DECISION

of the Fourth Board of Appeal
of 17 January 2017

In Case R 165/2016-4

Marriott Worldwide Corporation
10400 Fernwood Road Bethesda, Maryland 20817 United States of America	Appellant / Cancellation Applicant

represented by D Young & Co LLP, 120 Holborn, London EC1N 2DY, United Kingdom

v

Johann Graf
Wiener Straße 158 A-2352 Gumpoldskirchen Austria	Respondent / EUTM Proprietor

represented by Salomonowitz Horak Rechtsanwälte, Tuchlauben 18/9, Wien 1010, Austria

APPEAL relating to Cancellation Proceedings No 9431 C (European Union trade mark No 10 511 723)

The Fourth Board of Appeal

composed of D. Schennen (Chairperson), L. Marijnissen (Rapporteur) and C. Bartos (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. On 18 April 2012, Johann Graf (‘the EUTM proprietor’) obtained registration of the figurative mark

as a European Union trade mark for goods and services in Classes 14, 32, 33 and 43 including the following services:

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

2. On 6 June 2014, Marriott Worldwide Corporation (‘the cancellation applicant’) filed an application for a declaration of invalidity of the European Union trade mark. It invoked Article 53(1)(a) EUTMR as a relative ground for invalidity, alleging that the European Union trade mark had been registered contrary to Article 8(1)(b) EUTMR and Article 8(5) EUTMR. It also invoked as a relative ground Article 53(2)(c) EUTMR arguing that use of the contested mark in the UK was an infringement of the copyright in the Griffin Design. As an absolute ground for invalidity it invoked Article 52(1)(b) EUTMR alleging that the EUTM proprietor was acting in bad faith when it filed the application for the trade mark.

3. The application for a declaration of invalidity was directed against part of the goods and services for which the European Union trade mark was registered, namely against the services in Class 43 as detailed in paragraph 1 above, and was based on the following earlier marks:

1. European Union trade mark No 8 458 259 for the figurative mark

registered on 31 January 2010 for, among others, the following services:

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.

Reputation was claimed for all these services.

2. UK trade mark No 2 536 999 for the figurative mark

registered on 30 April 2010 for, among others, the following services:

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.

Reputation was claimed for all these services.

4. In support of the claimed reputation of the earlier marks the cancellation applicant submitted a witness statement with Exhibits from Horace E. Jordan, Vice President of the cancellation applicant dated 2 June 2014. He states that Marriott operates or franchises worldwide chains of hotels, resorts, vacations clubs and apartments under nineteen different brands. The griffin design as depicted in the earlier marks (‘the Griffin Design’) is used in conjunction with Marriott’s JW MARRIOT brand. Marriott operates three hotels in the EU under the JW MARRIOTT brand, namely in the UK (London), France (Cannes) and Romania (Bucharest). Details of these hotels and examples of use of the Griffin design within these hotels are shown. He further explains that Marriott operates the Marriott Rewards program, the world’s largest multi-brand frequent guest program. Samples of marketing communications are shown. Occasionally and among the other brands reference is made to the JW MARRIOTT brand in combination with the Griffin Design. Without any specification, reference is made to the total of worldwide expenditures for all advertising, promotion and public relation costs for the MARRIOTT brand including JW MARRIOTT and the Griffin Design. Reference is made to the number of visitors and the revenues generated by these visits for the website www.marriott.com. Figures are provided as regard the total number of room-nights reserved at all hotels within the Marriott group of hotels worldwide by individuals with an address in the EU. He also refers to the annual combined gross sales for the three JW MARRIOTT branded hotels which feature the Griffin Design located in the EU from 2009 to 2012 with an average of USD 130 million for each year.

5. As regards the claimed copyrights, in the same witness statement Mr Jordan states that his company first adopted and used the design of a griffin in 1988. Examples of earlier griffin designs are shown (Exhibit 6 to the witness statement). He explains that the Griffin Design as protected by the earlier marks was created on or about 15 May 2009 by employees of the US advertising agency Dentsu McGarry Bowen LLC (‘McGarry Bowen’) pursuant to an agreement between this agency and Marriott International, Inc. of which the cancellation applicant is a wholly owned subsidiary. He refers to a loose sheet with a drawing of the Griffin Design as protected by the earlier marks, undated and entitled ‘Exhibit A, Image of New Griffin Logo’ with the name ‘mcgarrybowen’ in the right upper corner stating that this is a copy of the original drawing of the Griffin Design (Exhibit 7 to the witness statement). Also, reference is made to an agreement signed between Marriott International Inc. and MacGarryBowen, LLC assigning the ownership of all the rights in the ‘works made for hire’ dated July 2003 (Exhibit 8 to the witness statement). He further states that the Griffin Design was registered at the US Copyright Office in the name of Marriott International, Inc. under registration No. VAu 1-017-211 on 19 March 2010; reference is made to the Certificate of Registration indicating ‘Title of Work: Griffin design’ (Exhibit 9 to the witness statement). He explains that Marriott International, Inc. has granted a non-exclusive licence to the cancellation applicant to exercise and enforce the copyright in the Griffin Design referring to a copy of this licence agreement, dated 24 April 2014, which makes reference to ‘the attached Griffin design’ but does not include any attachments (Exhibit 10 to the witness statement).

