CANCELLATION No 9431 C (INVALIDITY)

Marriott Worldwide Corporation, 10400 Fernwood Road, 20817 Bethesda, United States of America (applicant), represented by D Young & Co LLP, 120 Holborn, EC1N 2DY London, United Kingdom (professional representative)

a g a i n s t

Johann Graf, Wiener Strasse 158, 2352 Gumpoldskirchen, Austria (CTM proprietor), represented by Salomonowitz Horak Rechtsanwälte, Tuchlauben 18/9, 1010 Vienna, Austria (professional representative).

On 18/12/2015, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed an application for a declaration of invalidity against part of the goods and services of Community trade mark No 10 511 723 , namely against all the services in Class 43. The application is based on:

• Community trade mark registration No 8 458 259 (‘Griffin Design’),

• UK trade mark registration No 2 536 999 (‘Griffin Design’),

• copyright to the work (‘Griffin Design’) in the United Kingdom.

The applicant invoked Article 53(1)(a) CTMR in connection with Article 8(1)(b) CTMR and Article 8(5) CTMR, Article 52(1)(b) CTMR and Article 53(2)(c) CTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that there is a likelihood of confusion between the contested CTM and its earlier Community and UK trade marks. The marks in dispute are highly similar and the services are identical. In addition, the earlier trade marks enjoy enhanced distinctiveness acquired through use, as proven by the attached evidence. In relation to Article 8(5) CTMR, the applicant argues that the earlier trade marks have reputation and that the public will establish a link between the marks in dispute due to the similarity of the signs and identity of the services. The use of the contested CTM would take unfair advantage of the distinctive character and reputation of the earlier trade marks in the form or ‘free-riding’. The applicant further claims that the contested CTM was filed in bad faith because the marks in dispute are similar and cover the same services, the earlier trade marks enjoy reputation and the CTM proprietor, who is active in the hotel and casino business, had knowledge about the applicant’s reputed trade marks. Finally, it is claimed that the contested CTM infringes the applicant’s UK copyright to the work ‘Griffin Design’ (the same image as the two earlier trade marks) because the applicant is a licensee of that work and because the contested CTM reproduces a substantial part of the protected work.

In support of its observations, the applicant submitted the following evidence:

• Enclosure 1: witness statement in the name of Horace E. Jordan, Jr. relating to the applicant’s business in the European Union and worldwide, including exhibits 1-16.

• Enclosure 2: evidence about the CTM proprietor being the shareholder/owner of the Novomatic group of companies who have interests in hotels and casinos.

• Enclosure 3: database print-outs with details of the earlier CTM No 8 458 259 and the UK trade mark No 2 536 999.

• Enclosure 4: case-law: Och Ziff v OCH Capital, British Sky Broadcasting v Microsoft, C-558/08 Portakabin Ltd and another v Primakabin BV.

• Enclosure 5: case-law: Handi-Craft Company v B Free World & others.

• Enclosure 6: extracts from the Copyright Designs and Patents Act 1988.

• Enclosure 7: case-law: Ladbroke (Football) Ltd v William Hill (Football) Ltd.

• Enclosure 8: license agreement concerning the Griffin Design copyright work.

• Enclosure 9: copy of the original Griffin Design.

• Enclosure 10: further extracts from the Copyright Designs and Patents Act 1988.

• Enclosure 11: agreement concerning the transfer of all the rights in the Griffin Design from Dentsu McGarry Bowen LLC to Marriott International, Inc.

• Enclosure 12: copy of the registration of the Griffin Design at the US Copyright Office.

• Enclosure 13: further extracts from the Copyright Designs and Patents Act 1988 and extracts from the Copyright and Performances (Application to Other Countries) Order 2008.

• Enclosure 14: further extracts from the Copyright Designs and Patents Act 1988.

• Enclosure 15: case-law: Designers Guild Ltd v. Russell Williams (Textiles) Ltd.

