Marriott wins case against Austrian billionaire: General Court rules visual and conceptual similarity between figurative marks

On 15 March 2018, the General Court of the European Union (GC) annulled the prior decision of the Fourth Board of Appeal of the EUIPO (Case R 165/2016-4), deeming that there indeed was a likelihood of confusion between the figurative marks “Winged bull“ and “Griffin“. The parties involved were the internationally known hospitality company Marriott Worldwide Corp. , which held the rights for the figurative mark representing a griffin and Johann Graf, a famous Austrian billionaire and owner of the international gambling company Novomatic, who had obtained a EUTM registration for the use of the figurative mark of a winged bull. The interesting part in this case is the difficulty in objectively assessing whether the trademarks were visually and conceptually similar, since the organs of the EUIPO deemed the signs very different from each other while paying attention to details, whereas the GC sifted the focus on the overall meaning of the signs in the sense that they were both representing imaginary beings.



                                Marriott                                                                                                Johann Graf

               EU Trademark No. 8458259                                                            EU Trademark No. 010511723                                     

                         (Figurative mark)                                                                                 (Figurative mark)                                                                

I. Background of the case

On 18 April 2012, Mr. Graf applied for and obtained a EUTM registration (No 010511723) for services listed under Class 43 (Nice Agreement) and primarily connected with providing food and drink as well as with catering and providing food and drink for cafes, hotels and restaurants. Nevertheless, on 14 June 2014 Marriott Worldwide Corp., filed an application requesting the declaration of invalidity of the contested registration based on the similarity with two previous identical to each other figurative marks registered under the No 8458259 in the EU and No 2536999 in the UK which also related to the services described under Class 43 of the Nice Agreement. The invalidity request was also based on earlier copyright acquired through registration at the US Copyright Office, for which Marriott had additionally obtained a user license and claimed protection under the UK legislation (the alleged copyright). More specifically, the applicant claimed infringement of Article 53(1)(a) of Community Trade Mark Regulation (CTMR-now the European Union trade mark regulation) in conjunction with Article 8(1)(b) and 8(5) CTMR, citing relative grounds of invalidity. Furthermore, the application requesting the declaration of invalidity was also based on absolute grounds of invalidity, namely on bad faith, as stated in Article 52(1)(b) CTMR.

The Cancellation Division rejected the application in its entirety and after a notice of appeal from the part of Marriott against the decision of the Cancellation Division, the case was further dismissed from the Fourth Board of Appeal of the EUIPO. The reasons for that were that the signs were visually and conceptually different, whereas, as figurative marks it was not possible to compare them aurally and that the appellant had failed to establish the existence of the alleged copyright. Furthermore, Mr. Graf’s EU trademark was not found to have been filed in bad faith. Marriott then, filed another appeal before the GC maintaining infringement of Article 76(1) CTMR, since there was –according to them- a visual and conceptual similarity and infringement of Article 53(1)(a) CTMR, read in conjunction with Article 8(1)(b), claiming that the consumer perceives the marks as a whole, without analysing the details.

II. Decision of the GC

On 15 March 2018 the GC published its Decision (T-151/17) in favour of Marriott Worldwide Corp., annulling the decision of the Fourth Board of Appeal of the EUIPO. Marriott’s argument that the signs are similar to a high degree both visually and conceptually, due to the fact that they both depict black-on-white silhouettes of mythical creatures shown in profile was accepted by the GC who found the error in the assessment of the Board, contrary to Mr. Graf’s argument regarding the differences of the two creatures represented.

Mr. Graf based his own argument on the relevant public’s ability to distinguish the mythical creatures depicted, but, the GC assessed that there was no solid evidence adduced to prove the fact that there is sufficient knowledge of that from the part of the consumer. Moreover, the goods or services in question come from the same undertaking or financially similar undertakings, so, in this case, the likelihood of confusion persists. The GC also assessed that the Board erred on the basis of reasoning, since the phrase that it used in describing the dissimilarity of the two trademarks (‘for the same reasons as to why the conflicting marks in question are dissimilar’) is not unambiguous and rejected the decision of the Board on the grounds of Article 53(2)(c) CTMR, the infringement of which was also presented by Marriott as an additional ground of appeal.

It remains to be seen if Mr. Graf appeals this decision and takes it to the last instance, the European Court of Justice (ECJ).