6. As further evidence in support of the copyright claim the cancellation applicant submitted extracts from the UK Copyright Designs and Patents Act 1988, Copyright Performances (Application to Other countries) Order 2008 and some UK case-law.

7. By decision of 18 December 2015, the Cancellation Division rejected the application for declaration of invalidity and ordered the cancellation applicant to bear the costs.

8. As regards Article 53(1) EUTMR in conjunction with Article 8(1)(b) EUTMR it reasoned that the conflicting services were identical and that the marks had some visual and conceptual similarities. However, the public would clearly perceive that the marks in dispute depicted different animals or mythological creatures. It was not possible to compare them aurally. The evidence submitted did not prove reputation or enhanced distinctiveness acquired through use for the earlier marks. The impressive figures provided did not relate to the earlier marks, the so-called Griffin Design, but to the whole global business of the Marriott group under nineteen different brands. The Griffin Design was used only in conjunction with one of these brands, namely ‘JW Marriott’. In the EU there were only three ‘JW Marriott’ hotels in relation to which the Griffin Design was used and only as a complement brand to the main brand ‘JW Marriott’ or ‘Marriott’. Finally, the evidence showed that the ‘JW Marriott’ hotels were luxury hotels which meant that only a limited portion of the relevant public could actually get in touch with the hotel services offered under the Griffin Design. There was no clear proof of the degree of knowledge of the Griffin Design by the relevant public in the European Union or the United Kingdom. The inherent distinctiveness of the earlier marks was normal. The degree of attention of the relevant public (the public at large and business consumers) varied from average to high. It concluded that there was no likelihood of confusion and that the cancellation request had to be rejected on the grounds of Article 8(1)(b) EUTMR.

9. As regards Article 53(1) EUTMR in conjunction with Article 8(5) EUTMR it reasoned that reputation was not proven for which reason the cancellation request on these grounds had to be rejected.

10. As regards Article 52(1)(b) EUTMR, it reasoned that the cancellation applicant’s bad faith claim was based solely on vague assertions which were not supported by any conclusive evidence. The cancellation applicant failed to prove that the EUTM proprietor was acting in bad faith when he filed for the contested mark. The cancellation request was also rejected on this ground.

11. Furthermore, the last ground invoked also failed. As regards Article 53(2)(c) EUTMR the Cancellation Division reasoned that the cancellation applicant had proven that the Griffin Design was created by employees of an advertising agency in the US in 2009; that the ownership and all rights in the work were transferred to Marriot International, Inc. The cancellation applicant was a wholly owned subsidiary of that company and had been granted a non-exclusive licence to exercise and enforce the copyright in the Griffin Design. The work was first published in the US in 2009 and registered at the US Copyright Office in the name of Marriott International, Inc. on 19 March 2010. The cancellation applicant also submitted provisions of the relevant national law in the UK and relevant case-law that governed the protection of the work in the UK. It reasoned that the Griffin Design enjoyed only a very low degree of originality and its copyright protection was very limited. The depiction of it contained visual features known from other existing images or animals or mythological creatures used for example in emblems or coats-of-arms. The Cancellation Division also took note of the examples of third party images of animals depicted in black and white silhouettes or images of other griffins as presented by the EUTM proprietor. It concluded that the existing similarities were more likely to be a coincidence than the result of copying, that the contested mark did not reproduce a substantial part of the Griffin Design and that it, therefore, did not constitute a copyright infringement under UK law.

Submissions and arguments of the parties

12. On 25 January 2016, the cancellation applicant filed a notice of appeal, followed by a statement of grounds on 18 April 2016.