In reply, the CTM proprietor denies that the earlier trade marks enjoy enhanced distinctiveness and reputation because the evidence submitted by the applicant refers to the word mark ‘JW Marriott’ or ‘Marriott’ rather than to the earlier figurative marks (Griffin Design). There is no likelihood of confusion because the marks are not similar due to the fact that they depict a different mythological animal, a Gryphon in the case of the earlier mark and a Taurophon in the case of the contested CTM. The applicant refers to the decision of the Swiss Federal Institute of Intellectual Property concerning a parallel dispute between the parties according to which there was no likelihood of confusion between the same trade marks as invoked in the present proceedings. As for Article 8(5) CTMR, the applicant’s claim cannot succeed because the reputation of the earlier trade marks has not been proven. The CTM proprietor rebuts the claim of bad faith by arguing that the marks are not similar and that the CTM proprietor failed to prove the knowledge of the earlier trade marks by the CTM proprietor. Regarding the claim based on copyright, the CTM proprietor argues that the Griffin Design is a mere commercial art that lacks originality and whose copyright protection is very limited, if any. The contested CTM was created independently, without any knowledge of or reference to the Griffin Design. The applicant cannot claim copyright to a concept of a mythological animal, the concept of a Griffin or a silhouette depiction.

In support of its observations, the CTM proprietor submitted the following evidence:

• Exhibit 1: decision No 12840 of the Swiss Federal Institute of Intellectual Property of 17/04/2014.

• Exhibit 2: extract from Wikipedia concerning heraldic beasts.

• Exhibit 3: extract from Wikipedia concerning griffins.

• Exhibit 4: printouts from the website of Golf Hotel de Mont Griffon in France.

• Exhibit 5: printouts from the website of the Hotel ‘Zum Greif’ in Austria.

• Exhibit 6: printouts from the website of the Hotel ‘Greif’ in Austria.

• Exhibit 7: printouts from the website of the Hotel ‘Greif’ in Italy.

• Exhibit 8: printouts from the website of the Austrian province of Styria whose official emblem contains a griffin.

• Exhibit 9: printouts from the website www.gryphongolf.com.

• Exhibit 10: printouts from the website of the Griffin Hotel Glasgow.

• Exhibit 11: printouts from the website of the Griffin Gate Marriott Resort & Spa.

• Exhibit 12: search results from the search engine Google concerning ‘griffin design’.

• Exhibit 13: image search results from the search engine Google concerning ‘Griffin Design’.

• Exhibit 14: printouts from the website www.wax-works.com with examples of silhouettes.

• Exhibit 15: printouts from the website www.de.dreamstime.com with examples of griffins.

In reply to the CTM proprietor’s observations, the applicant argues that the decision of the Swiss Federal Institute of Intellectual Property is irrelevant because different factual and legal circumstances were at stake. In addition, the outcome of the decision did not follow logically from the findings of the office. The applicant denies the CTM proprietor’s criticism on the evidence of reputation and asserts that the evidence indeed relates to the earlier figurative trade marks (Griffin Design). As for bad faith, the applicant reiterates that the marks are similar and that the CTM proprietor was aware of the earlier trade marks. The applicant further reiterates that there is likelihood of confusion between the trade marks and refers to two decisions of the OHIM in which likelihood of confusion was found in cases involving a depiction of a mythological creature. As to the evidence of reputation under Article 8(5) CTMR, the applicant claims that a sufficient proof of reputation of the earlier figurative trade marks was submitted. As far as the copyright claim is concerned, the applicant argues that the Griffin Design is indeed an artistic work that is protected by copyright in the United Kingdom and that the contested CTM reproduces a substantial part of the protected work. It is inconceivable that the huge number of similarities between the contested CTM and the Griffin design have occurred as a result of coincidence.

In support of its observations, the applicant submitted the following evidence:

• Enclosure 1: decision of the Opposition Division of the OHIM in case No B 693 822.

• Enclosure 2: decision of the Boards of Appeal of the OHIM in case No R443/2009-1.

• Enclosure 3: copies of pages from the OHIM’s Guidelines on opposition proceedings.

• Enclosure 4: two drawings which superimpose the Griffin Design and the contested CTM.

• Enclosure 5: case-law: Stoddard International plc v William Lomas Carpets Ltd.

• Enclosure 6: case-law: C-530/12P OHIM v National Lottery Commission.

In its final observations, the CTM proprietor requests the suspension of the proceedings due to the fact that he filed applications for a revocation of both earlier trade marks. In addition, the CTM proprietor repeats that no reputation was proven, that there is no likelihood of confusion, that there was no bad faith at the moment of filing of the contested CTM and that there is no copyright infringement in the present case.

