Moshi Monsters | Decision 2295825 - Monster Energy Company v. Mind Candy Limited

Date Published: Sep 25, 2017

OPPOSITION No B 2 295 825

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

a g a i n s t

Mind Candy Limited, Unit 4.01, Tea Building, 56 Shoreditch High Street, London E1 6JJ, United Kingdom (applicant), represented by Clintons, 55 Drury Lane, Covent Garden, London WC2B 5RZ, United Kingdom (professional representative).

On 25/07/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 295 825 is upheld for all the contested goods, namely

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; photographs; stationery; books; periodicals; picture books; comics; diaries; notebooks; notepads; flash cards; greeting cards; book marks; stickers; transfers; decalcomanias; calendars; pictures; posters; prints; folders; paper weights; pencils; pens; erasers; pencil cases.

Class 25: Clothing, footwear, headgear.

Class 30: Coffee, tea, cocoa and artificial coffee; Rice; Tapioca and sago; Flour and preparations made from cereals; Bread, pastry and confectionery; Ices; Sugar, honey, treacle; Yeast, baking-powder; Salt; Mustard; Vinegar, sauces (condiments); Spices; Ice; Allspice; Almond confectionery; Almond paste; Aniseed; Aromatic preparations for food; Artificial coffee; Baking powder; Baking soda [bicarbonate of soda for cooking purposes]; Barley meal; Bean meal; Bee glue; Beer vinegar; Binding agents for ice cream; Bread; Bread rolls; Breadcrumbs; Buns; Cake frosting [icing]; Cake powder; Cakes; Candy; Capers; Caramels [candy]; Celery salt; Cereal bars; Cereal-based snack food; Cereal preparations; Cheeseburgers [sandwiches]; Chewing gum; Chicory [coffee substitute]; Chips [cereal products]; Chocolate; Chocolate-based beverages; Chocolate beverages with milk; Chocolate mousses; Chow-chow [condiment]; Chutneys [condiments]; Cinnamon [spice]; Cloves [spice]; Cocoa; Cocoa-based beverages; Cocoa beverages with milk; Coffee; Coffee-based beverages; Coffee beverages with milk; Coffee flavorings [flavourings]; Condiments; Confectionery; Confectionery for decorating Christmas trees; Cookies; Cooking salt; Corn flakes; Corn meal; Corn, milled; Corn, roasted; Couscous [semolina]; Crackers; Cream of tartar for culinary purposes; Crushed barley; Crushed oats; Curry [spice]; Custard; Dessert mousses [confectionery]; Dough; Dressings for salad; Edible ices; Essences for foodstuffs, except etheric essences and essential oils; Farinaceous foods; Ferments for pastes; Flavorings, other than essential oils; Flavorings, other than essential oils, for beverages; Flavorings, other than essential oils, for cakes; Flour-milling products; Fondants [confectionery]; Frozen yogurt [confectionery ices]; Fruit coulis [sauces]; Fruit jellies [confectionery]; Garden herbs, preserved [seasonings]; Ginger [spice]; Gingerbread; Glucose for culinary purposes; Gluten additives for culinary purposes; Gluten prepared as foodstuff; Golden syrup; Groats for human food; Gruel, with a milk base, for food; Halvah; Ham glaze; High-protein cereal bars; Hominy; Hominy grits; Honey; Husked barley; Husked oats; Ice cream; Ice for refreshment; Ice, natural or artificial; Iced tea; Infusions, not medicinal; Ketchup [sauce]; Leaven; Linseed for human consumption; Liquorice [confectionery]; Lozenges [confectionery]; Macaroni; Macaroons [pastry]; Malt biscuits; Malt extract for food; Malt for human consumption; Maltose; Marinades; Marzipan; Mayonnaise; Meal; Meat gravies; Meat pies; Meat tenderizers, for household purposes; Mint for confectionery; Molasses for food; Muesli; Mustard; Mustard meal; Natural sweeteners; Noodle-based prepared meals; Noodles; Nutmegs; Oat-based food; Oat flakes; Oatmeal; Palm sugar; Pancakes; Pasta; Pasta sauce; Pasties; Pastries; Pastry; Peanut confectionery; Pepper; Peppermint sweets; Peppers [seasonings]; Pesto [sauce]; Petit-beurre biscuits; Petits fours [cakes]; Pies; Pizzas; Popcorn; Potato flour for food; Powders for ice cream; Pralines; Preparations for stiffening whipped cream; Puddings; Quiches; Ravioli; Relish [condiment]; Rice; Rice-based snack food; Rice cakes; Royal jelly; Rusks; Saffron [seasoning]; Sago; Salt for preserving foodstuffs; Sandwiches; Sauces [condiments]; Sausage binding materials; Sea water for cooking; Seasonings; Seaweed [condiment]; Semolina; Sorbets [ices]; Soya bean paste [condiment]; Soya flour; Soya sauce; Spaghetti; Spices; Spring rolls; Star aniseed; Starch for food; Stick liquorice [confectionery]; Sugar; Sushi; Sweetmeats [candy]; Tabbouleh; Tacos; Tapioca; Tapioca flour for food; Tarts; Tea; Tea-based beverages; Thickening agents for cooking foodstuffs; Tomato sauce; Tortillas; Turmeric for food; Unleavened bread; Unroasted coffee; Vanilla [flavoring] [flavouring]; Vanillin [vanilla substitute]; Vegetal preparations for use as coffee substitutes; Vermicelli [noodles]; Vinegar; Waffles; Wheat flour; Wheat germ for human consumption; Yeast.