13. As regards Article 53(1) in conjunction with Article 8(1)(b) EUTMR it argues that the conflicting services are directed at the public at large with a normal level of attention. The earlier marks are not only exposed to a limited portion of the relevant public which can afford to get in touch with the luxury JW Marriott hotels as the public at large may go there for instance for a drink. The evidence submitted proves that the earlier marks have acquired distinctiveness. Additional witness statements are submitted. They refer to the three JW Marriot hotels in Europe with Griffin statues in their lobby and the Griffin Design on swizzle sticks, in the lobby, on social media pages, on room key cards, on stationery, on door hangers, on in-room dining cards and on slippers. It argues that even if the Griffin Design had been used only with the mark ‘JW Marriott’, this does not mean that the Griffin Design could not have acquired its own distinctive character as a trade mark in its own right. The services are identical and the signs are similar. They both depict winged, mythical creatures in black silhouettes and consumers will recall these similarities much more than any minor difference between the marks such as their respective heads. It concluded that there would be a likelihood of confusion.

14. As regards Article 53(1) EUTMR in conjunction with Article 8(5) EUTMR it repeats that reputation of the earlier marks has been proven.

15. As regards the bad faith claim pursuant to Article 52(1)(b) EUTMR it argues that if the Cancellation Division had correctly assessed the likelihood of confusion between the marks and the extent of the reputation of the Griffin Design, it would have appreciated that the contested mark was filed in bad faith.

16. As regards the copyright claim pursuant to Article 53(2)(c) EUTMR it argues that the Griffin Design is an original work which enjoys full copyright protection in the UK without any limitation. From the two superimposed drawings:

it can be seen that without the heads, the two mythical creatures depicted in the Griffin Design and the contested mark are virtually identical. Under UK copyright law, once a sufficient inference of copying has been made, the burden of proof on showing no copying falls on the alleged copyist. Given the complete silence of the EUTM proprietor in this respect, a UK court would assume that there had been copying. It would then decide whether a substantial part of the copyright had been reproduced. The EUTMR proprietor has qualitatively and quantitatively reproduced a substantial part of the Griffin Design.

17. In reply, the EUTM proprietor requests that the Board reject the appeal and order the cancellation applicant to bear the costs.

18. As regards Article 53(1) EUTMR in conjunction with Article 8(1)(b) EUTMR it argues that enhanced distinctiveness or reputation of the earlier mark was not proven. The submitted numbers and evidence relate to the whole Marriott group and its nineteen different brands; the Griffin-mark is almost exclusively used in combination with the word mark ‘JW Marriott’; there are only four hotels in Europe using the name ‘JW Marriott’ in combination with the Griffin-mark and even there it is merely used as decorative. It argues that no genuine use of the earlier marks has been proven, let alone enhanced distinctiveness or reputation. The distinctive character of the earlier marks would be low as they represent a known animal from mythology in a black and white silhouette. Its scope of protection is limited to the very specific representation of the mark as such. Moreover, the marks are different, the earlier ones dominated by the head of an eagle aligned to the left, the contested one by the head of a bull facing forward. The earlier marks represent a Griffin which is a common feature, the contested mark is a newly created animal not common to the public. Also, the earlier marks have feathers and claws, the contested mark has no feathers and two paws. The fact that both marks use a black on white silhouette is not, by itself, distinctive as it is a common method to draw the viewer’s eye to the depicted item.

19. As regards the ground of Article 53(1) EUTMR in conjunction with Article 8(5) EUTMR it argues that no reputation had been proven.

20. As regards the bad faith claim, Article 52(1)(b) EUTMR, it argues that the cancellation applicant still has not provided any specifics or new arguments for this allegation. It only refers to the fact that the marks would be confusingly similar which in itself is incorrect.

21. As regards the copyright claim pursuant to Article 53(2)(c) EUTMR it argues that the Griffin-logo lacks originality as it shows a commonly known mythological animal as a silhouette. All elements are characteristics of Griffins and no creative step can be recognised. Concepts (such as animals depicted as a silhouette) do not enjoy copyright protection by itself. The contested mark depicts a bull with large horns and wings; it has no predecessor in ancient history, heraldic art or common mythology. The EUTM proprietor denies that it has copied the Griffin-logo. It has created a completely new ‘mystical animal’. Any marginal similarities are only coincidence; no substantial parts were reproduced.

Reasons

22. The appeal is admissible but not well founded. The cancellation request shall be rejected on all the grounds and all the earlier rights invoked.

Article 53(1) EUTMR in conjunction with 8(1)(b) EUTMR

23. Pursuant to Article 53(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR, a European Union trade mark shall be declared invalid on application to the Office by the proprietor of an earlier European Union trade mark or national trade mark if because of its identity with or similarity to the earlier trade mark and, cumulatively, 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.