In support of its observations, the CTM proprietor submitted the following evidence:

• Exhibit 16: copy of the application for revocation of CTM No 8 458 259.

• Exhibit 17: copy of the application for revocation of the UK trade mark No 2 536 999.

LIKELIHOOD OF CONFUSION – ARTICLE 53(1)(a) CTMR IN CONNECTION WITH ARTICLE 8(1)(b) CTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically‑linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The application is based on two earlier trade marks, namely CTM No 8 458 259 and UK No 2 536 999. Both trade marks protect the same figurative sign, namely the Griffin Design, and cover the same list of services in Class 43 on which the invalidity application is based. For this reason, both earlier trade marks will be referred to as one mark in singular.

1. The services

The services on which the application is based are the following:

Class 43: 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.

The contested services are the following:

Class 43: Services for providing food and drink; Catering and providing food and drink for cafes, hotels and restaurants.

Contested services in Class 43

Services for providing food and drink are identically included in both lists of services. They are identical.

The contested services catering and providing food and drink for cafes, hotels and restaurants are included in the applicant’s broad category services for providing food and drink and are, therefore, considered to be identical.

2. The signs

Earlier trade mark	Contested trade mark

The relevant territory is the European Union, including the United Kingdom.

Visually, the signs are similar to the extent that they depict a winged animal with a curved tail, sitting on its hind legs and resting on its front legs, all shown from the left side and depicted as a black on white silhouette.

On the other hand, the marks differ in the depiction of the head in the upper left part of the signs. The earlier trade mark depicts a bird’s head with a beak whereas the contested sign contains a bulls head with two horns. There is a further difference in the depiction of the front legs of the animal, being a bird’s leg with bird’s talons in the earlier trade mark and a leg resembling a lion’s or dog’s leg in the contested mark.

Purely figurative marks are not subject to an aural assessment. As both marks are purely figurative, it is not possible to compare them aurally.

Conceptually, the public in the relevant territory will perceive the earlier mark as a griffin, namely a mythological creature with the body, tail and back legs of a lion and the head, wings and talons of an eagle. The contested sign will be perceived as a winged creature with the head of a bull and the body and tail resembling that of a lion or a dog. Consequently, the marks are conceptually similar to the extent they represent an invented (mythological) sitting creature with wings and a tail, consisting of parts of different animals. The marks are conceptually dissimilar to the extent that they depict a different creature: one that contains parts of a bird (eagle) and one that contains parts of a bull.

Taking into account the abovementioned visual and conceptual coincidences, it is considered that the signs are similar to a certain extent.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The marks have no elements which could be considered clearly dominant (visually eye‑catching) or more distinctive than other elements.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the applicant, the earlier trade mark has a reputation in the European Union, including United Kingdom, for all the services on which the application for invalidity is based. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion (judgment of 11/11/1997, C‑251/95, ‘SABEL’), and, therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (judgment of 29/09/1998, C‑39/97, ‘Canon’).

The applicant filed the following evidence:

Enclosure 1: witness statement by Horace E. Jordan, Jr., Vice President of the applicant’s company, dated 02/06/2014, relating to the applicant’s business in the European Union and worldwide, including exhibits 1-16:

• Exhibit 1: details of nineteen different brands operated by the Marriott group of companies worldwide.

• Exhibit 2: copies of several pages of the 2012 annual report of Marriott International, Inc.

• Exhibit 3: details of the three JW Marriott hotels in the European Union (UK, France, Romania) and examples of use of the Griffin Design within these hotels.

• Exhibit 4: samples of marketing communications to members of the Marriott Rewards program.

• Exhibit 5: articles from the websites www.hotelnewsnow.com, www.internetretailer.com and www.marriott.com with information about the ranking of the website www.marriott.com among the world’s largest online consumer retail websites and the ranking of Marriott in Internet Retailer Mobile Commerce Top 300 guide.

• Exhibit 6: examples of the applicant’s griffin designs used earlier.

• Exhibit 7: copy of the original drawing of the Griffin Design.

• Exhibit 8: agreement concerning the assignment of ownership and of all rights in the work ‘Griffin Design’ from Dentsu McGarry Bowen LLC to Marriott International LLC.

• Exhibit 9: copy of the certificate evidencing the copyright registration of the Griffin Design at the US Copyright Office.

