JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
15 March 2018 (*)
(EU trade mark — Invalidity proceedings — EU figurative mark representing a winged bull — Earlier EU and national figurative marks representing a griffin — Relative ground for refusal — Similarity of the signs — Article 53(1)(a) and Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 60(1)(a) and Article 8(1)(b) of Regulation (EU) 2017/1001) — Earlier copyright protected by national law — Article 53(2)(c) of Regulation No 207/2009 (now Article 60(2)(c) of Regulation 2017/1001) — Examination of the facts of the Office’s own motion — Article 76(1) of Regulation No 207/2009 (now Article 95(1) of Regulation 2017/1001))
In Case T-151/17,
Marriott Worldwide Corp., established in Bethesda, Maryland (United States), represented by A. Reid, Solicitor,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Johann Graf, residing in Gumpoldskirchen (Austria), represented by S. Salomonowitz, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 17 January 2017 (Case R 165/2016‑4), relating to invalidity proceedings between Marriott Worldwide and Mr Graf,
THE GENERAL COURT (Eighth Chamber),
composed of A.M. Collins, President, M. Kancheva and G. De Baere (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 8 March 2017,
having regard to the response of EUIPO lodged at the Court Registry on 3 May 2017,
having regard to the response of the intervener lodged at the Court Registry on 19 May 2017,
having regard to the change in the composition of the Chambers of the General Court,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 18 April 2012, the intervener, Mr Johann Graf, obtained from the European Union Intellectual Property Office (EUIPO), and on the basis of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)), registration of the following EU figurative trade mark under number 010511723:
2        The services in respect of which that mark was registered are in, inter alia, Class 43 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Services for providing food and drink; Catering and providing food and drink for cafes, hotels and restaurants’.
3        On 6 June 2014, the applicant, Marriott Worldwide Corp., filed an application for a declaration of invalidity of the contested mark directed against the services mentioned in paragraph 2 above. On the one hand, the application for a declaration of invalidity was based on the relative grounds of invalidity referred to, first, in Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001), read in conjunction with Article 8(1)(b) and Article 8(5) of Regulation No 207/2009 (now Article 8(1)(b) and Article 8(5) of Regulation 2017/1001) and, second, in Article 53(2)(c) of Regulation No 207/2009 (now Article 60(2)(c) of Regulation 2017/1001). On the other hand, the application for a declaration of invalidity was based on the absolute ground for invalidity under Article 52(1)(b) of Regulation No 207/2009 (now Article 59(1)(b) of Regulation 2017/1001).
4        The application for a declaration of invalidity was based on two earlier identical figurative marks reproduced below, namely the EU trade mark registered on 31 January 2010 under number 8458259 and the United Kingdom trade mark registered on 30 April 2010 under number 2536999 relating to, inter alia, the same services in Class 43 and corresponding to the following description: ‘Services for providing food and drink; temporary accommodations; hotel services; restaurant, catering, bar and lounge services; resort and lodging services; provision of general purpose facilities for meetings, conferences and exhibitions; provision of banquet and social function facilities for special occasions; and reservation services for hotel accommodations’:
5        The application for a declaration of invalidity was also based on the earlier copyright, designating the design of a griffin as reproduced above, registered at the US Copyright Office on 19 March 2010, for which the applicant had obtained a user licence and claimed protection under the United Kingdom legislation (‘the alleged copyright’).
6        By decision of 18 December 2015, the Cancellation Division rejected the application for a declaration of invalidity in its entirety.
7        On 25 January 2016, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Cancellation Division.
8        By decision of 17 January 2017 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the applicant’s appeal. As regards, first, the ground based on Article 53(1)(a), read in conjunction with both Article 8(1)(b) and Article 8(5) of Regulation No 207/2009, it found that the signs at issue were visually and conceptually different and that it was not possible to compare them phonetically, since they were not pronounced. Having established the different character of the signs and, therefore, the absence of one of the cumulative conditions required for the application of the abovementioned provisions, the Board of Appeal rejected the application for a declaration of invalidity in respect of those provisions. As regards, second, the ground based on Article 53(2)(c) of Regulation No 207/2009, the Board of Appeal took the view, first of all, that the applicant had failed to demonstrate the existence of the alleged copyright. Next, it doubted that the design of a griffin protected by the alleged copyright could constitute an original artistic work within the meaning of the United Kingdom legislation. Finally, it found that the contested mark did not constitute a reproduction, as a whole or in part, of the design of a griffin supposedly protected by the alleged copyright. As regards, third, the ground based on Article 52(1)(b) of Regulation No 207/2009, the Board of Appeal concurred with the Cancellation Division’s line of argument and found that the applicant had failed to demonstrate that the EU trade mark application had been filed in bad faith by the intervener.