24. The cancellation request is based on an earlier EUTM and an earlier UK mark. Both marks protect the same sign and the same services in Class 43 on which the cancellation request is based. The relevant territory for analysing the likelihood of confusion is the European Union, including the UK. The relevant public concerns the public at large.

25. The assessment of the visual, phonetic or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23; 06/10/2005, C‑120/04, Thomson Life, EU:C:2005:594, § 28).

26. The signs to be compared are the following:

Contested mark	Earlier marks

27. The contested figurative mark consists of a black winged silhouette showing the head of a bull with two horns and a body, paws and tail which may belong to a lion. The silhouette is depicted in a sitting position with the head of it facing forward.

28. The earlier figurative marks consist of a black silhouette of a Griffin, a mythical creature with the body, tail and back legs of a lion; the head and wings of an eagle; and an eagle’s talons as its front feet. The feathers of the ‘eagle parts’ are clearly visible. The silhouette is depicted in a sitting position the head of it aligned to the left.

29. Visually, the marks represent completely different figures characterised by very different features. The mere fact that the two devices represent a black silhouette, that the features concerned are animal-like and that the figures are positioned in a rather standard sitting position does not render the marks similar. The marks are dissimilar from a visual point of view.

30. Aurally, as the marks are not pronounced, a comparison cannot be made.

31. Conceptually, the earlier marks represent a Griffin, a mythical creature portrayed as a mix between an eagle and a lion as described above. The contested mark is a combination of features from three different animals together resulting in a fanciful creature which cannot be ascribed to any particular type of animal, including any known mythological one. The marks are not similar from a conceptual point of view.

32. For a cancellation request to succeed on Article 8(1)(b) EUTMR, the conditions that the marks are similar or identical and that the goods and services are similar or identical are cumulative. If the conflicting marks are not similar, the cancellation request remains unsuccessful for that ground already, regardless of the degree of similarity or even an identity of the goods or services or the reputation or enhanced distinctiveness of the earlier mark (07/05/2009, T‑185/07, CK Creaciones Kennya, EU:T:2009:147, § 54; 19/11/2008, T‑6/07, Nanolat, EU:T:2008:515, § 49; 11/11/2009, T‑162/08, Green by missako, EU:T:2009:432, § 51-54; 14/10/2009, T‑140/08, TiMiKinderjoghurt, EU:T:2009:400, § 53, 61 as confirmed by 24/03/2011, C‑552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 65-68; 23/01/2014, C‑558/12 P, Western Gold, EU:C:2014:22, § 50).

33. It follows that the cancellation request shall be rejected on the grounds of Article 8(1)(b) EUTMR.

Article 53(1) EUTMR in conjunction with Article 8(5) EUTMR

34. Pursuant to Article 53(1)(a) in conjunction with Article 8(5) EUTMR, a European Union trade mark shall be declared invalid if the following cumulative conditions are fulfilled: first, that the earlier mark is identical or similar to the mark applied for; secondly, that the earlier mark has a reputation in the territory in which it is registered; thirdly, that there is a risk that the use of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark; and fourthly, that the use of the younger mark would be without due cause. These conditions are cumulative and failure to satisfy one of them is sufficient to render that provision inapplicable (25/05/2005, T‑67/04, Spa-Finders, EU:T:2005:179, § 30).

35. Both earlier marks are also invoked on this ground. As reasoned above, the conflicting marks are dissimilar and thus the first condition mentioned in the previous paragraph has not been fulfilled. The cancellation request shall be rejected on the grounds of Article 8(5) EUTMR for this reason already (24/03/2011, C‑552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 51, 54, 65).

36. Moreover, the cancellation request must be rejected on these grounds as reputation of the earlier marks has not been proven.

37. The evidence submitted in support of the claimed reputation by the cancellation applicant at first instance, see paragraph 4 above, has also been summarised in detail on pages 6 and 7 of the contested decision. The Board fully endorses, and explicitly refers to, the Cancellation Division’s reasoning as to why the submitted evidence does not prove the reputation of the earlier marks.

38. In this respect the Board emphasizes that the evidence indicates that the cancellation applicant belongs to the Marriott group of companies that operates or franchises a large number of hotels, resorts, vacation clubs and apartments worldwide under nineteen different brands. Amongst these nineteen brands is the brand ‘JW MARRIOT’ used for a very exclusive range of Marriott hotels. Within the EU there are only three ‘JW MARRIOTT’ hotels operated by the cancellation applicant, in London, Bucharest and Cannes.

