MONSTER CASTLE | Decision 2628280
Date Published: Sep 25, 2017
OPPOSITION No B 2 628 280
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
Tencent Holdings Limited, P.O. Box 2681 GT, Century Yard, Cricket Square, Hutchins Drive, George Town, Grand Cayman, Cayman Islands (applicant), represented by Lane IP Limited, 2 Throgmorton Avenue, London EC2N 2DG, United Kingdom (professional representative).
On 05/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 628 280 is partially upheld, namely for the following contested goods and services:
Class 9: Photographic, cinematographic apparatus and instruments; optical apparatus and instruments (listed twice), life-saving and teaching apparatus (listed twice) and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; data processing equipment, computers (listed twice); computer software; acoustic conduits; acoustic couplers; agendas (electronic -); amplifiers; amplifying tubes; animated cartoons; anti-glare glasses; anti-glare visors; asbestos clothing for protection against fire; asbestos gloves for protection against accidents; asbestos screens for firemen; audiovisual teaching apparatus; binoculars; breathing apparatus, except for artificial respiration; cabinets for loudspeakers; cases especially made for photographic apparatus and instruments; cassette players; cell phone straps; clothing especially made for laboratories; clothing for protection against accidents, irradiation and fire; clothing for protection against fire; compact disc players; compact discs [audio-video]; compact discs [read-only memory]; computer game programs; computer keyboards; computer memory devices; computer operating programs, recorded; computer peripheral devices; computer programmes [programs], recorded; computer programs [downloadable software]; computer software, recorded; contact lenses; containers for contact lenses; correcting lenses [optics]; data processing apparatus; disk drives for computers; disks, magnetic; divers’ masks; diving suits; DVD players; ear plugs for divers; electronic pocket translators; eyeglass cases; eyeglass chains; eyeglass cords; eyeglass frames; eyepieces; eyepieces (instruments containing -); filters for respiratory masks; fire blankets; gloves for divers; gloves for protection against accidents; gloves for protection against x-rays for industrial purposes; goggles for sports; hands free kits for phones; headphones; horns for loudspeakers; intercommunication apparatus; Interfaces for computers; juke boxes for computers; juke boxes, musical; laptop computers; lenses for astrophotography; life belts; life buoys; life jackets; life nets; life saving equipment; life-saving rafts; loudspeakers; magnetic data media; magnetic tape units for computers; magnetic tapes; magnifying glasses [optics]; microphones; microscopes; monitors [computer hardware]; monitors [computer programs]; mouse [data processing equipment]; mouse pads; nets for protection against accidents; nose clips for divers and swimmers; notebook computers; objectives [lenses] optics; observation instruments; optical condensers; optical data media; optical discs; optical glass; optical goods; optical lenses; periscopes; personal stereos; phonograph records; portable media players; portable telephones; protection devices against X-rays, not for medical purposes; protection devices for personal use against accidents; protective helmets; protective helmets for sports; protective masks; protective suits for aviators; radios; radiotelegraphy sets; radiotelephony sets; record players; riding helmets; safety restraints, other than for vehicle seats and sports equipment; safety tarpaulins; shoes for protection against accidents, irradiation and fire; socks, electrically heated; solderers’ helmets; sound recording apparatus; sound recording carriers; sound recording strips; sound reproduction apparatus; sound transmitting apparatus; sounding apparatus and machines; speaking tubes; spectacle cases; spectacle frames; spectacle glasses; spectacles [optics]; spectrograph apparatus; sprinkler systems for fire protection; sunglasses; tape recorders; teeth protectors; telegraphs [apparatus]; telephone apparatus; telephone receivers; telephone transmitters; telescopes; television apparatus; USB flash drives; video cassettes; video game cartridges; video recorders; video telephones; videotapes; waling glasses; walkie-talkies; wrist rests for use with computers; computer game software; mobile phones (listed twice); mobile phone accessories; cases adapted for mobile phones; tablet computers (listed twice); cases adapted for tablet computers; computer game software for use on mobile and cellular phones; electronic game software for mobile phones; application software for mobile phones; computer game software for computers,; software for tablet computers.
Class 41: Entertainment; Sporting and cultural activities; Amusement parks; Amusements; Arranging and conducting of concerts; Arranging of beauty contests Booking of seats for shows; Bookmobile services; Casino facilities [gambling] (Providing -); Cinema presentations; Circuses; Club services [entertainment]; Conducting fitness classes; Disc jockey services; Discotheque services; Entertainer services; Entertainment information; Fashion shows for entertainment purposes (Organization of -); Film production, other than advertising films; Gambling; Game services provided on-line from a computer network; Games equipment rental; Golf facilities (Providing -); Holiday camp services [entertainment]; Live performances (Presentation of -); Modelling for artists; Movie studios; Museum facilities (Providing -) [presentation, exhibitions]; Music composition services; Music-halls; News reporters services; Night clubs; Operating lotteries; Orchestra services; Organization of balls; Organization of competitions [education or entertainment]; Organization of exhibitions for cultural or educational purposes; Organization of shows [impresario services]; Organization of sports competitions; Production of music; Production of radio and television programmes; Production of shows; Providing amusement arcade services; Providing karaoke services; Providing on-line electronic publications, not downloadable; Publication of books; Publication of electronic books and journals on-line; Publication of texts, other than publicity texts; Providing sports facilities; Radio entertainment; Recording studio services; Recreation facilities (Providing -); Recreation information; Rental of audio equipment; Rental of camcorders; Rental of cine-films; Rental of lighting apparatus for theatrical sets or television studios; Rental of movie projectors and accessories; Rental of radio and television sets; Rental of show scenery; Rental of skin diving equipment; Rental of sound recordings; Rental of sports equipment, except vehicles; Rental of sports grounds; Rental of stadium facilities; Rental of stage scenery; Rental of tennis courts; Rental of video cassette recorders; Rental of videotapes; Scriptwriting services; Sport camp services; Subtitling; Television entertainment; Theatre productions; Ticket agency services [entertainment]; Timing of sports events; Toy rental; Videotape editing; Videotape film production; Videotaping; Writing of texts, other than publicity texts; Zoological garden services; Providing online games; providing computer games and video games that can be accessed, played and downloaded over computer networks and global communications networks; providing entertainment via computer networks; arranging and conducting competitions for video game players and computer game players; entertainment in the nature of contests, competition and games; organising of games; interactive games, interactive entertainment, interactive competitions and interactive quizzes; providing information on video games and computer games; provision of multimedia entertainment content via computer networks; publishing and providing of computer games; provision of information and advice relating to all the aforementioned services; electronic games services provided from a computer database or by means of the internet; electronic games services, including provision of computer games on line or by means of a global computer network; Entertainment services, namely, providing temporary use of non-downloadable computer games.