Forms of order sought
9        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
10      EUIPO and the intervener contend that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
11      In support of its action, the applicant relies on three pleas in law, alleging, first, infringement of Article 76(1) of Regulation No 207/2009 (now Article 95(1) of Regulation 2017/1001), second, infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation, and, third, infringement of Article 53(2)(c) thereof.
First plea in law, alleging infringement of Article 76(1) of Regulation No 207/2009
12      The applicant maintains that the Board of Appeal infringed Article 76(1) of Regulation No 207/2009 by finding that the graphic representations constituting the signs at issue are animals represented ‘in a rather standard sitting position’ and that those signs are visually and conceptually different. In doing so, it submits, the Board of Appeal examined of its own motion facts and arguments which the intervener had not raised either before the Cancellation Division or before the Board of Appeal. According to the applicant, the intervener merely alleged, before those bodies, a lack of similarity likely to give rise to a likelihood of confusion and not the lack of any similarity per se.
13      The applicant also submits that the Board of Appeal could not take the view, in the absence of any argument raised before it by the parties in that regard, that the applicant had not proven the existence of the alleged copyright. That assertion appears for the first time in the contested decision, whereas the Cancellation Division found, in essence, that the work consisting of a griffin design enjoyed the protection of the alleged copyright.
14      EUIPO and the intervener dispute the applicant’s arguments.
15      According to the case-law, it follows from the principle of continuity of functions between the various bodies of EUIPO that, in matters within the scope of Article 76 of Regulation No 207/2009, the Board of Appeal is required to base its decision on all the matters of fact and of law contained in the contested decision before it and with regard to those introduced by the party or parties concerned either in the proceedings before the department which heard the application at first instance or, apart from matters which have not been submitted in due time, in the appeal (see, to that effect, judgment of 13 December 2016, Guiral Broto v EUIPO — Gastro & Soul (CAFE DEL SOL), T‑549/15, not published, EU:T:2016:719, paragraph 23 and the case-law cited).
16      In particular, as regards the legal framework in proceedings relating to relative grounds for refusal of registration, the very wording at the end of Article 76(1) of Regulation No 207/2009 requires that the examination carried out by EUIPO be restricted to the facts, evidence and arguments provided by the parties and the relief sought. Thus, the Board of Appeal could base its decision only on the relative grounds for refusal on which the party concerned relied and on the related facts and evidence presented by the parties. The criteria for applying a relative ground for refusal or any other provision relied on in support of claims put forward by the parties naturally form part of the matters of law submitted for examination by EUIPO. A matter of law may have to be ruled on by EUIPO even though it has not been raised by the parties if it is necessary to resolve that matter in order to ensure a correct application of Regulation No 207/2009 having regard to the facts, evidence and arguments provided by the parties (see, to that effect, judgments of 1 February 2005, SPAG v OHIM — Dann and Backer (HOOLIGAN), T‑57/03, EU:T:2005:29, paragraph 21; of 13 September 2010, Inditex v OHIM — Marín Díaz de Cerio (OFTEN), T‑292/08, EU:T:2010:399, paragraph 27; and of 12 July 2012, Leifheit v OHIM — Vermop Salmon (Twist System), T‑334/10, not published, EU:T:2012:371, paragraph 21).
17      In the first place, as regards the findings of the Board of Appeal concerning the visual and conceptual comparison of the signs at issue, it must be observed that the applicant invoked, before the Cancellation Division and before the Board of Appeal, the ground for invalidity based on Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation.
18      In support of that ground for invalidity, the applicant relied on the existence of a likelihood of confusion within the meaning of Article 8(1)(b), which has the effect of bringing before EUIPO, inter alia, the question as to the identity or similarity of the signs at issue.
19      In that regard, contrary to the applicant’s submissions, the parties set out arguments concerning the comparison of the signs at issue before the Board of Appeal. In particular, it is apparent from paragraph 13 of the contested decision that the applicant claimed that there is a likelihood of confusion, maintaining, in particular, that the signs at issue are similar, whereas it is expressly stated in paragraph 18 of the contested decision that the intervener submitted that those signs are different.
20      Having regard to the settled case-law, according to which the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by them (see, to that effect, judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35, and of 24 June 2010, Becker v Harman International Industries, C‑51/09 P, EU:C:2010:368, paragraph 33), the Board of Appeal was required, in order to ensure the correct application of the provision relied on by the applicant in the present case, to make a visual, but also a conceptual, comparison of the signs at issue, even in the absence of specific arguments relied on by the parties on the latter point.
21      Furthermore, with regard to the finding concerning the ‘rather standard sitting position’ of the animal silhouettes constituting the signs at issue, it is sufficient to observe, as the intervener has done, that it is only a description of the signs necessarily made by the Board of Appeal for the purposes of their visual comparison.