39. The sign protected by the earlier marks, the Griffin Design, always and exclusively appears in conjunction with this exclusive ‘JW MARRIOT’ brand, see for instance:

This is indicated in the witness statement of Mr Jordan and this is shown by the evidence submitted by the cancellation applicant concerning the three ‘JW MARRIOTT’ hotels themselves but also where the brand ‘JW MARRIOTT’ appears for instance in marketing communications such as those related to the Marriott Rewards program occasionally showing the ‘JW MARRIOT’ brand amongst a number of others. In none of these communications, as in the other advertising and marketing material presented, are the earlier marks shown independently from the words ‘JW MARRIOT’, the latter always being clearly visible and present as the word mark to which the consumers refer. The very few examples of the earlier marks appearing on their own as referred to in the witness statements submitted in the appeal do not prove that the marks are used independently as a trade mark. The use for instance of a Griffin as a statue in the lobby of the hotel and on a swizzle stick will merely be perceived by the relevant consumer as decoration and not as trade mark use. As regards other examples referred to there is always a clear and close connection with the mark ‘JW MARRIOT’, for instance on the bag holding the slippers or on the reverse side of the room key cards.

40. There is no objective and reliable evidence on file as regards the degree of knowledge of the ‘stand-alone’ Griffin Design as protected by the earlier marks. Apart from the fact that the figures in the witness statement of Mr Jordan mostly refer to the ‘MARRIOTT’ business as a whole without specifying the specific brands, these figures are part of a witness statement issued by the cancellation applicant itself and are not supported by any objective and independent evidence. For this reason the probative value is extremely limited. More specifically the witness statement refers to the annual combined gross sales for the three ‘JW MARRIOTT’ branded hotels but here the same evidential restrictions apply. Moreover, as the Griffin Device is always used in close connection with the mark ‘JW MARRIOT’ these figures are not conclusive at all as regards the recognition of the Griffin Device as a mark as such. A possible reputation of the mark ‘MARRIOTT’ or even ‘JW MARRIOT’ does not automatically apply to the other elements which are used in combination. As correctly decided by the Cancellation Division, there is no evidence on file which could allow for a conclusion to be drawn as regards to the proportion of the relevant public who identifies the earlier services as originating from the cancellation applicant’s undertaking because of the use of the earlier marks, i.e. the Griffin Design on its own.

41. In this respect the Board underlines that the relevant public for the services concerned is the EU and UK public at large which is much broader than the public targeted by and interested in the three luxury and exclusive hotels for which a the mark ‘JW MARRIOTT’ is used, this mark being the only one of the Marriot group of hotels using the earlier marks in combination with it.

Article 52(1)(b) EUTMR – Bad faith

42. The Cancellation Division reasoned that the cancellation applicant failed to prove that the EUTM proprietor was acting in bad faith when it filed for the contested mark; in fact, it failed to prove any dishonest intention on the part of the EUTM proprietor. The Board fully endorses this reasoning to which explicit reference is made.

43. The only argument raised in the appeal by the cancellation applicant against this part of the decision is that if the Cancellation Division had correctly assessed the likelihood of confusion between the marks and the extent of the reputation of the Griffin Design, it would have appreciated that the contested mark was filed in bad faith.

44. This argument obviously fails. First of all, as reasoned above, because of the dissimilarity between the signs there is indeed no likelihood of confusion and reputation of the earlier marks has not been proven. Moreover, even if the contrary were true, the mere existence of a likelihood of confusion and a reputation of the earlier marks does not justify the conclusion that the application was filed in bad faith. For a finding of bad faith there must be in the first place some action by the EUTM proprietor which clearly reflects a dishonest intention, this being a subjective factor that has to be determined by reference to objective circumstances (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 42). By no means, the cancellation applicant has proven that such a dishonest intention on the part of the EUTM proprietor existed at the filing date of the contested mark.

45. It follows that the cancellation request shall be rejected on the grounds of Article 52(1)(b) EUTMR.

Article 53(2)(c) EUTMR – Copyright

46. According to Article 53(2)(c) EUTMR, a European Union trade mark shall be declared invalid on application to the Office where the use of such trade mark may be prohibited pursuant to an earlier copyright. The cancellation request on this ground fails for different reasons.