2. European Union trade mark application No 14 504 476 is rejected for all the above goods and services. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 504 476. The opposition is based on European Union trade mark registration No 11 669 744, ‘MONSTER ENERGY’, for goods in Class 9, European Union trade mark registration No 11 607 645, ‘MONSTERCROSS’, for services in Class 41, and international trade mark registration No 1 048 069 designating the European Union, , for goods in Class 9. The opponent invoked Article 8(1)(b) EUTMR.
SUBSTANTIATION of earlier international registration No 1 048 069 designating the European Union,
According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.
In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.
In the present case the notice of opposition was not accompanied by any evidence as regards the earlier trade mark on which the opposition is based.
On 04/01/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 09/05/2016. The deadline was extended, in accordance with Rule 71 EUTMIR, until 16/07/2016.
The opponent did not submit any evidence concerning the substantiation of the earlier trade mark.
According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.
The opposition must therefore be rejected as unfounded, insofar as it is based on this earlier mark.
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 goods and services
The goods and services on which the opposition is based are the following:
Earlier mark 1: European Union trade mark registration No 11 669 744
Class 9: Protective covers and cases for cell phones, laptops, tablets, portable media players and other electronic devices, namely, mobile phones, smartphones, media players, music players, computers, and portable electronic devices; earphones and headphones; protective ear coverings, namely helmets; eye glasses, eye glass cases, sunglasses, sunglass cases.
Earlier mark 2: European Union trade mark registration No 11 607 645
Class 41: Entertainment services in the nature of live events, competitions and exhibitions featuring motor sports, motorcross, supercross, freestyle motorcross, freestyle supercross, and other motor sports events.
The contested goods and services are the following:
Class 9. Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment, computers; Computer software; Fire-extinguishing apparatus; Abacuses; Accounting machines; Accumulators, electric; Acid hydrometers; Acidimeters for batteries; Acoustic conduits; Acoustic couplers; Actinometers; Adding machines; Aerials; Aerometers; Agendas (Electronic -); Air analysis apparatus; Alarm bells, electric; Alarms; Alcoholmeters; Alidades; Altimeters; Ammeters; Amplifiers; Amplifying tubes; Anemometers; Animated cartoons; Anode batteries; Anodes; Answering machines; Anti-glare glasses; Anti-glare visors; Anti-interference devices [electricity]; Anti-theft warning apparatus; Anticathodes; Apertometers [optics]; Armatures [electricity]; Asbestos clothing for protection against fire; Asbestos gloves for protection against accidents; Asbestos screens for firemen; Astronomy (Apparatus and instruments for -); Audiovisual teaching apparatus; Automated teller machines [ATM]; Azimuth instruments; Balances [steelyards]; Balancing apparatus; Bar code readers; Barometers; Batteries, electric; Batteries, electric, for vehicles; Batteries for lighting; Battery boxes; Battery chargers; Battery jars; Beacons, luminous; Bells [warning devices]; Betatrons; Binoculars; Blinkers [signalling lights]; Blueprint apparatus; Boiler control instruments; Branch boxes [electricity]; Breathing apparatus, except for artificial respiration; Breathing apparatus for underwater swimming; Buzzers; Cabinets for loudspeakers; Cables, electric; Calculating disks; Calculating machines; Calibrating rings; Calipers; Camcorders; Cameras [photography]; Capacitors; Capillary tubes; Carpenters’ rules; Carriers for dark plates [photography]; Cases especially made for photographic apparatus and instruments; Cases fitted with dissecting instruments [microscopy]; Cash registers; Cassette players; Cathodes; Cathodic anti-corrosion apparatus; Cell phone straps; Centering apparatus for photographic transparencies; Central processing units [processors]; Chargers for electric batteries; Chemistry apparatus and instruments; Chips [integrated circuits]; Choking coils [impedance]; Chromatography apparatus for laboratory use; Chronographs [time recording apparatus]; Cinematographic cameras; Cinematographic film, exposed; Circuit breakers; Circuit closers; Cleaning apparatus for phonograph records; Clinometers; Clothing especially made for laboratories; Clothing for protection against accidents, irradiation and fire; Clothing for protection against fire; Coaxial cables; Coils, electric; Coin-operated apparatus (Mechanisms for -); Coin-operated mechanisms for television sets; Collectors, electric; Commutation (Electric apparatus for -); Commutators; Compact disc players; Compact discs [audio-video]; Compact discs [read-only memory]; Comparators; Compasses (Directional -); Compasses [measuring instruments]; Computer game programs; Computer keyboards; Computer memory devices; Computer operating programs, recorded; Computer peripheral devices; Computer programmes [programs], recorded; Computer programs [downloadable software]; Computer software, recorded; Computers; Conductors, electric; Connections for electric lines; Connectors [electricity]; Contact lenses; Contacts, electric; Containers for contact lenses; Containers for microscope slides; Control panels [electricity]; Converters, electric; Copper wire, insulated; Correcting lenses [optics]; Cosmographic instruments; Counter-operated apparatus (Mechanisms for -); Couplers [data processing equipment]; Couplings, electric; Covers for electric outlets; Crash test dummies; Cupels [laboratory]; Current rectifiers; Cyclotrons; Darkroom lamps [photography]; Darkrooms [photography]; Data processing apparatus; Decompression chambers; Demagnetizing apparatus for magnetic tapes; Densimeters; Densitometers; Detectors; Diagnostic apparatus, not for medical purposes; Diaphragms [acoustics]; Diaphragms for scientific apparatus; Diaphragms [photography]; Dictating machines; Diffraction apparatus [microscopy]; Discharge tubes, electric, other than for