2. European Union trade mark application No 12 141 131 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 12 141 131 (word mark ‘Moshi Monsters’), namely against all the goods in Classes 16, 25 and 30. The opposition is based on, inter alia, European Union trade mark registration No 11 154 739 (figurative mark ). The opponent invoked Article 8(1)(b) and 8(5) 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 11 154 739.

The goods

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

Class 5: Nutritional supplements in liquid form.

Class 16: Printed matter and publications; posters; stickers and decals; transfers; cards; stationery; signboards.

Class 25: Clothing, footwear, headgear.

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

Class 32: Non-alcoholic beverages.

The contested goods are the following:

Class 25: Clothing, footwear, headgear.

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 16

Printed matter; stationery; posters; transfers and stickers are identically contained in both lists of goods.

The contested photographs; books; periodicals; picture books; comics; diaries; flash cards; greeting cards; calendars; pictures and prints are included in the broad category of, or overlap with, the opponent’s printed matter. Therefore, they are identical.

The contested decalcomanias and the opponent’s decals are synonyms and, therefore, identical.

The contested paper, cardboard; notebooks; notepads; book marks; folders; paper weights; pencils; pens; erasers; pencil cases are included in the broad category of, or overlap with, the opponent’s stationery. Therefore, they are identical.

As regards the contested goods made from these materials [paper and cardboard], not included in other classes and the opponent’s printed matter, these goods coincide in their nature. Their purpose, in the broadest sense, may also be the same in that they comprise materials on which something has been/can be printed. To that extent these goods are similar to a low degree. However, in the absence of an express limitation by the applicant in order to clarify its goods, it cannot be assumed that they coincide in other criteria.

Contested goods in Class 25

Clothing, footwear, headgear are identically contained in both lists of goods.

Contested goods in Class 30

Coffee-based beverages; iced tea and tea-based beverages are identically contained in both lists of goods.

The contested coffee (included two times in the applicant’s list of goods) and coffee beverages with milk overlap with the opponent’s coffee-based beverages. Therefore, they are considered identical.

The contested tea (included two times in the applicant’s list of goods) and infusions, not medicinal overlap with the opponent’s tea-based beverages. Therefore, they are considered identical.

The contested cocoa and artificial coffee (both items included two times in the applicant’s list of goods); chicory [coffee substitute]; chocolate-based beverages; chocolate beverages with milk; cocoa-based beverages; cocoa beverages with milk; unroasted coffee and vegetal preparations for use as coffee substitutes are at least similar to the opponent’s coffee-based beverages since the goods under comparison are products of plant origin with certain stimulating properties. As a consequence they are in competition with each other and can coincide in method of use, end users, distribution channels and (partly) also in the usual commercial origin.

The contested ices; edible ices; frozen yogurt [confectionery ices]; ice cream and sorbets [ices] and the opponent’s iced coffee are in competition with each other and target the same public who may buy these products at the same points of sale (e.g. in the refrigerated dairy section of supermarkets and stores or in cafeterias and restaurants). Furthermore, the may be produced by the same manufacturers. Therefore, they are similar.

The contested coffee flavorings [flavourings] are substances (powders, liquids, etc.) used to give a coffee flavour to other foodstuffs or beverages. Although the contested goods and the opponent’s coffee-based beverages differ in nature, they have the same purpose and method of use. Therefore, they are similar to a low degree.

