A lion is a lion…. which includes its head!

Lion Capital LLP (the Opponent) is the owner of several earlier EU marks for the word mark LION CAPITAL (the Earlier Mark) for financial services in class 36 and they opposed Lion's Head Global Partners (the Applicant) who tried to register in classes 35 and 36 both the word mark LION'S HEAD and the above logo which includes the words "LION'S HEAD global partners" (the Application).

Both oppositions succeeded on the basis that reference to merely the head of a lion did not make the marks sufficiently different.

This was decided by the Opposition Division at the EUIPO and agreed by the Board of Appeal and finally the General Court.

In relation to LION'S HEAD, the Applicant argued that the marks were sufficiently different and tried to convince the General Court, that when looking at the earlier mark, only the word LION ought to be considered as it is the most dominant element and CAPITAL is descriptive of financial services. However, when it came to their own marks, the Applicant argued that the 'S linked the two words so the public would perceive the whole of their word mark LION'S HEAD. This would be sufficient to distinguish them from LION. However, the Court was not willing to apply different approaches to the marks, if only the first word ought to be compared then this should apply to both marks in which case the marks are identical. Overall, the marks were held to be visually similar.

The figurative mark was also held to be visually similar on the basis that the relevant public may struggle to identify the device element and, therefore, the words have a greater prominence.

When considering the phonetic similarity of the word mark LION'S HEAD, the Applicant suggested for the Opponent's mark only the first word should be considered, whereas with their own mark they considered that 'S HEAD would be emphasised and are the more dominant components. However, this was not accepted by the Court and the marks were held to be phonetically similar.

Conceptually, the Applicant argued that the earlier mark refers to the whole lion whereas they are just referring to its head in their word mark. The Applicant tried to argue that the Board of Appeal had extended the scope of protection for the earlier mark on the basis that they conferred protection for the whole lion (the judges were obviously unfamiliar with the headless lions the Applicant was hoping they would refer to….). However, the Court reminded the Applicant that the word lion is a reference to a lion in its entirety which would include all body parts including its head. The marks were held to be conceptually similar.

So just shy of 10 years after the applications were submitted and initially opposed by the Opponent, both marks have been refused and (subject to further appeal) will be removed from the Register. Lesson to learn – a reference to a lion includes a reference to its head as well as all its other body parts.

Case Ref: T-294/17 and T-310/17