lighting; Disk drives for computers; Disks, magnetic; Distance measuring apparatus; Distance recording apparatus; Distillation apparatus for scientific purposes; Distribution boards [electricity]; Distribution boxes [electricity]; Distribution consoles [electricity]; Divers’ masks; Diving suits; DNA chips; Dog whistles; Dosimeters; Downloadable image files; Downloadable music files; Downloadable ring tones for mobile phones; Drainers for use in photography; Dressmakers’ measures; Drying apparatus for photographic prints; Drying racks [photography]; Ducts [electricity]; DVD players; Dynamometers; Ear plugs for divers; Editing appliances for cinematographic films; Egg-candlers; Electric door bells; Electric installations for the remote control of industrial operations; Electric loss indicators; Electricity conduits; Electricity mains (Materials for -) [wires, cables]; Electrified fences; Electrified rails for mounting spot lights; Electro-dynamic apparatus for the remote control of railway points; Electro-dynamic apparatus for the remote control of signals; Electrolysers; Electromagnetic coils; Electronic notice boards; Electronic pens [visual display units]; Electronic pocket translators; Electronic publications, downloadable; Electronic tags for goods; Encoded identification bracelets, magnetic; Encoded magnetic cards; Enlarging apparatus [photography]; Epidiascopes; Ergometers; Exposure meters [light meters]; Extinguishers; Eyeglass cases; Eyeglass chains; Eyeglass cords; Eyeglass frames; Eyepieces; Eyepieces (Instruments containing -); Facsimile machines; False coin detectors; Fermentation (Apparatus for -) [laboratory apparatus]; Fibre [fiber (Am)] optic cables; Film cutting apparatus; Films, exposed; Filters for respiratory masks; Filters for ultraviolet rays, for photography; Filters [photography]; Fire alarms; Fire beaters; Fire blankets; Fire boats; Fire engines; Fire escapes; Fire hose; Fire hose nozzles; Flash-bulbs [photography]; Flashlights [photography]; Floppy disks; Fluorescent screens; Fog signals, non-explosive; Food analysis apparatus; Frames for photographic transparencies; Franking (Apparatus to check -); Frequency meters; Furniture especially made for laboratories; Fuse wire; Fuses; Galena crystals [detectors]; Galvanic batteries; Galvanic cells; Galvanometers; Garments for protection against fire; Gas testing instruments; Gasometers [measuring instruments]; Gauges; Glass covered with an electrical conductor; Glazing apparatus for photographic prints; Global Positioning System [GPS] apparatus; Gloves for divers; Gloves for protection against accidents; Gloves for protection against X-rays for industrial purposes; Goggles for sports; Grids for batteries; Hands free kits for phones; Head cleaning tapes [recording]; Headphones; Heat regulating apparatus; Heliographic apparatus; Hemline markers; High-frequency apparatus; Holders for electric coils; Holograms; Horns for loudspeakers; Hourglasses; Hydrometers; Hygrometers; Identification sheaths for electric wires; Identification threads for electric wires; Identity cards, magnetic; Igniting apparatus, electric, for igniting at a distance; Incubators for bacteria culture; Inductors [electricity]; Integrated circuit cards [smart cards]; Integrated circuits; Intercommunication apparatus; Interfaces for computers; Inverters [electricity]; Invoicing machines; Ionization apparatus not for the treatment of air or water; Jigs [measuring instruments]; Juke boxes for computers; Juke boxes, musical; Junction boxes [electricity]; Junction sleeves for electric cables; Knee-pads for workers; Laboratory centrifuges; Laboratory trays; Lactodensimeters; Lactometers; Laptop computers; Lasers, not for medical purposes; Leather (Appliances for measuring the thickness of -); Lens hoods; Lenses for astrophotography; Letter scales; Levelling instruments; Levels [instruments for determining the horizontal]; Life belts; Life buoys; Life jackets; Life nets; Life saving apparatus and equipment; Life-saving rafts; Light conducting filaments [optical fibers fibres]; Light dimmers [regulators], electric; Light-emitting diodes [LED]; Light-emitting electronic pointers; Lighting ballasts; Lightning arresters; Limiters [electricity]; Locks, electric; Logs [measuring instruments]; Loudspeakers; Magic lanterns; Magnetic data media; Magnetic encoders; Magnetic tape units for computers; Magnetic tapes; Magnetic wires; Magnets; Magnets (Decorative -); Magnifying glasses [optics]; Manometers; Marine compasses; Marine depth finders; Marking buoys; Marking gauges [joinery]; Masts for wireless aerials; Material testing instruments and machines; Mathematical instruments; Measures; Measuring apparatus; Measuring devices, electric; Measuring glassware; Measuring instruments; Measuring spoons; Mechanical signs; Megaphones; Mercury levels; Metal detectors for industrial or military purposes; Meteorological balloons; Meteorological instruments; Meters; Metronomes; Micrometer screws for optical instruments; Micrometers; Microphones; Microprocessors; Microscopes; Microtomes; Milage recorders for vehicles; Mirrors for inspecting work; Mirrors [optics]; Modems; Money counting and sorting machines; Monitoring apparatus, electric; Monitors [computer hardware]; Monitors [computer programs]; Motor fire engines; Mouse [data processing equipment]; Mouse pads; Nautical apparatus and instruments; Naval signalling apparatus; Navigation apparatus for vehicles [on-board computers]; Navigational instruments; Neon signs; Nets for protection against accidents; Nose clips for divers and swimmers; Notebook computers; Objectives [lenses] optics; Observation instruments; Octants; Ohmmeters; Optical apparatus and instruments; Optical character readers; Optical condensers; Optical data media; Optical discs; Optical glass; Optical goods; Optical lamps; Optical lenses; Oscillographs; Ovens for laboratory use; Oxygen transvasing apparatus; Ozonisers [ozonators]; Parking meters; Particle accelerators; Pedometers; Peepholes [magnifying lenses] for doors; Periscopes; Personal stereos; Petrol gauges; Phonograph records; Photocopiers [photographic, electrostatic, thermic]; Photometers; Phototelegraphy apparatus; Photovoltaic cells; Physics (Apparatus and instruments for -); Pince-nez; Pipettes; Plane tables [surveying