The remaining contested goods are or fall in the categories of rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice; bee food products other than honey; convenience foods and savory snacks; flavourings; binding agents for culinary purposes; thickening and stiffening agents for culinary purposes; meat tenderizers, for household purposes and sea water for cooking. These contested goods are dissimilar to all the opponent´s goods in Classes 5, 16, 25, 30 and 32. Even though some of the opponent’s goods are for human consumption (e.g. the beverages in Classes 30 and 32), this is not enough for finding similarity with the remaining contested goods, since the goods under comparison have a different purpose and tend to have a different origin. They are neither in competition, nor complementary each other and even if found in large department stores, the goods in comparison would not be placed next to each other.

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 or similar (to various degrees) are directed at the public at large. The degree of attention is considered to be average.

The signs

Moshi Monsters

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).

The earlier mark is a figurative sign consisting of a black rectangular label upon which three vertical roughly-drawn lines in green are placed, which, considering the verbal element below, may be perceived as a figurative letter ‘M’. Below this element is the word ‘MONSTER’ depicted in bold white capital stylised letters with the letter ‘O’ bisected by a vertical line. Underneath the word ‘MONSTER’, is the word ‘ENERGY’ in smaller standard green capital letters.

The contested mark is a word mark consisting of the elements ‘Moshi Monsters’.

The word ‘MONSTER’ of the earlier mark and its plural form ‘MONSTERS’ of the contested sign will be perceived by the majority of the relevant public as ‘(an) imaginary creature(s) that is/are typically large, ugly, and frightening’, either because these words exist in their own language (e.g. in English and German), or because these words are highly similar to the equivalent in their language, for example ‘monstre’ in French, ‘monstru’ in Maltese and Romanian, ‘monstrum’ in Polish, ‘monstras’ in Lithuanian, ‘monstrs’ in Latvian, and ‘monsteri’ in Finnish. However, for a part of the public in the European Union, for example the Bulgarian-, Czech- and Slovak-speaking consumers, neither ‘MONSTER’ nor ‘Monsters’ has a meaning (10/02/2017, R 1062/2016-2, MONSTER DIP (fig.) / MONSTER ENERGY (fig.) et al., § 71; 30/05/2016, R 478/2015-2, MONSTERS UNIVERSITY / MONSTER ENERGY (fig.) et al., § 57).

The element ‘ENERGY’ of the earlier mark is likely to be understood by a large part of the relevant general public throughout the European Union, especially the English-speaking public, but also the Spanish (energia), Portuguese, Slovak, Polish and Finnish (energia), Danish (enerrgi), Maltese (enerġija), French, Romanian, Dutch and Czech (energie), Lithuanian (energija) or Latvian (enerģija) –speaking public, as meaning the ‘strength and vitality required for sustained physical or mental activity’ (30/05/2016, R 478/2015-2, MONSTERS UNIVERSITY / MONSTER ENERGY (fig.) et al., § 58).

Furthermore, the combination of ‘MONSTER’ and ‘Energy’ in the earlier mark may be seen by the English-speaking public as referring to ‘energy of a monster’ (30/05/2016, R 478/2015-2, MONSTERS UNIVERSITY / MONSTER ENERGY (fig.) et al., § 80; 17/05/2017, R 1801/2016-2, MONSTROUS / MONSTER ENERGY (fig.) et al., § 37). However, for the majority of the relevant public this combination will not bring to mind a semantic content that is more than the sum of its parts.

The verbal elements of the earlier mark are meaningless (and, therefore, normally distinctive) in relation to the opponent’s relevant goods (with the exception of the goods in Class 30), even if the meaning of the words in the mark at issue will be understood by the relevant public. Further, the black rectangular label is purely decorative and non-distinctive while the figurative device on top of the earlier mark does not have a meaning in relation to the goods and is distinctive (even if this device will be perceived as a letter ‘M’, due to its high stylisation and in the context of the remaining elements, the Opposition Division considers it unlikely that the relevant public would see it as indication of the size of goods in Class 25, for example). In relation to the relevant beverages in Class 30, it my not be excluded that for a part of the relevant public, the word ‘ENERGY’ (and the combination ‘MONSTER ENERGY’, for a part of the English-speaking public), may be seen as referring to characteristics of the goods (alluding to the fact that they may provide energy) and, consequently, will be in such case of limited distinctiveness.