• Exhibit 10: license agreement between the applicant and Marriott International LLC concerning the copyright in the Griffin Design.

• Exhibit 11: print-outs from the applicant’s website which advertise the applicant’s hotels in the EU and show use of the Griffin Design.

• Exhibit 12: archived webpages obtained from the Wayback Machine which demonstrate use of the Griffin Design in 2009-2012.

• Exhibit 13: advertising and marketing materials showing use of the Griffin Design.

• Exhibit 14: documents concerning casinos associated with or adjacent to Marriott’s hotels and resorts around the world.

• Exhibit 15: documents concerning casinos associated with or adjacent to hotels under Marriott’s brands in the EU.

• Exhibit 16: documents concerning third parties’ casinos associated with hotels.

The witness statement mentions, in essence, that the applicant’s company belongs to the Marriott group of companies that operate or franchise a large number of hotels, resorts, vacation clubs and apartments worldwide under nineteen different brands. The Griffin Design is used in conjunction with the ‘JW Marriott‘ brand. The applicant operates three hotels under that brand in the European Union (UK, France and Romania) where the Griffin Design is used. The Marriott group of companies operates a successful Marriott Reward program (a system for providing loyalty incentives) having a large number of members worldwide, including from the EU. Marriott Reward members receive regular marketing communications which include also the ‘JW Marriott‘ brand and the Griffin Design. The total yearly advertising expenditure of the Marriott group of companies was between 31 and 57 million USD in 2009-2012. The website www.marriott.com received dozens of millions of visits per year in 2009-2013 that generated hundreds of millions USD in revenue. It is a successful website with a high position in industry rankings. Customers from the EU stay at hotels of the Marriot group both within the EU and elsewhere around the world. In 2009-2013, there were between approximately 4,2 and 5,1 million room-nights reserved per year by individuals with an address in the European Union, generating a yearly revenue in excess of 660 million USD. The annual combined gross sales for the three ‘JW Marriott‘ hotels featuring the Griffin Design located in the EU was between 118 and 166 million USD in 2009-2012. The ‘JW Marriott‘ brand has had reservation telephone lines in a number of EU countries since 1996.

It is further mentioned in the witness statement that the applicant’s company first adopted and used the design of a griffin in conjunction with the provision of hotel services in 1988 and in 2009, it began to use the current Griffin Design, including in the European Union. Further examples of use of the Griffin Design in the EU are attached as exhibits 11-13 (website printouts and marketing materials).

Having examined all the material listed above, the Cancellation Division concludes that the evidence submitted by the applicant does not demonstrate that the earlier trade mark acquired reputation or a high degree of distinctiveness through use.

In its witness statement, the applicant provided impressive figures which however do not relate to the Griffin Design but mostly to the whole global business of the Marriott group under nineteen different brands. The Griffin Design is used only in conjunction with one of these brands, namely ‘JW Marriott’. In the whole European Union, there are only three ‘JW Marriott’ hotels where (or in relation to which) the Griffin Design is used. In addition, it is apparent from the evidence that the Griffin Design is mostly used only as a complement to the main brand ‘JW Marriott’ or ‘Marriott’. Finally, the evidence shows that the ‘JW Marriott’ hotels are luxury hotels which means that only a limited portion of the relevant public can actually get in touch with the hotel services offered under the Griffin Design.

On the whole, although the evidence shows a certain degree of use of the Griffin Design, it is far from proving reputation or enhanced distinctiveness acquired through use. There is no clear proof of the degree of knowledge of the Griffin Design by the relevant public in the European Union or the United Kingdom. Consequently, the applicant failed to prove reputation or enhanced distinctiveness acquired through use for both earlier trade mark registrations.

Consequently, assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Relevant public – level of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. Furthermore, the average consumer’s level of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical target either the public at large or business consumers with specific professional knowledge or expertise. The degree of attention will be from average to high.

6. Global assessment, other arguments and conclusion

The services in dispute are identical.

The enhanced distinctiveness of the earlier trade mark has not been proven. The earlier trade mark’s level of distinctiveness per se is average. In this respect it should be noted that the earlier trade mark enjoys protection for a particular depiction of a particular animal (a griffin) and not for the concept of any mythological animal or for any silhouette-type depiction of an animal.

The degree of attention of the relevant public will vary between average and high.