instruments]; Planimeters; Plates for batteries; Plotters; Plugs, sockets and other contacts [electric connections]; Plumb bobs; Plumb lines; Pocket calculators; Polarimeters; Portable media players; Portable telephones; Precision balances; Precision measuring apparatus; Pressure indicator plugs for valves; Pressure indicators; Pressure measuring apparatus; Printed circuit boards; Printed circuits; Printers for use with computers; Prisms [optics]; Probes for scientific purposes; Projection apparatus; Projection screens; Protection devices against X-rays, not for medical purposes; Protection devices for personal use against accidents; Protective helmets; Protective helmets for sports; Protective masks; Protective suits for aviators; Protractors [measuring instruments]; Punched card machines for offices; Push buttons for bells; Pyrometers; Quantity indicators; Radar apparatus; Radio pagers; Radiological apparatus for industrial purposes; Radiology screens for industrial purposes; Radios; Radiotelegraphy sets; Radiotelephony sets; Railway traffic safety appliances; Readers [data processing equipment]; Receivers (Audio-- and video- -); Record player needles (Apparatus for changing -); Record players; Reducers [electricity]; Reflecting discs for wear, for the prevention of traffic accidents; Refractometers; Refractors; Regulating apparatus, electric; Relays, electric; Remote control apparatus; Resistances, electric; Respirators for filtering air; Respirators, other than for artificial respiration; Resuscitation mannequins [teaching apparatus]; Retorts; Retorts’ stands; Revolution counters; Rheostats; Riding helmets; Road signs, luminous or mechanical; Rods for water diviners; Rods [surveying instruments]; Rulers [measuring instruments]; Rules [measuring instruments]; Saccharometers; Safety restraints, other than for vehicle seats and sports equipment; Safety tarpaulins; Salinometers; Satellite navigational apparatus; Satellites for scientific purposes; Scales; Scanners [data processing equipment]; Screens for photoengraving; Screens [photography]; Screw-tapping gauges; Semi-conductors; Sextants; Sheaths for electric cables; Shoes for protection against accidents, irradiation and fire; Shutter releases [photography]; Shutters [photography]; Sighting telescopes for firearms; Signal bells; Signal lanterns; Signalling buoys; Signalling panels, luminous or mechanical; Signalling whistles; Signals, luminous or mechanical; Signs, luminous; Simulators for the steering and control of vehicles; Sirens; Skins (Apparatus for measuring the thickness of -); Slide calipers; Slide projectors; Slide-rules; Slides [photography]; Smoke detectors; Socks, electrically heated; Solar batteries; Solderers’ helmets; Solenoid valves [electromagnetic switches]; Sonars; Sound alarms; Sound locating instruments; Sound recording apparatus; Sound recording carriers; Sound recording strips; Sound reproduction apparatus; Sound transmitting apparatus; Sounding apparatus and machines; Sounding leads; Sounding lines; Spark-guards; Speaking tubes; Spectacle cases; Spectacle frames; Spectacle glasses; Spectacles [optics]; Spectrograph apparatus; Spectroscopes; Speed checking apparatus for vehicles; Speed indicators; Speed measuring apparatus [photography]; Speed regulators for record players; Spherometers; Spirit levels; Spools [photography]; Sprinkler systems for fire protection; Stage lighting regulators; Stands for photographic apparatus; Starter cables for motors; Steering apparatus, automatic, for vehicles; Step-up transformers; Stereoscopes; Stereoscopic apparatus; Stills for laboratory experiments; Styli for record players; Sulphitometers; Sunglasses; Surveying apparatus and instruments; Surveying chains; Surveying instruments; Surveyors’ levels; Switchboards; Switchboxes [electricity]; Switches, electric; Tachometers; Tape recorders; Taximeters; Teaching apparatus; Teeth protectors; Telegraph wires; Telegraphs [apparatus]; Telemeters; Telephone apparatus; Telephone receivers; Telephone transmitters; Telephone wires; Teleprinters; Teleprompters; Telerupters; Telescopes; Television apparatus; Temperature indicators; Terminals [electricity]; Test tubes; Testing apparatus not for medical purposes; Theft prevention installations, electric; Theodolites; Thermionic tubes; Thermometers, not for medical purposes; Thermostats; Thermostats for vehicles; Ticket dispensers; Time clocks [time recording devices]; Time recording apparatus; Time switches, automatic; Tires (Automatic indicators of low pressure in vehicle -); Tone arms for record players; Totalizators; Traffic-light apparatus [signalling devices]; Transformers [electricity]; Transistors [electronic]; Transmitters of electronic signals; Transmitters [telecommunication]; Transmitting sets [telecommunication]; Transponders; Triodes; Tripods for cameras; Urinometers; USB flash drives; Vacuum gauges; Vacuum tubes [radio]; Variometers; Vehicle breakdown warning triangles; Vehicle radios; Verniers; Vests (Am) Bullet-proof -; Video cassettes; Video game cartridges; Video recorders; Video screens; Video telephones; Videotapes; Viewfinders, photographic; Viscosimeters; Voltage regulators for vehicles; Voltage surge protectors; Voltmeters; Voting machines; Wafers [silicon slices]; Waling glasses; Walkie-talkies; Washing trays [photography]; Water level indicators; Wavemeters; Weighbridges; Weighing apparatus and instruments; Weighing machines; Weights; Whistle alarms; Wind socks for indicating wind direction; Wire connectors [electricity]; Wires, electric; Word processors; Workmen’s protective face-shields; Wrist rests for use with computers; X-ray apparatus not for medical purposes; X-ray films, exposed; X-ray photographs, other than for medical purposes; X-ray tubes not for medical purposes; X-rays producing apparatus and installations, not for medical purposes; computer game software; Mobile phones; mobile phone accessories; Cases adapted for mobile phones; Tablet computers; cases adapted for tablet computers; Computer game software for use on mobile and cellular phones; Electronic game software for mobile phones; Downloadable graphics for mobile phones; Application software for mobile phones; Computer game software for computers, mobile phones and tablet computers; software for tablet computers.
Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities; Academies [education]; Amusement parks; Amusements; Animal training; Arranging and conducting of colloquiums; Arranging and conducting of concerts; Arranging and conducting of conferences; Arranging and conducting of congresses; Arranging and conducting of seminars; Arranging and conducting of symposiums; Arranging and conducting of workshops [training]; Arranging of beauty contests; Boarding schools; Booking of seats for shows; Bookmobile services; Calligraphy services; Casino facilities [gambling] (Providing -); Cinema presentations; Circuses; Club services [entertainment or education]; Coaching [training]; Conducting fitness classes; Correspondence courses; Disc jockey services; Discotheque services; Dubbing; Education information; Educational examination; Electronic desktop publishing; Entertainer services; Entertainment information; Fashion shows for entertainment purposes (Organization of -); Film production, other than advertising films; Gambling; Game services provided on-line from a computer network; Games equipment rental; Golf facilities (Providing -); Gymnastic instruction; Health club services [health and fitness training]; Holiday camp services [entertainment]; Language interpreter services; Layout services, other than for advertising purposes; Lending libraries; Live performances (Presentation of -); Microfilming; Modelling for artists; Movie studios; Museum facilities (Providing -) [presentation, exhibitions]; Music composition services; Music-halls; News reporters services; Night clubs; Nursery schools; Operating lotteries; Orchestra services; Organization of balls; Organization of competitions [education or entertainment]; Organization of exhibitions for cultural or educational purposes; Organization of shows [impresario services]; Organization of sports competitions; Party planning [entertainment]; Personal trainer services [fitness training]; Photographic reporting; Photography; Physical education; Practical training [demonstration]; Production of music; Production of radio and television programmes; Production of shows; Providing amusement arcade services; Providing karaoke services; Providing on-line electronic publications, not downloadable; Providing sports facilities; Publication of books; Publication of electronic books and journals on-line; Publication of texts, other than publicity texts; Radio entertainment; Recording studio services; Recreation facilities (Providing -); Recreation information; Religious education; Rental of audio equipment; Rental of camcorders; Rental of cine-films; Rental of lighting apparatus for theatrical sets or television studios; Rental of movie projectors and accessories; Rental of radio and television sets; Rental of show scenery; Rental of skin diving equipment; Rental of sound recordings; Rental of sports equipment, except vehicles; Rental of sports grounds; Rental of stadium facilities; Rental of stage scenery; Rental of tennis courts; Rental of video cassette recorders; Rental of videotapes; Scriptwriting services; Sign language interpretation; Sport camp services; Subtitling; Television entertainment; Theatre productions; Ticket agency services [entertainment]; Timing of sports events; Toy rental; Translation; Tuition; Videotape editing; Videotape film production; Videotaping; Vocational guidance [education or training advice]; Vocational retraining; Writing of texts, other than publicity texts; Zoological garden services; Providing online games; providing computer games and video games that can be accessed, played and downloaded over computer networks and global communications networks; providing entertainment via computer networks; arranging and conducting competitions for video game players and computer game players; entertainment in the nature of contests, competition and games; organising of games; interactive games, interactive entertainment, interactive competitions and interactive quizzes; providing information on video games and computer games; provision of multimedia entertainment content via computer networks; publishing and providing of computer games; provision of information and advice relating to all the aforementioned services; electronic games services provided from a computer database or by means of the internet; electronic games services, including provision of computer games on line or by means of a global computer network; Entertainment services, namely, providing temporary use of non-downloadable computer games.
Class 42: Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software; Analysis for oil-field exploitation; Architectural consultation; Architecture; Authenticating works of art; Bacteriological research; Biological research; Calibration [measuring]; Chemical analysis; Chemical research; Chemistry services; Cloud seeding; Computer programming; Computer rental; Computer software consultancy; Computer software design; Computer software (Updating of -); Computer system analysis; Computer system design; Computer virus protection services; Construction drafting; Consultancy in the design and development of computer hardware; Consultancy in the field of energy-saving; Conversion of data or documents from physical to electronic media; Cosmetic research; Creating and maintaining web sites for others; Data conversion of computer programs and data [not physical conversion]; Design of interior decor; Digitization of documents [scanning]; Dress designing; Duplication of computer programs; Engineering; Evaluation of wool (Quality -); Geological prospecting; Geological research; Geological surveys; Graphic arts designing; Handwriting analysis [graphology]; Hosting computer sites [web sites]; Industrial design; Installation of computer software; Laboratory (Scientific -) services; Land surveying; Maintenance of computer software; Material testing; Mechanical research; Monitoring of computer systems by remote access; Oil-field surveys; Oil prospecting; Oil-well testing; Packaging design; Physics [research]; Project studies (Technical -); Providing search engines for the internet; Provision of scientific information, advice and consultancy in relation to carbon offsetting; Quality control; Recovery of computer data; Rental of computer software; Rental of web servers; Research and development for others; Research in the field of environmental protection; Styling [industrial design]; Surveying; Technical research; Textile testing; Underwater exploration; Urban planning; Valuation of standing timber (Quality -); Vehicle roadworthiness testing; Water analysis; Weather forecasting; Design of computer games software; application service provider (ASP) services, namely, hosting computer software applications of others; application service provider (ASP) featuring software to enable or facilitate the uploading, downloading, streaming, posting, displaying, blogging, linking, sharing or otherwise providing electronic media or information over communication networks; computer programming of computer games; computer programming of video games.
An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.
With regard to the opponent’s services in Class 41, the verb ‘featuring’ in the English translation submitted, entertainment services in the nature of live events, competitions and exhibitions featuring motor sports, motorcross, supercross, freestyle motorcross, freestyle supercross, and other motor sports events, requires some clarification. Since the original wording in Spanish reads servicios de entretenimiento del tipo de eventos, competiciones y exhibiciones en vivo que incluyen deportes de motor, motocross, supercross, motocross de estilo libre, supercross de estilo libre y otros eventos deportivos, the Opposition Division holds that the verb ‘featuring’ is not a correct translation of the Spanish verb ‘incluyen’. This Spanish verb can be correctly translated into English as ‘including’.
Therefore, the Opposition Division considers that the opponent’s list of service in Class 41 should be translated as entertainment services in the nature of live events, competitions and exhibitions including motor sports, motorcross, supercross, freestyle motorcross, freestyle supercross, and other motor sports events.
The term ‘including’, used in the opponent’s list of services in Class 41 of earlier mark 1, and the term ‘especially’, used in the list of contested goods in Class 9 (i.e. cases especially made for photographic apparatus and instruments; cassette players), indicate that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
The term ‘namely’, used in the opponent’s list of goods in Class 9 of earlier mark 1 to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.
Contested goods in Class 9
Headphones; eyeglass cases; spectacle cases; spectacles [optics]; sunglasses; spectacle glasses are identically contained in the lists of goods (including synonyms, i.e. eye glasses and eye glasses cases in the list of earlier mark 1 and the contested spectacles [optics]; spectacle glasses; spectacle cases).
The contested apparatus for reproduction of sound; sound reproduction apparatus include, as broader categories, the opponent’s headphones. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.
The contested optical apparatus and instrument (listed twice); optical goods include, as broader categories, the opponent’s eye glasses. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.
The contested anti-glare glasses are contained in the broad category of the opponent’s eyeglasses. Therefore, they are identical.