22      In the second place, as regards the Board of Appeal’s finding that the applicant had not sufficiently demonstrated the existence of the alleged copyright, it must be observed, as EUIPO and the intervener have done, that that finding was made for the sake of completeness. The Board of Appeal did not draw any conclusion from the abovementioned finding and examined the ground for invalidity under Article 53(2)(c) of Regulation No 207/2009, taking into account the alleged copyright before concluding that it should be rejected. In particular, it is apparent from paragraphs 50 and 51 of the contested decision that the Board of Appeal found that the signs at issue are dissimilar, with the result that the contested sign does not constitute a reproduction of the work protected by the copyright and that, ‘already for this reason’, the applicant’s claim under Article 53(2)(c) of Regulation No 207/2009 should be rejected. Since the applicant’s argument seeks to dispute a ground which was included in the contested decision for the sake of completeness, it must be held to be ineffective (see, to that effect, judgment of 30 April 2013, Boehringer Ingelheim International v OHIM (RELY-ABLE), T‑640/11, not published, EU:T:2013:225, paragraph 27 and the case-law cited).
23      It follows from the foregoing that the applicant is wrong to allege infringement of Article 76(1) of Regulation No 207/2009. Therefore, the applicant’s first plea cannot be upheld.
Second plea in law, alleging infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) thereof
24      The applicant submits that the Board of Appeal erred in making the comparison between the contested mark and the earlier marks. In particular, it argues, the Board of Appeal should have taken into account the fact that the consumer perceives the marks as a whole and does not proceed to analyse their various details. Therefore, the Board of Appeal was wrong to hold that the signs at issue are visually and conceptually different and, consequently, not to assess the likelihood of confusion.
25      The applicant claims that, visually, the signs at issue are similar to a relatively high level. In particular, it observes that 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. The applicant submits that, conceptually, the signs at issue share the same concept of a winged mythical creature in a sitting position with a tail.
26      Having regard to the similarities of the signs at issue and the identity of the services covered by those signs, the Board of Appeal should, the applicant submits, have found that there is a likelihood of confusion. In that regard, the applicant states that the Board of Appeal failed to take into account the inherent distinctiveness of the earlier marks, which are not descriptive of the services coming within Class 43 covered by those marks. It adds, in essence, that the earlier marks enjoy enhanced distinctiveness.
27      EUIPO merely refers to the reasoning and conclusions of the contested decision and submits to the wisdom of the Court the question whether the Board of Appeal erred in assessing the similarity of the signs at issue.
28      The intervener maintains that the contested 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. According to the intervener, consumers will focus on the heads of the two creatures in question, with the result that they are able easily to distinguish the signs at issue. The mere fact that both signs use a black-on-white silhouette of the creatures does not, he submits, lead to a finding that those signs are similar. Indeed, the similarities relied on by the applicant are only minor details to which consumers do not attach any importance. Furthermore, the contested sign depicts a newly created creature, in contrast to the griffin in the earlier marks, which is a mythological creature known to the public at large. Consequently, it is submitted, the signs at issue are not conceptually similar. In addition, the intervener observes that the griffin is already depicted on the logos of certain hotels not affiliated with the applicant. The intervener deduces from this that the earlier sign should be regarded as having a low distinctive character. Lastly, he disputes the contention that the applicant has proved the reputation of its earlier marks.
29      Under Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) thereof, on application by the proprietor of an earlier mark, a registered EU trade mark must be declared invalid if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009, the term ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
30      According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLYHILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
31      For the purposes of the application of Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgments of 20 September 2017, The Tea Board v EUIPO, C‑673/15 P to C‑676/15 P, EU:C:2017:702, paragraph 47, and of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42).
32      In the present case, after stating in paragraph 24 of the contested decision that the relevant public consists of the public at large, and since that finding is also not disputed by the parties, the Board of Appeal compared the signs at issue and concluded that they are different. It deduced from this that one of the cumulative conditions for the application of Article 8(1)(b) of Regulation No 207/2009 was not fulfilled, with the result that the cancellation request had to be rejected regardless of the identity or similarity of the services and the enhanced distinctiveness of the earlier marks.
33      It is necessary to assess whether the Board of Appeal acted correctly in finding that the signs at issue were different.
34      According to settled case-law, the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by those signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
35      First, with regard to the visual aspect, the Board of Appeal commenced by carrying out a detailed description of each of the signs at issue. Next, in paragraph 29 of the contested decision, it found that the mere fact that the signs at issue represent black silhouettes of animals in a sitting position does not render those signs similar. Lastly, in the same paragraph, it found that those signs represent ‘completely different figures characterised by very different features’.
