In Case T-151/17, the General Court annulled the decision of the Fourth Board of Appeal of the EUIPO of 17 January 2017 (Case R 165/2016-4). The marks at issue  in the dispute are the following:

Marriott Worldwide Corp., filed an application for a declaration of invalidity on the basis of  EU and UK marks above and US copyright licensed in the UK  and on bad faith grounds.

The Cancellation Division and Board of Appeal rejected the application for a declaration of invalidity in its entirety:

- the signs at issue are visually and conceptually different and that it was not possible to compare them phonetically;

- moreover, the applicant had failed to demonstrate the existence of the alleged copyright; there was a doubt whether the design of a griffin protected by the alleged copyright could constitute an original artistic work within the meaning of the UK legislation and the contested mark did not constitute a reproduction, as a whole or in part, of the design of a griffin ;

- third the applicant had failed to demonstrate that the EU trade mark application had been filed in bad faith

Marriott filed an appeal before the GC arguing that the consumer perceives the marks as a whole and does not proceed to analyse their various details. Visually, the signs at issue are similar to a relatively high level. In particular, both of the signs depict 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. Conceptually, the signs at issue share the same concept of a winged mythical creature in a sitting position with a tail.

Mr. Graf argued back that its mark represents a creature named the ‘taurophon’, made up of a bull’s head and the paws of a lion, whereas the earlier marks represent a griffin. Consumers will focus on the heads of the two creatures in question which can be distinguished. The mere fact that both signs use a black-on-white silhouette of the creatures does not, lead to a finding that those signs are similar.

The General Court agreed with Mariott's arguments and found that the Board of Appeal erred in the assessment of the visual and conceptual similarities between the signs at issue as well as the conceptual similarity which must be classified as low. Regarding the assessment : even if  the earlier marks shows a griffin, which is a known mythological creature no evidence has been adduced by the parties to show that the griffin is a figure sufficiently known to the relevant public. It is not certain that the representation of a figure half-eagle and half-lion in form has a clear and specific meaning for the relevant public such that that public would be capable of grasping immediately the evocation of a griffin. Therefore the visual similarities between the signs at issue, cannot be regarded as negligible in the overall impression of the signs at issue. The differences are not such as to counteract the similarities (namely,  the head of a bull with horns v. the head of an eagle and the front legs of the creature feature paws v. claws and feathers).

Therefore  the matter is sent back to the  Board who must  assess the similarities of the mark and if there is likelihood of confusion..

Trade mark decisions on purely figurative marks are not so common - although a copycat in spite its hybrid nature was found to be similar to Puma's  (see case commented here ) and it will be interesting to see which elements the Board will retain as dominant in the overall impression of the two mythological creatures. This blogger is curious to know if any reader has encountered interesting cases on comparing pure device marks  which can overlap with the art form of comparing designs.

More on griffins here