The contested computer peripheral devices are physical, touchable, material parts of a computer or other system (i.e. keyboards, headphones, speakers, etc.) and, as a broader category, include the opponent’s earphones and headphones. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested hands free kits for phones are kits used for hands-free communications and can include headphones. Therefore, they overlap with the opponent’s earphones and headphones. Consequently, they are considered identical.
The contested cases adapted for mobile phones; cases adapted for tablet computers are identical to the opponent’s protective cases for mobile phones, computers, as they are synonymous.
The contested mobile phone accessories include, as a broader category, the opponent’s protective cases for mobile phones. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested cases especially made for photographic apparatus and instruments include, as a broader category, the opponent’s cases for mobile phones, smartphones. Therefore, they are identical.
The opponent’s helmets can be any type of protective gear worn to protect the head from injuries. Therefore, as the contested protective helmets; protective helmets for sports; riding helmets; solderers’ helmets are included in the broader category of the opponent’s helmets, they are identical.
The contested computer keyboard; monitors [computer hardware]; monitors [computer programs]; mouse [data processing equipment]; interfaces for computers; mouse pads; wrist rests for use with computers are peripherals and accessories adapted for use with devices for computers in the same manner as the opponent’s earphones and headphones can be. As these goods have similar purposes, target the same public and are sold through the same distribution channels, they are considered similar.
The contested binoculars; contact lenses; correcting lenses [optics]; lenses for astrophotography; magnifying glasses [optics]; objectives [lenses] optics; observation instruments; optical condensers; optical glass; optical lenses; ; spectrograph apparatus; microscopes; telescopes; waling glasses; eyepieces; eyepieces (Instruments containing -); periscopes include various types of optical devices and instruments. These goods at least have the same purpose, the same relevant public and the same distribution channels as the opponent’s eye glasses. Therefore, the contested goods are at least similar to the opponent’s goods.
The contested eyeglass chains; eyeglass cords; eyeglass frames; spectacle frames are similar to the opponent’s eye glasses, as they can have the same relevant public and distribution channels. Furthermore, they are complementary.
The contested containers for contact lenses are similar to the opponent’s eye glass cases, as they can have the same relevant public and distribution channels. Furthermore, they are complementary.
The contested cassette players; compact disc players; DVD players; record players are similar to the opponent’s earphones and headphones, as the latter are items of apparatus for the reproduction of sound specifically intended for use with audio, video and media players. These goods are often sold through the same distribution channels and target the same consumers. Moreover, they can be complementary.
The contested photographic, cinematographic, teaching apparatus and instruments; apparatus for recording, transmission of sound or images; sound recording apparatus; sound transmitting apparatus; acoustic conduits; acoustic couplers; amplifiers; amplifying tubes; personal stereo, audiovisual teaching apparatus; cabinets for loudspeakers; horns for loudspeakers; intercommunication apparatus; juke boxes for computers; juke boxes, musical; microphones; loudspeakers; radios; radiotelegraphy sets; radiotelephony sets; sounding apparatus and machines; telephone receivers; telephone transmitters; video telephones; speaking tubes; walkie-talkies; telegraphs [apparatus]; television apparatus; video recorders are all kinds of audio-visual and communication apparatus and equipment. These goods and the opponent’s headphones and earphones at least have the same producers, relevant public and distribution channels. Some of the contested goods, such as loudspeakers, also have the same purpose and nature as the opponent’s goods. Therefore, these contested goods are at least similar to the opponent’s earphones and headphones.
The contested animated cartoons have same relevant points in common with the opponent’s entertainment services in the nature of live events, with the latter including live television shows. In fact, they have the same purpose. Moreover, they can have the same producers and relevant public. Therefore, they are similar.
The contested computers (listed twice); agendas (electronic -); data processing apparatus; data processing equipment, laptop computers; portable media players; portable telephones; telephone apparatus; mobile phones (listed twice); notebook computers; tablet computers (listed twice); electronic pocket translators are similar to the opponent’s protective covers and cases for cell phones, laptops, tablets, portable media players and other electronic devices, namely, mobile phones, smartphones, media players, music players, computers, and portable electronic devices, given that these goods have complementary characters. Moreover, they originate from the same manufacturers and are distributed through the same channels to the same public.
The contested cell phone straps are similar to the opponent’s protective cases for mobile phones to the extent that it is usual for such goods to derive from the same undertakings, to be distributed through the same channels and to target the same consumers.
The contested magnetic data carriers; recording discs; compact discs, DVDs and other digital recording media; compact discs [audio-video]; compact discs [read-only memory]; computer memory devices; disk drives for computers; disks, magnetic; magnetic data media; magnetic tape units for computers; magnetic tapes; optical data media; optical discs; phonograph records; sound recording carriers; sound recording strips; tape recorders; USB flash drives; video cassettes; video game cartridges; videotapes are data carriers. They are similar to low degree to the opponent’s earphones and headphones, as they can be used in combination, can be distributed through the same channels and can target the same public.
The contested computer software; computer programmes [programs], recorded; computer programs [downloadable software]; computer software, recorded; application software for mobile phones; software for tablet computers; computer operating programs, recorded include computer games sold to consumers for entertainment purposes, and the contested computer game programs; computer game software; computer game software for use on mobile and cellular phones; computer game software for computers, mobile phones and tablet computers; electronic game software for mobile phones are specifically for entertainment purposes. The contested goods have same relevant points in common with the opponent’s entertainment services in the nature of live events, competitions and exhibitions, as these goods and services can have the same relevant public and producers/providers. Furthermore, they are complementary. Therefore, the contested services and the opponent’s goods are similar to a low degree.
The contested divers’ masks; diving suits ear plugs for divers; filters for respiratory masks; fire blankets; gloves for divers; nose clips for divers and swimmers; anti-glare visors; asbestos clothing for protection against fire; asbestos gloves for protection against accidents; asbestos screens for firemen; breathing apparatus, except for artificial respiration; clothing especially made for laboratories; clothing for protection against accidents, irradiation and fire; clothing for protection against fire; gloves for protection against accidents; gloves for protection against x-rays for industrial purposes; protection devices against X-rays, not for medical purposes; Protection devices for personal use against accidents; goggles for sports; life belts; life jackets; life nets; life saving apparatus (listed twice) and equipment; life saving instruments (listed twice); life-saving rafts; nets for protection against accidents; protective masks; protective suits for aviators; safety restraints, other than for vehicle seats and sports equipment; safety tarpaulins; shoes for protection against accidents, irradiation and fire; socks, electrically heated; sprinkler systems for fire protection; teeth protectors; life buoys are different types of articles used to protect various parts of the body against the loss of life or limb. Although they are different in nature, these goods have the same purpose as the opponent’s helmets in Class 9. These goods target the same consumers, for instance those who take part in action sports or fire-fighters. Furthermore, these goods can be expected to originate from the same manufacturers and are distributed through the same specialised commercial channels. Therefore, the contested goods are similar to the opponent’s helmets.