36      It must be held that both of the signs at issue feature a black-on-white silhouette of an animal-like creature viewed in profile. Those animal figures are depicted in the same sitting position, resting on their hind legs with their back straightened. Furthermore, it is immediately apparent that each of those figures has wings spread out towards the back and a tail which curves upwards. The wings, the body and the tail of the animals are depicted in similar proportions in the two signs.
37      It follows that there are visual similarities between the signs at issue, which, contrary to what the intervener argues, cannot be regarded as negligible in the overall impression of the signs at issue.
38      It is true that the signs at issue differ in that one depicts the forward-facing head of a bull with horns and the other the head of an eagle aligned to the left. Moreover, it must be noted that the front legs of the creature designated by the earlier marks feature claws and show feathers, in contrast to the front legs of the creature designated by the mark at issue. However, those differences are not such as to counteract the similarities set out in paragraph 36 above.
39      Having regard to those similarities and in the light of the principle, noted in paragraph 34 above, that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, it should be noted that those signs have a degree of visual similarity which must at least be classified as low. The Board of Appeal was therefore wrong to conclude that there is no visual similarity between the signs at issue.
40      Second, with regard to the phonetic aspect, the Board of Appeal found, in paragraph 30 of the contested decision, essentially, that it is not possible to pronounce the signs at issue and that therefore a phonetic comparison is irrelevant. The parties do not call into question that finding.
41      Third, with regard to the conceptual aspect, the Board of Appeal found, in paragraph 31 of the contested decision, that the signs at issue are different. In that regard, it noted that the earlier marks represent a griffin, which is a mythical creature consisting of an eagle and a lion, whereas the contested mark combines features from three different animals in order to create a fanciful creature which cannot be ascribed to any type of animal, or to any known mythological one.
42      Without it being necessary to determine whether the contested sign relates to a mythological animal, suffice it to state, contrary to the findings of the Board of Appeal, that there is necessarily a conceptual similarity for the relevant public between the signs at issue in so far as they evoke, in each case, an imaginary creature merging the characteristics of several animals.
43      Furthermore, although the heads of the creatures in the signs at issue are those of two different animals, namely a bull and an eagle, it should be noted that the wings, bodies and hind legs of each of the signs evoke very similar animals. In that regard, the intervener himself acknowledges that the legs of the creature in the contested mark are those of a lion, and it is common ground between the parties that the griffin in the earlier marks has the hind legs of a lion.
44      Moreover, it is true, as emphasised by the intervener, that the contested sign depicts an unknown imaginary animal whereas the sign covered by the earlier marks shows a griffin, which is a known mythological creature. Nevertheless, it is necessary to qualify the relevance of that argument inasmuch as no evidence has been adduced by the parties to show that the griffin is a figure sufficiently known to the relevant public, which the Board of Appeal found to consist of the public at large. 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.
45      It should thus be noted that the signs at issue present a conceptual similarity of a degree which, at the very least, must be classified as low. The Board of Appeal consequently erred in refusing to find any conceptual similarity between the signs at issue.
46      It follows from the foregoing that the Board of Appeal 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.
47      In so far as it is on the basis of the incorrect assumption as to the differences in the signs at issue that the Board of Appeal rejected the application for a declaration of invalidity of the mark at issue on the basis of Article 8(1)(b) of Regulation No 207/2009, it follows that that finding is also incorrect.
48      In those circumstances, the second plea must be upheld.
49      Furthermore, it must be noted that, in the course of the examination of the ground for invalidity provided for in Article 53(2)(c) of Regulation No 207/2009, based on the existence of an earlier copyright, the Board of Appeal held, in paragraph 50 of the contested decision, on the basis of reasoning which is not devoid of ambiguity, that ‘for the same reasons as to why the conflicting marks in question are dissimilar’, the contested mark is not a reproduction of the work allegedly protected by copyright. It found that ‘already for this reason the cancellation request [must] be rejected on the grounds of Article 53(2)(c)’.
50      Since the Board of Appeal relied on the incorrect assumption that the signs at issue are different in order to reject the ground for invalidity under Article 53(2)(c) of Regulation No 207/2009, it must be held that it erred in law. Consequently, the third plea must also be upheld.
51      It follows from all of the foregoing considerations that the contested decision must be annulled.
Costs
52      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
53      Since EUIPO has been unsuccessful, inasmuch as the contested decision is annulled, and the applicant has sought an order for costs against it, EUIPO must be ordered to bear its own costs and to pay those incurred by the applicant.
54      Since the intervener has been unsuccessful, he must bear his own costs.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1.      Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 17 January 2017 (Case R 165/2016-4);
2.      Orders EUIPO to bear its own costs and to pay those incurred by Marriott Worldwide Corp.;
3.      Orders Mr Johann Graf to bear his own costs.
Collins
Kancheva
De Baere
Delivered in open court in Luxembourg on 15 March 2018.
E. Coulon
A. M. Collins
Registrar
President
*      Language of the case: English.