Does the mythical “Griffin” creature possess distinctiveness? Or is there a likelihood of confusion between the lion’s bird and a winged bull invented by an Austrian? The Court of Justice of the European Union overturns the decision of two EUIPO instances in a dispute over figurative trademarks.
In 2012 the Austrian Johan Graf registered his “winged bull” or “Taurophon” figurative mark at the European Intellectual Property Office (EUIPO). Short time later, the hotel company Marriot Worldwide Corp. demanded that Mr Graf’s trademark be declared invalid. In the UK Marriot is since 2010 the owner of the rights to a very similar figurative mark, which illustrates the mythical figure of the “Griffin”. Both trademarks were registered for the Nice Class 43 “Services for the provision of food and beverages”.
EUIPO sees figurative trademark as valid
The request for the cancellation of the mark was first rejected by the Cancellation Division and the Fourth Board of Appeal of the EUIPO. In a statement both instances argued that the two marks are visually completely different and can not be compared phonetically. Thus it was not necessary to judge whether the mythological figure of the griffin, which has the body of a lion and the head of an eagle, has a distinctive charackter.
Marriot then appealed to the Court of Justice of the European Union (CJEU) against the decision of the EUIPO. The Americans argued that customers perceive both trademarks as a whole and do not analyze the details of the figurative marks. And in the overall perception, the similarities prevail: Both figurative marks show the black silhouette of a mythical creature in profile on a white background. In addition, both creatures consist of a lion-like body with a curved tail and similarly proportioned wings. Therefore both figurative marks are similar to a very high degree.
Mr Graf, the proprietor of the contested mark, points out that his creature is a self-invented ‘taurophone’ which, in contrast to the Griffin, has the head of a bull. In his opinion consumers would first perceive the head of the beings and thus recognize a difference between the two trademarks.
CJEU overturns EUIPO decision
In its judgment the CJEU first addresses the open question of whether the figure of the griffin has distinctiveness for relevant consumer groups. The CJEU comes to the following conclusion: It is not clear that consumers immediately recognize in a figure with a lion’s body and an eagle’s head the mythical nature of the griffin. So the visual similarities, which are except for the heads clearly exists, can not be neglected in the overall impression of the two figurative marks.
The CJEU concludes that both marks are similar at least to a low degree and therefore contradicting the assessment of the Cancellation Division and the Fourth Board of Appeal of EUIPO. The case is now being referred back to the Board of Appeal, which must reassess the similarity and likelihood of confusion between the two marks.
That the CJEU contradicts both EUIPO instances in a case is not very common. In the case of “Griffin” against “Taurophon”, the Cancellation Division and the Fourth Board of Appeal may decided too fast.
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