None of the other contested goods has a close connection with the opponent’s goods and services in Classes 9 and 41. They have different natures and purposes and are not provided through the same channels. Moreover, they are not in competition with each other and they are not interchangeable. Therefore, they are dissimilar.
Contested services in Class 41
The opponent’s services are entertainment services in the nature of live events competitions and exhibitions. The contested services listed below are either identical or similar to various degrees to the opponent’s services:
Entertainment; Sporting and cultural activities; Amusement parks; Amusements; Arranging and conducting of concerts; Arranging of beauty contests Booking of seats for shows; Bookmobile services; Casino facilities [gambling] (Providing -); Cinema presentations; Circuses; Club services [entertainment]; Conducting fitness classes; Disc jockey services; Discotheque services; Entertainer services; Entertainment information; Fashion shows for entertainment purposes (Organization of -); Film production, other than advertising films; Gambling; Game services provided on-line from a computer network; Games equipment rental; Golf facilities (Providing -); Holiday camp services [entertainment]; Live performances (Presentation of -); Modelling for artists; Movie studios; Museum facilities (Providing -) [presentation, exhibitions]; Music composition services; Music-halls; News reporters services; Night clubs; Operating lotteries; Orchestra services; Organization of balls; Organization of competitions [education or entertainment]; Organization of exhibitions for cultural or educational purposes; Organization of shows [impresario services]; Organization of sports competitions; Production of music; Production of radio and television programmes; Production of shows; Providing amusement arcade services; Providing karaoke services; Providing on-line electronic publications, not downloadable; Providing sports facilities; Publication of books; Publication of electronic books and journals on-line; Publication of texts, other than publicity texts; Radio entertainment; Recording studio services; Recreation facilities (Providing -); Recreation information; Rental of audio equipment; Rental of camcorders; Rental of cine-films; Rental of lighting apparatus for theatrical sets or television studios; Rental of movie projectors and accessories; Rental of radio and television sets; Rental of show scenery; Rental of skin diving equipment; Rental of sound recordings; Rental of sports equipment, except vehicles; Rental of sports grounds; Rental of stadium facilities; Rental of stage scenery; Rental of tennis courts; Rental of video cassette recorders; Rental of videotapes; Scriptwriting services; Sport camp services; Subtitling; Television entertainment; Theatre productions; Ticket agency services [entertainment]; Timing of sports events; Toy rental; Videotape editing; Videotape film production; Videotaping; Writing of texts, other than publicity texts; Zoological garden services; Providing online games; providing computer games and video games that can be accessed, played and downloaded over computer networks and global communications networks; providing entertainment via computer networks; arranging and conducting competitions for video game players and computer game players; entertainment in the nature of contests, competition and games; organising of games; interactive games, interactive entertainment, interactive competitions and interactive quizzes; providing information on video games and computer games; provision of multimedia entertainment content via computer networks; publishing and providing of computer games; provision of information and advice relating to all the aforementioned services; electronic games services provided from a computer database or by means of the internet; electronic games services, including provision of computer games on line or by means of a global computer network; Entertainment services, namely, providing temporary use of non-downloadable computer games.
This is because some of these contested services are identical to, include, are included in or overlap with the opponent’s services and others coincide with the opponent’s services in several of the criteria used for the comparison of the goods and services cited above.
All the other contested services are related mainly to educational and training activities. They do not have a close connection with the opponent’s goods and services in Classes 9 and 41. They have different natures and purposes and are not provided through the same channels. Moreover, they are not in competition with each other and they are not interchangeable. Therefore, they are dissimilar.
Contested services in Class 42
The contested services are mainly scientific and technological services, industrial analysis and research services, services involving the design and development of computer hardware and software, and internet-related services. None of these services has a close connection with the opponent’s goods and services in Classes 9 and 41. They have different natures and purposes and are not provided through the same channels. Moreover, they are not in competition with each other and they are not interchangeable. Therefore, they are dissimilar.
- 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 relevant goods and services are directed at the public at large (e.g. cases adapted for mobile phones) and at a professional public (e.g. asbestos screens for firemen).
The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.
- The signs
MONSTER ENERGY 1) EUTM No 11 669 744 MONSTERCROSS 2) EUTM No 11 607 645 | |
Earlier trade marks | 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).
The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public, for which the signs under comparison are meaningful and, therefore, the conceptual aspect has an impact on the perception of the signs.
Both of the earlier marks are word marks and, therefore, neither of them has any element that could be considered clearly more dominant (visually eye-catching) than other elements. Earlier mark 1 is composed of two words, ‘MONSTER ENERGY’, and earlier mark 2 is composed of one word, ‘MONSTERCROSS’. Although earlier mark 2 has only one verbal element, it will be split by the relevant public into two verbal components (‘MONSTER’ and ‘CROSS’). This is because both of these verbal components are English words and will be recognised as such by the relevant public.
The English word ‘MONSTER’, included in all the signs under comparison, means, inter alia, ‘a large imaginary creature that looks very ugly and frightening‘ (information extracted from Collins Dictionary at https://www.collinsdictionary.com/dictionary/english/monster). This word is neither descriptive nor allusive for the relevant goods and services and, therefore, is distinctive. In addition, the English words ‘ENERGY’ and ‘CROSS’, of earlier marks 1 and 2, respectively, will be understood by the relevant public as meaning, inter alia, ‘A road, railway, or bridge that crosses an area of land or water passes over it’ (i.e. the word ‘CROSS’) and ‘capacity or tendency for intense activity; vigour’ (i.e. the word ‘ENERGY’) (see Collins Dictionary). The word ‘CROSS’ of earlier mark 2 is considered distinctive, since it is neither descriptive nor allusive for the relevant goods and services to an extent that would materially affect its degree of distinctiveness. Bering in mind that some of the relevant services are related to sport, the word ‘ENERGY’ of earlier mark 1 may be perceived as alluding to the energy required for the performance of these activities, and therefore this word is weak for some of the services.