The marks have some visual and conceptual similarities. However, the public will clearly perceive that the marks in dispute depict different animals or mythological creatures. The difference in the head and the front legs of the animal is quite evident. The overall impression created by the marks is such that it is unlikely that the public would confuse the commercial origin of the identical services in Class 43.

The applicant refers to two decisions of the OHIM in which likelihood of confusion was found in cases involving a depiction of a mythological creature. However, unlike in the present case, those decisions concerned the depiction of the same mythological animal, namely a winged horse and a dragon. In the present case, the depicted animal is different. Consequently, the decisions relied upon by the applicant are not persuasive of likelihood of confusion in the present case.

Considering all the above, the Cancellation Division finds that there is no likelihood of confusion on the part of the public. Therefore, the cancellation application on the grounds of Article 53(1)(a) CTMR in conjunction with Article 8(1)(b) CTMR and based on both earlier trade marks must be rejected.

REPUTATION – ARTICLE 53(1)(a) CTMR IN CONNECTION WITH ARTICLE 8(5) CTMR

According to Article 8(5) CTMR, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2) CTMR, the contested trade mark shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) CTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) CTMR (judgment of 16/12/2010, joined cases T‑345/08 and T‑357/08, ‘BOTOCYL’, paragraph 41).

The evidence submitted by the applicant to prove the reputation of the earlier trade marks has already been examined above under the grounds of Article 8(1)(b) CTMR. Reference is made to those findings, which are equally valid for Article 8(5) CTMR.

Consequently, since the applicant failed to prove reputation of both earlier trade marks, the cancellation application on the grounds Article 53(1)(a) CTMR in conjunction with Article 8(5) CTMR must be rejected.

BAD FAITH – ARTICLE 52(1)(b) CTMR

General principles

Article 52(1)(b) CTMR provides that a Community trade mark will be declared invalid where the applicant was acting in bad faith when it filed the application for the trade mark.

There is no precise legal definition of the term ‘bad faith’, which is open to various interpretations. Bad faith is a subjective state based on the applicant’s intentions when filing a Community trade mark. As a general rule, intentions on their own are not subject to legal consequences. For a finding of bad faith there must be, first, some action by the CTM proprietor which clearly reflects a dishonest intention and, second, an objective standard against which such action can be measured and subsequently qualified as constituting bad faith. There is bad faith when the conduct of the applicant for a Community trade mark departs from accepted principles of ethical behaviour or honest commercial and business practices, which can be identified by assessing the objective facts of each case against the standards (Opinion of Advocate General Sharpston of 12/03/2009, C‑529/07, ‘Chocoladenfabriken Lindt & Sprüngli’, paragraph 60).

Whether a CTM proprietor acted in bad faith when filing a trade mark application must be the subject of an overall assessment, taking into account all the factors relevant to the particular case (judgment of 11/06/2009, C‑529/07, ‘Chocoladenfabriken Lindt & Sprüngli’, paragraph 37).

The burden of proof of the existence of bad faith lies with the invalidity applicant; good faith is presumed until the opposite is proven.

Outline of the relevant facts

The applicant bases its claim on the assertions that the marks are similar, the services are identical, that the earlier trade marks enjoy reputation and the CTM proprietor had knowledge about the applicant’s reputed trade marks because he is active in the hotel and casino business.

Assessment of bad faith

The applicant did not prove or even claim any previous relationship between the CTM proprietor and the applicant. It did not prove that the CTM proprietor was actually aware of the earlier trade marks either.

As stated in case-law, the fact that the CTM proprietor knows or must know that the invalidity applicant has been using an identical/similar sign for identical/similar goods for which a likelihood of confusion may arise is not sufficient for a finding of bad faith (judgment of 11/06/2009, C‑529/07, ‘Chocoladenfabriken Lindt & Sprüngli’, paragraph 40). In order to determine whether there was bad faith, the CTM proprietor’s intentions at the time of filing must also be taken into account.

Moreover, as found in the previous sections of this decision, the marks are not similar to the extent that there would be a likelihood of confusion. Furthermore, it has not been proven that the earlier trade marks enjoy reputation.

Finally, the applicant failed to prove any dishonest intention on the part of the CTM proprietor at the moment of filing of the contested CTM.

Overall, the bad faith claim of the applicant is based solely on vague assertions which are not supported by any conclusive evidence. The applicant failed to prove that the CTM proprietor was acting in bad faith when he filed for the contested CTM.

