BEASTY ENERGY | Decision 2630732

Date Published: Sep 25, 2017

OPPOSITION No B 2 630 732

Monster Energy Company, 1 Monster Way, Corona, California 92879, United States of America (opponent), represented by Bird & Bird LLP, 12 New Fetter Lane, London EC4A 1JP, United Kingdom (professional representative)

a g a i n s t

Conditum & Partners bv, Julianalaan 9, 3722GG Bilthoven, The Netherlands (applicant).

On 10/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 630 732 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 884 011. The opposition is based on, inter alia, European Union trade mark registration No 13 231 361. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 13 231 361.

1. The goods

The goods on which the opposition is based are the following:

Class 25: Clothing, namely, tops, shirts, long-sleeved shirts, t-shirts, hooded shirts and hooded sweatshirts, sweat shirts, jackets, pants, bandanas, socks, sweat bands and gloves; headgear, namely, hats and beanies.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

As to the contested list of goods, the applicant limited the list of goods for which registration is sought during the opposition proceedings. The opponent was duly informed of this limitation and it decided to maintain the opposition. Accordingly, the contested goods are the following:

Class 25: Headgear; clothing.

The contested clothing includes, as a broader category, the opponent’s tops, shirts, long-sleeved shirts, t-shirts, hooded shirts and hooded sweatshirts, sweat shirts, jackets, pants, bandanas, socks, sweat bands and gloves. Furthermore, the broad category of the contested headgear encompasses the opponent’s hats and beanies. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical are directed at the public at large. The degree of attention is considered average.

3. The signs

UNLEASH THE BEAST!	BEASTY ENERGY
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural 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 (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

As far as the earlier trade mark is concerned, the English-speaking public will understand it as an expression referring to the release of certain qualities or impulses in a person, similar to those of an animal. As this expression is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive for the English-speaking public.

For the non-English-speaking part of the public in the relevant territory, this expression will not be understood and is therefore also distinctive for this part of the public.

As far as the contested sign, ‘BEASTY ENERGY’, is concerned, it can be assumed that the English-speaking public will instantly understand this expression as referring to very strong energy, similar to that of an animal. As this expression is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive for the English-speaking public.

For the non-English speaking public in the EU, this expression will not be understood, but it can be assumed that the word ‘ENERGY’ will be recognised because of its strong resemblance to the equivalent words in other languages, for example ‘énergie’ in French, ‘energia’ in Hungarian, Italian, Polish and Portuguese, ‘energía’ in Spanish, ‘energie’ in Czech and Slovak, and ‘energije’ in Slovenian, and will therefore be understood as the strength and vitality required for sustained physical or mental activity. However, the degree of inherent distinctiveness of this word, as well as of the meaningless – from the perspective of non-English-speaking public – word ‘BEASTY’, is average for the relevant goods.

Visually and aurally, the signs coincide in ‘BEAST(*)’, present in both signs. However, they differ in the elements ‘UNLEASH THE’ and the exclamation mark at the end of the earlier mark, and in the letter ‘Y’ and the element ‘ENERGY’ of the contested sign. They also differ in their structures (3 words versus 2), lengths (16 characters versus 12) and intonations, irrespective of the different pronunciation rules in different parts of the relevant territory.

Therefore, the signs are visually and aurally similar to only a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Despite the presence of the similar elements ‘BEAST’ and ‘BEASTY’, the marks are not conceptually similar for the English-speaking public, because this part of the public will primarily perceive both marks as a whole, that is, as specific phrases with their own particular meaning. The public is not likely to analyse the marks thoroughly.

For the non-English-speaking public, although the contested mark conveys the concept of ‘ENERGY’, the earlier mark will not be associated with any meaning and, therefore, the signs are not conceptually similar for this part of the public either.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the 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 goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods are identical. The earlier mark’s degree of distinctiveness is average and the degree of attention of the public is also average.