The contested sign is a figurative sign consisting of the words ‘MONSTER Castle’ written in stylised bold letters. The word ‘Castle’ is placed below the word ‘MONSTER’. The words ‘MONSTER Castle’ are in different shades of grey. The English word ‘Castle’ is smaller than the word ‘MONSTER’ and, therefore, it is overshadowed by the latter.
The letters ‘M’ and ‘R’ of the word ‘MONSTER’ extend upwards with curved elements at their corners forming an integral part of the stylisation of the word. The applicant claims that that these two curved elements resemble horns. The Opposition Division observes that, as it is difficult to determine with certainty the concept (if any) that the public might attribute to these elements, it is considered that the majority of the public will perceive them simply as decorative curved elements with no immediately perceptible meaning. The Opposition Division will proceed with the comparison on this basis.
Although the word elements of the contested mark have a certain degree of graphic stylisation, as the applicant points out, the Opposition Division is of the opinion that this stylisation is not elaborate or striking enough to prevent consumers from perceiving the words as such. Moreover, as consumers are well accustomed to the stylisation of verbal elements in marks, they will perceive this stylisation, as well as the colours used in the contested sign, as merely a decorative depiction of the word elements.
As regards the figurative elements (the two curved elements) of the contested sign, it is important to emphasise that, in general, their impact on the evaluation of the visual similarity between the signs is minor. In fact, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component, since the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
The English word ‘Castle’ will be understood by the relevant public as meaning, inter alia, ‘a fortified building or set of buildings, usually permanently garrisoned, as in medieval Europe’. This word is considered distinctive, since it is neither descriptive nor allusive for the relevant goods and services to an extent that would materially affect its degree of distinctiveness.
Visually, the signs coincide in the word ‘MONSTER’. The fact that the marks coincide in the first part of the earlier marks and in the top and dominant part of the contested sign is particularly important. The importance to consumers of the first and top parts of signs is justified by the fact that the public reads from left to right and from top to bottom. However, the signs differ in the additional words ‘ENERGY’ of earlier mark 1, ‘CROSS’ of earlier mark 2 and ‘Castle’ of the contested sign. The marks also differ in the graphic stylisation and figurative elements of the contested sign, although these play a lesser role in the comparison of the signs, as explained above. Moreover, the additional verbal element ‘Castle’ of the contested sign and the additional verbal element ‘ENERGY’ of earlier mark 1 are considered less relevant, given their positions, the small size of the word ‘Castle’ and the low degree of distinctiveness of the word ‘ENERGY’ for some of the services. Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the word ‘MONSTER’. The pronunciation differs in the sound of the words ‘ENERGY’ of earlier mark 1, ‘CROSS’ of earlier mark 2 and ‘Castle’ of the contested mark. Account must be taken of the facts that the pronunciation of the first elements of the earlier marks is identical and that, for some of the services, the word ‘ENERGY’ is weak.
Therefore, the signs are aurally similar to at least an average degree.
Conceptually, and bearing in mind the abovementioned concepts with which the signs will be associated, there is at least an average degree of conceptual similarity between the marks, insofar as all the marks will be associated with the concept of the distinctive word ‘MONSTER’, and because all the other verbal elements in the earlier marks and the contested sign have a minor impact on consumers’ perception or because they are positioned at the end or bottom of the marks and/or because they are less dominant in the sign or weak for some of the services, as explained above.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- Distinctiveness of the earlier marks
The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.
According to the opponent, the earlier marks have been extensively used and enjoy an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of a weak element in earlier mark 1 as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
In the present case, the contested goods and services are partly identical, partly similar (to varying degrees) and partly dissimilar to the opponent’s goods and services. The degree of attention paid by the relevant public may vary from average to high. The signs are visually similar to an average degree and aurally and conceptually similar to at least an average degree.
The coinciding word ‘MONSTER’ is placed at the beginning of the earlier marks, the part of a mark to which consumers usually pay more attention, and is the top and dominant element of the contested sign. Consequently, the coinciding word ‘MONSTER’ plays an important role when assessing the likelihood of confusion between the marks.
The differences created by the additional verbal elements of the marks (the words ‘ENERGY’ of earlier mark 1, ‘CROSS’ of earlier mark 2 and ‘Castle’ of the contested mark) and the figurative elements and stylisation of the contested sign do not have a decisive impact on the overall impressions created by the signs, for the reasons explained above in section c).
Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.
Taking all the above into account, the Opposition Division considers that the additional and differing elements of the signs are not sufficient to counteract the similarities between the signs arising from the coincidence in the distinctive word ‘MONSTER’. Therefore, the relevant public, including the part displaying a high degree of attention, when encountering the signs in relation to identical or similar goods and services is likely to think that they come from the same undertaking or, as the case may be, from economically linked undertakings.
This is also true for the goods and services that have been found to be similar to a low degree. In this regard, it should be mentioned that a lesser degree of similarity between the goods and/or services may be offset by a greater degree of similarity between the signs and vice versa. Therefore, the average degree of visual similarity and (at least) average degree of aural and conceptual similarity between the signs are sufficient to offset the low degree of similarity between the goods and services and to find a likelihood of confusion on the part of the public with regard to these goods and services also.
In its observations, the applicant argues that ‘the average consumer is used to seeing the monsters as themes for all manner of goods and services. For example, there are countless books, movies and games which contain monsters as part of the story and/or in the title’. The applicant also argues that ‘Monster is also a common theme for phone cases’. In support of its argument, the applicant refers to printouts showing the results of Google searches.
The Opposition Division notes that this evidence is simply printouts showing Google search results for the word ‘Monster’ and is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of the internet printouts submitted by the applicant, it cannot be assumed that consumers have been exposed to widespread use of and have become accustomed to trade marks that include the word ‘MONSTER’. Moreover, the fact that the word ‘Monster’ is present in some stories or films regarding monsters does not mean that this word is commonly used in a descriptive way to refer to the opponent’s goods and services. Under these circumstances, the applicant’s claims must be set aside.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registrations No 11 669 744 and No 11 607 645.
It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to various degrees to those of the earlier trade marks.
The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.
Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their extensive use as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.
Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing marks in relation to dissimilar goods and services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
María Belén IBARRA DE DIEGO | Angela DI BLASIO | Michele M. BENEDETTI-ALOISI |
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.