Conclusion

In the light of the above, the Cancellation Division concludes that the application on the ground of Article 52(1)(b) CTMR should be rejected.

COPYRIGHT – ARTICLE 53(2)(c) CTMR

According to Article 53(2)(c) CTMR, a Community trade mark shall be declared invalid on application to the Office where the use of such trade mark may be prohibited pursuant to another earlier right under the Community legislation or national law governing its protection, and in particular copyright.

Pursuant to Rule 37 CTMIR, the application for a declaration of invalidity must contain particulars of the right on which the application is based and particulars showing that the applicant is the proprietor of an earlier right as referred to in Article 53(2) CTMR or that it is entitled under the applicable national law to claim that right.

The applicant has proven that the work at issue, namely the Griffin Design, was created on or about 15/05/2009 by employees of Dentsu McGarry Bowen LLP, an advertising agency in the U.S.A., and that the ownership and all rights in the work were transferred to Marriott International, Inc. The applicant in the present case is a wholly owned subsidiary of that company and has been granted a non-exclusive license to exercise and enforce the copyright in the Griffin Design. The work was first published in the US in 2009 and was registered at the US Copyright Office in the name of Marriott International, Inc. on 19/03/2010.

The applicant also submitted provisions of the relevant national law in the United Kingdom, namely the Copyright Designs and Patents Act 1988 (‘CDPA’), Copyright and Performances (Application to Other Countries) Order 2008 SI 2008/677 and relevant case-law, that govern the protection of the above work in the United Kingdom.

The applicant claims that under UK law, and namely the case Ladbroke (Football) Ltd vs. William Hill (Football) Ltd, a work is original if the author has created the work through his own skill, judgment and individual effort and not copied from other works. It is also claimed that whilst the contested CTM is not an exact reproduction of the Griffin Design, under section 16 and 17 of the CDPA copyright is infringed when a ‘substantial part’ of a protected work is reproduced. The question of what constitutes a substantial part of a protected work is a matter of quality not quantity (Designers Guild v. Russell Williams (Textiles) Ltd). According to the same case-law, the ‘part’ which is regarded as substantial can be a feature or combination of features of the work, abstracted from it rather than forming a discrete part. Those features which have allegedly been copied have to be examined by comparing the two designs visually, noting the similarities and the differences. The purpose of the examination is not to see whether the overall appearance of the two designs is similar but to judge whether the particular similarities relied on are sufficiently close, numerous or extensive to be more likely to be the result of copying than of coincidence. It is at this stage that similarities may be disregarded because they are commonplace, unoriginal, or consist of general ideas.

In the present case, the Cancellation Division considers that the Griffin Design invoked by the applicant is composed of quite common features. It is common knowledge that a winged mythological animal or a mythological animal composed of parts of two (or more) different animals is a known idea. The depiction of the Griffin Design, namely a sitting animal with a curved tail, protruding front legs and the head positioned in the upper left, all shown from the lefts side in a black on white silhouette, contains visual features known from other existing images of animals or mythological creatures used for example in emblems or coats-of-arms. Consequently, the Griffin Design enjoys only a very low degree of originality and its copyright protection is very limited. The Cancellation Division also takes note of the examples of third party images of animals depicted in black on white silhouette or images of other griffins presented by the CTM proprietor.

It follows from the visual comparison between the Griffin Design and the contested CTM that there are both visual similarities and differences. Taking into account that the Griffin Design consists of features with very little originality, the existing similarities between the two designs are more likely to be a coincidence than the result of copying. It is, therefore, considered that the contested CTM does not reproduce a substantial part of the Griffin Design and that it does not constitute a copyright infringement under the UK law. Consequently, the applicant’s claim under Article 53(2)(c) CTMR must be dismissed.

FINAL CONCLUSION

Since the applicant did not succeed on any counts, the invalidity application must be rejected in its entirety.

In view of this outcome, it is not necessary to suspend the current proceedings due to the pending revocation proceedings against both earlier trade marks.

COSTS

According to Article 85(1) CTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the costs incurred by the CTM proprietor in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(iv) CTMIR, the costs to be paid to the CTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Volker Timo MENSING

Vít MAHELKA

Anna BAKALARZ

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 has been paid (Article 2(30) CTMFR).