The marks are visually and aurally similar to only a low degree due to the presence of the element ‘BEAST’ at the end of the earlier mark and at the beginning of the contested sign as the first five letters. It is important to note the position of the coinciding letters in both marks and the differences between the marks in structure, length and intonation. Finally, as far as the English-speaking public is concerned, the different concepts associated with the marks when perceived as a whole have particular significance.

Generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 - T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable visual difference between the signs caused by the fact that the coinciding letters ‘BEAST’ are at the end of the earlier mark and at the beginning of the contested sign is also particularly relevant when assessing the likelihood of confusion between them.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. As the beginnings of both marks are very different, this avoids the risk of confusion, rather than the contrary, as argued by the opponent.

Taking the above into account, it is considered that the overall impressions created by the marks are not sufficiently similar to cause likelihood of confusion, be it on the part of the English-speaking public or the remaining part of the public in the EU. The public is not likely to attribute the same commercial origin to the goods sold under the marks in dispute solely on the basis of the coincidence in the letters ‘BEAST’.

It remains necessary to consider the opponent’s argument that the earlier trade marks, all characterised by the presence of the same word component ‘BEAST’ constitute a ‘family of marks’ or ‘marks in a series’. In its view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark which contains the same word component as the earlier marks, will be led to believe that the goods identified by that mark may also come from the opponent.

In fact, the concept of the family of marks was exhaustively analysed by the General Court in its judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65.

When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’ a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.

Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’.

In the present case, the opponent failed to prove, by only submitting copies of applications or registrations in various countries of the European Union, that it actually uses a family of ‘BEAST’ marks in the same fields as those covered by the contested trade mark.

Considering all the above, there is no likelihood of confusion on the part of the public.

Therefore, the opposition must be rejected insofar as it is based European Union trade mark registration No 13 231 361.

The opponent has also based its opposition on the following earlier trade marks:

European Union trade mark registration No 12 251 898 ‘PUMP UP THE BEAST!’ for:

Class 5: Nutritional supplements in liquid form; vitamin fortified beverages.

Class 30: Bases for making energy shakes; prepared coffee and coffee based beverages; bases for making energy shakes with a coffee flavour; bases for making energy shakes with a chocolate flavour; prepared chocolate and chocolate-based beverages.

Class 32: Non-alcoholic beverages.

European Union trade mark registrations No 9 584 244 ‘REHAB THE BEAST!’ and No 10 649 184 ‘REHAB THE BEAST! WWW.MONSTERENERGY.COM’ for:

Class 5: Nutritional supplements in liquid form.

Class 30: Ready to drink tea, iced tea and tea based beverages; ready to drink flavored tea, iced tea and tea based beverages.

Class 32: Beverages, namely, carbonated soft drinks; non-alcoholic carbonated and non-carbonated drinks enhanced with vitamins, minerals, nutrients, proteins, amino acids and/or herbs; energy or sports drinks; fruit juice drinks.

European Union trade mark registration No 10 645 968 ‘UNLEASH THE BEAST WITHIN!’ for:

Class 5: Nutritional supplements in liquid form.

Class 30: Ready to drink tea, iced tea and tea based beverages; ready to drink flavored tea, iced tea and tea based beverages.

Class 32: Non-alcoholic beverages, namely energy drinks, energy drinks flavored with tea, energy drinks flavored with juice, sports drinks, and fruit juice drinks having a content of 50% or less by volume; all of the foregoing enhanced with vitamins, minerals, nutrients, amino acids and/or herbs.

European Union trade mark registration No 13 628 383 ‘UNLEASH THE NITRO BEAST!’ for:

Class 5: Nutritional supplements in liquid form.

Class 32: Non-alcoholic beverages; beer.

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion.

The contested headgear and clothing are clearly dissimilar to the opponent’s goods in Classes 5, 30 and 32 covered by the abovementioned earlier marks, because their natures and purposes are completely different; they are not produced by the same companies or distributed through the same channels; they do not target the same public; and they are not complementary or in competition. Consequently, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled and the opposition must also be rejected as far as those earlier rights are concerned.

COSTS

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

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

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Zuzanna STOJKOWICZ

Cynthia DEN DEKKER

Jessica LEWIS

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. 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 720 has been paid.