Marriott emerges victorious in TM appeal
The EU General Court has today annulled the European Union Intellectual Property Office’s (EUIPO) rejection of Marriott Worldwide Corporation’s application to invalidate a trademark.
The court’s Eighth Chamber delivered judgment today, March 15.
In 2012, Austria-based Johann Graf applied to register a figurative trademark depicting the profile silhouette of a horned animal with wings and a tail. Graf applied to register it in class 43 for food and drinks services.
Two years later, Marriott, a timeshare company best known for its hotels, filed an application for a declaration of invalidity on the grounds that Grad’s mark was identical to two of Marriott’s earlier marks.
Marriott’s EU trademark number 8,458,259 and UK trademark number 2,536,999 are also registered in class 43 for food and drinks services, as well as for various accommodation services. The marks depict a profile silhouette of a griffin (a mythical animal with wings and a tail).
In December 2015, the Cancellation Division of the EUIPO rejected Marriott’s opposition. This decision was upheld by the Fourth Board of Appeal in January 2017.
The appeal board said that the signs were visually and conceptually different, and that the “different character” of the signs had been established.
On appeal to the General Court, Marriott argued that the board had erred in finding that the signs are different. There is a “high level” of similarity between the marks, Marriott claimed, and its own registered marks “enjoy enhanced distinctiveness”.
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 are identifiably different. In addition, the office claimed that the applied-for mark depicts a “newly created creature” rather than a griffin, which is “a mythological creature known to the public”.
The General Court held that the visual similarities were not “negligible”, as argued by Graf, as the average consumer would perceive the mark as a whole rather than analysing various details separately.
It said that the board had “erred in the assessment of the visual and conceptual similarities between the signs at issue and that it wrongly found that those signs are different”.
The court annulled the board’s rejection of Marriott’s invalidity application and the EUIPO was ordered to pay the costs incurred by Marriott.
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