General Court considers likelihood of confusion between mythical creatures

How well known is a Griffin?

Mr Johann Graf registered as an EU trade mark for above logo (left) in class 43 (the "Registration"), to which Marriott Worldwide Corp (the "Earlier Trade Mark Owner") filed a declaration of invalidity based on their earlier mark above right (the "Earlier Mark").

The invalidity action was rejected by the Cancellation Division and by the Fourth Board of Appeal of EUIPO. However, the Earlier Trade Mark Owner was successful before the General Court.

• Infringement of Article 76 (1) of Regulation 207/2009 - Examination of the facts by the Office of its own motion

Under Article 76 (1) the EUIPO is restricted to facts, evidence and arguments provided by the parties. The Earlier Trade Mark Owner argued that a finding by the Board of Appeal that the two animals were represented "in a rather standard sitting position" and that these signs are visually and conceptually different erred in law as this was not a fact put forward by the Registrant who simply stated that the marks had a lack of similarity. However, the General Court relied on settled case law, according to which the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by them. Furthermore, the comment regarding "…standard sitting position" was simply a description made by the Board of Appeal for the purposes of their visual comparison.

This ground was rejected.

• Infringement of Article 53 (1) (a) of Regulation 207/2009 in conjunction with Article 8 (1) (b) – Relative grounds for invalidity based on an earlier trade mark

The Earlier Trade Mark Owner argued that the Board of Appeal did not consider the overall similarities between the marks, which is relevant as the consumer will perceive the marks as a whole and will not analyse their various details. The Earlier Trade Mark Owner submitted that there was a high level of visual similarity between the marks as both are black-on-white silhouettes of mythical creatures shown in profile sitting in the same position, as well as being highly similar conceptually as they both share the same concept of a winged mythical creature in a sitting position with a tail. They further argued that the Earlier Mark enjoyed enhanced distinctiveness as it is not descriptive of the services within class 43.

The Registrant counter argued that their registration was for a "taurophon" made up of a bull's head and the paws of a lion, where the Earlier Mark represents a Griffin. According to the Registrant, consumers are more likely to focus on the heads of the animals, which are sufficiently different. In addition, a taurophon is a made up animal whereas a Griffin is a mythical creature.

The General Court held that it is the whole mark that must be compared and as such there must be at least a low level of visual similarity. Furthermore, as no evidence was submitted by either party to demonstrate how widely known a Griffin is to the relevant public, the General Court concluded that both marks were likely to be considered to be imaginary animals merging the characteristics of several animals and so do have a low level of conceptual similarity.

Therefore, it was held that the Board of Appeal had erred as the marks do have a low level of visual and conceptual similarity and therefore the Registration should be invalidated.

Case Ref: T-151/17

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