A not-so-mythical error in law

In the recent decision of Marriott v EUIPO, the EU General Court found the Board of Appeal and EUIPO Cancellation Decision had erred in law when failing to find any similarity between two marks and, thereby, incorrectly evaded an analysis of the distinctiveness of the earlier mark.

Background In April 2012 Mr Graf registered the ‘Taurophon’ (silhouette of a winged bull) figurative mark for class 43 services in the EU.

Just over 2 years later, Marriott Worldwide Corp brought proceedings to invalidate Mr Graf’s registration on the grounds of:

Similarity with their earlier ‘Griffin device’ trade mark (a silhouette of winged half-lion half-eagle),
Copyright in the Griffin design and
Bad faith.

The Griffin device:

EUIPO Decisions In December 2015, the Cancellation Division rejected the declaration of invalidity in its entirety on the basis the Taurophon and Griffin device were completely dissimilar. So much so, they found no need to assess the enhanced distinctiveness of Marriott’s Griffin Device. Upon Marriott’s appeal, the Fourth Board of Appeal (BoA) upheld the earlier decision, finding no similarity between the ‘completely different figures characterised by very different features’. In the same vein, finding that a dissimilar design cannot be a reproduction, the copyright claim was also dismissed.

The GC Decision - Third Time Lucky? Marriott’s appeal before the General Court (GC) was on the basis of the following pleas:

Infringement of Article 76(1) of Regulation 207/2009
Infringement of Article 53(1)(a) of Regulation 207/2009, read in conjunction with Article 8(1)(b)
Infringement of Article 53(2)(c) of Regulation 207/2009

Although Marriott’s first plea was dismissed, the GC refuted the BoA’s finding that the marks depicted ‘completely different figures characterised by very different features’. Instead, when determining whether there is a likelihood of confusion, they reiterated the need to take a global assessment of all relevant factors, including the mark’s distinctive components. The GC found similarities between the two black-on-white silhouettes, including a similar positioning, spread out wings, curved upwards tail and the like. These were not to be regarded as negligible in the overall impression. Besides agreeing the phonetic similarity need no discussion for a nonverbal sign, the Court soon dismissed the BoA’s finding that the mythical Griffin lacked a conceptual similarity to the invented Taurophon. Both signs portrayed an imaginary creature that was created through the use of characteristics from several animals – including the use of the lion’s lower body in both images. Finding a low degree of conceptual similarity between the two signs, they annulled the BoA’s decision and have remitted it back to them for further review.

Comment In annulling the EUIPO’s prior decisions, it’ll be interesting to find out the Board’s conclusion upon the likelihood of whether or not there’s confusion between the two winged creatures! Based on the GC’s robust decision, the BoA would need to come up with some creative reasoning to be able to refuse the opposition a second time around. Not quite a game of spot-the-difference, the differing opinions within each decision highlights the high level of subjectivity when making a similarity assessment involving device marks. As such, the decision is a reminder of the importance of trade marks searches for device marks, and the need to have a clear strategy as to what the defining characteristics of a chosen mark are, and what acceptable points of departure look like. Based on the GC’s decision here, it would be advisable to err on the side of caution, as the Court appears will to be willing to find a low level of similarity based on certain commonalities.

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