved upwards and depicting wings of the same form and the same proportion". Further, conceptually, the signs shared the same concept of a "winged mythical creature in a sitting position with a tail".
The EUIPO argued that:
- The signs were “easy to distinguish” because the focal point of the signs was the heads of the two creatures, which were identifiably different.
- The contested mark depicted a “newly created creature” rather than a griffin, which is “a mythological creature known to the public”.
The General Court held that there were "visual similarities" between the signs at issue, which, contrary to what the intervener argued, could not be regarded as "negligible in the overall impression" of the signs at issue. It said that the BoA had “erred in the assessment of the visual and conceptual similarities […] and that it wrongly found that those signs are different”.
The EUIPO was ordered to pay the costs incurred by Marriott.
It is both interesting and surprising that the General Court came to such a different conclusion from the BoA and the EUIPO Cancellation Division. The main ground of appeal related to the assessment of the visual and conceptual similarities between the earlier marks and the sign with both the EUIPO and the BoA concluding that they were different. The decision exposes the difficulty in assessing visual and conceptual similarities between figurative marks where there is no word element. In this case the BoA said that in their assessment of the visual comparison, the signs represented "completely different figures characterised by very different features". In contrast, the General Court found that there were "visual similarities between the signs at issue, which […] cannot be regarded as negligible in the overall impression". The General Court also found that there was a conceptual similarity, and, without placing much of an emphasis on the differences between griffins and other mythological animals, highlighted that the signs both represent imaginary creatures merging the characteristics of several animals.
This is not the first time that the General Court has decided so differently to the BoA. The fact that the EUIPO and the BoA can come to these different conclusions highlights just how subjective these assessments can be and that there is no definitive way to assess figurative marks with no wording (perhaps highlighting the value in appealing any negative decisions). While on one hand, the Marriott mark is clearly a mythical griffin, the other one is not - it is a bull with wings on the hind legs of a lion. Unfortunately for Mr Graf, those differences were not enough to overturn a finding of a low level of visual and conceptual similarity. Although not relevant to the present case, whether consumers would actually be confused seems debatable - when booking hotels, consumers would probably focus more on the name of the hotel, rather than a figurative mark.
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