Judgment of the General Court (Eighth Chamber) of 15 March 2018.Marriott Worldwide Corp. v European Union Intellectual Property Office.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).Case T-151/17.

Judgment // 15/03/2018 // 3 min read
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Judgment of the General Court (Eighth Chamber) of 15 March 2018 — Marriott Worldwide v EUIPO — Graf (Representation of a winged bull)

(Case T‑151/17)

(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))

  1. EU trade mark—Appeals procedure—Appeal brought against a decision of a unit of the Office ruling at first instance and referred to the Board of Appeal—Functional continuity between those two bodies—Examination of the appeal by the Board of Appeal—Scope

(Council Regulation No 207/2009, Art. 76)

(see para. 15)

  1. EU trade mark—Procedural provisions—Examination of the facts of the Office’s own motion—Invalidity proceedings concerning absolute grounds for refusal—Examination restricted to the submissions of the parties

(Council Regulation No 207/2009, Art. 76(1))

(see para. 16)

  1. EU trade mark—Definition and acquisition of the EU trade mark—Relative grounds for refusal—Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services—Likelihood of confusion with the earlier mark—Criteria for assessment

(Council Regulation No 207/2009, Art. 8(1)(b))

(see paras 30, 31)

  1. EU trade mark—Definition and acquisition of the EU trade mark—Relative grounds for refusal—Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services—Similarity of the marks concerned—Criteria for assessment

(Council Regulation No 207/2009, Art. 8(1)(b))

(see para. 34)

  1. EU trade mark—Surrender, revocation and invalidity—Relative grounds for invalidity—Existence of an identical or similar earlier mark registered for identical or similar goods or services—Likelihood of confusion with the earlier mark—Figurative mark representing a winged bull and figurative marks representing a griffin

(Council Regulation No 207/2009, Arts 8(1)(b) and 53(1)(a))

(see paras 36-39, 42-45)

Re:

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.

Operative part

The Court:

  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.

Trade marks