47. The cancellation applicant claims that it would be entitled to prohibit use of the contested mark on the basis of the earlier copyright in the Griffin Design as protected by the earlier marks. It argues that according to the relevant legal provisions of the UK Copyright Designs and Patents Act 1988 ( the ‘CDPA’):

1. Copyright is a property right which subsists in, inter alia, original artistic works. ‘Artistic work’ means (a) a graphic work, photograph, sculpture or collage, irrespective of artistic quality, (b) a work of architecture being a building or a model for a building, or (c) a work of artistic craftsmanship (sections 1 and 4 of the CDPA);

2. Copyright in a work is infringed by a person who without the license of the copyright owner does any of the acts restricted by the copyright which acts include to copy the work (section 16 (1) and (2) of the CDPA) ;

3. The doing of an act restricted by the copyright in a work are the doing of it in relation to the work as a whole or any substantial part of it (section 16 (3) of the CDPA) ;

4. Copying in relation to an artistic work means reproducing the work in any material form (section 17(2) of the CDPA).

48. First, the cancellation applicant failed to prove that the Griffin Design as protected by the earlier marks is indeed the subject of the copyright protection claimed. The Certificate of Registration from the US Register of Copyrights dated 19 March 2010, No VAu 1-017-211 (Exhibit 9 to the witness statement of Mr Jordan) mentions ‘Griffin Design’ as ‘Title of Work’ describing it as a ‘2-D artwork’ created by McGarry Bowen and mentioning Marriott International, Inc. as the copyright claimant. From this Certificate it remains unclear for which specific artwork copyright protection is claimed. The submitted copy of the copyright licence agreement dated April 2014 between Marriott International, Inc. and the cancellation applicant (Exhibit 10 to the witness statement of Mr Jordan) does not include ‘the attached Griffin design’ as referred to in the agreement. Thus, this agreement does not provide any clarity. The loose sheet entitled ‘Exhibit A, Image of New Griffin Logo’ (Exhibit 7 to the witness statement of Mr Jordan) is just a ‘stand-alone’ document and does not prove anything, this even the more so since Mr Jordan in his witness statement explained that different type of griffin designs were used for the cancellation applicant’s hotel services since 1988. The witness statement stating that the logo depicted in Exhibit 7 is the copyright protected work was made on behalf of the cancellation applicant itself for which reason it has no probative value unless supported by objective evidence which is missing this case.

49. Moreover, it is very questionable whether the Griffin Design indeed counts as an ‘original artistic work’ which would fall under any copyright protection. It concerns a black and white silhouette of a griffin. Depicting figures in silhouette is a common practice and the griffin as such is a known mythological creature. If any copyright were to be granted, the level of protection would be extremely limited.

50. Moreover, as reasoned above, the contested mark is dissimilar to the earlier marks. The questions whether the contested mark and the earlier marks are similar and whether the contested mark is reproducing the earlier alleged copyright protected work concern two different legal principles. However, for the same reasons as to why the conflicting marks in question are dissimilar, the contested mark is not a reproduction of the alleged copyright protected work, not as a whole and not in part. The drawings presented by the cancellation applicant and reproduced in paragraph 16 above do not change this conclusion. They only show that the respective silhouettes are presented in the same position, but for the same reasons as to why this cannot render the marks similar, it cannot justify the conclusion that the contested mark reproduced the alleged copyright protected work. In this respect it should be taken into account that the characteristic elements of the alleged copyright protected work are not reproduced by the contested mark, the latter not being ascribed to any particular type of animal, including any known mythological one, the former without any doubt representing a griffin.

51. It follows that already for this reason the cancellation request shall be rejected on the grounds of Article 53(2)(c) EUTMR.

Costs

52. Since the cancellation applicant (appellant) is the losing party within the meaning of Article 85(1) EUTMR, it must bear the costs incurred by the EUTM proprietor (respondent) in the appeal proceedings. For the cancellation proceedings the Cancellation Division correctly decided that the appellant shall bear the costs.

Fixing of Costs

53. In accordance with Article 85(6) EUTMR and Rule 94(3), (7)(iv) and (vi) CTMIR, the Board fixes the amount of representation costs to be paid by the appellant to the respondent with respect to the appeal proceedings at EUR 550 and with respect to the cancellation proceedings at EUR 450. The total amount is EUR 1 000.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the appellant to bear the costs of the appeal proceedings;

3. Fixes the amount of the costs to be reimbursed by the appellant to the respondent for the cancellation and the appeal proceedings at EUR 1 000.

Signed D. Schennen

Signed L. Marijnissen

Signed C. Bartos

Registrar: Signed H. Dijkema