In the overall impression of the earlier mark, the Opposition Division notes that the figurative element that might be perceived as a letter ‘M’ is clearly visible and is visually eye-catching because of its very large size, its position and its uncommon stylisation. As such, it can be considered to be the dominant element or at least co-dominant element with the word element ‘MONSTER’. However, at least part of the public will perceive the figurative ‘M’ only as an element referring to the first letter of the main element ‘MONSTER’, the latter, given its size and position, being also clearly perceivable. Furthermore, it must be borne in mind that even when signs consist of both verbal and figurative components, in principle, the verbal component of the sign also has a strong impact on the consumer. This is because 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 § 24; 13/12/2011, R 53/2011-5, Jumbo, § 59). Consequently, it cannot be held that the figurative ‘M’ has a greater impact on the overall impression of the earlier mark than the element ‘MONSTER’. As regards the element ‘ENERGY’, due to its subordinate position underneath the word ‘MONSTER’ and its relatively small letters in a fairly standard typeface, it must be considered of secondary importance vis-a-vis the larger and more stylized word ‘MONSTER’.

The verbal element 'Moshi' of the contested sign corresponds to the name of places in Tanzania or China; however, it is reasonable to assume that the average consumer in the relevant territory will perceive it as a fanciful word without a particular meaning. Consequently, the distinctiveness of the elements of the contested sign is normal. The contested sign, being a word mark, has no dominant (visually outstanding) elements.

Visually, the signs coincide in the letters ‘MONSTER’ which form one of the main elements of the earlier mark and are entirely incorporated in the second element of the contested sign. Since the contested sign is a word mark, the use of the upper case and lower case characters in the signs under comparison is immaterial, because in the case of word marks it is the word as such that is protected and not its written form. However, the signs differ in the above mentioned additional verbal and figurative elements of the earlier mark and in the additional word ‘Moshi’ and final letter ‘S’ of the contested sign.

Therefore, and taking into account the distinctiveness and the weight of the elements in the overall impression of the signs, they are visually similar to at least a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛MONSTER’, present identically in both signs. The pronunciation differs in the sound of the respective additional elements, namely ‘ENERGY’ and, for part of the public, the letter ‘M’ (if perceived as the letter ‘M’) in the earlier mark and the first word ‘Moshi’ and the last letter ‘S’ in the contested sign.

Therefore, the signs are similar to a no more than average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public which would perceive in both marks the concept of a ‘MONSTER’, the signs are similar to at least an average degree. For the remaining part of the public which would not see a concept in the contested sign but only a concept in the earlier mark, the signs are not conceptually similar. Finally, for the part of the public (if any) which would not perceive a concept in either of the marks, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs.

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 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.

According to the opponent, the earlier mark has been extensively used and enjoys 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 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.

Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22). Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services.

In the present case, the contested goods are partly identical, partly similar to various degrees and partly dissimilar to those of the earlier mark and are directed at the public at large whose degree of attention is average. As has been concluded above, the earlier mark is considered to enjoy a normal degree of inherent distinctiveness.

The marks in dispute have been found to be visually and aurally similar to a certain degree and conceptually similar for the part of the public that attributes the same meaning to the verbal element ‘MONSTER’.

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.

The additional element ‘Moshi’, which is perceived as a fanciful word in the relevant territory, repeats the first syllable of the element ‘Monster(s)’ of the conflicting signs. Market reality shows that enterprises commonly develop a brand strategy involving variations of the main trade mark by means of alliteration and rhyme. Therefore, it is highly conceivable that the relevant consumer (even the part of the public that would perceive the expression ‘MONSTER ENERGY’ as allusive but especially the large part of the public for which this combination will not be seen as more than the sum of its parts and ‘ENERGY’ will be allusive) will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (even to a low degree) to those of the earlier trade mark.

The rest of the contested goods 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 cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use and reputation as claimed by the opponent and in relation to identical and similar goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, 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 mark enjoyed an enhanced degree of distinctiveness.

REPUTATION – ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier EUTM No 11 154 739, for which the opponent claimed repute in the EU.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

The signs must be either identical or similar.

The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark. In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

Reputation of the earlier trade mark

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 14/09/2013. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 25: Clothing, footwear, headgear.

Class 32: Non-alcoholic beverages.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 07/11/2016 the opponent submitted, in particular, the following evidence:

A witness statement of Rodney Cyril Sacks, the Chairman and the Chief Executive Officer of Monster Beverage Corporation, dated 27/10/2016. It is stated therein, inter alia, that:

The business of opponent is the design, creation, development, production, marketing and selling energy drinks.

Since the launch of the Monster Energy drink in Europe in January 2008, the ‘MONSTER’ marks have been and continue to be used extensively in Europe (notably in all EU member states). Currently, MONSTER ENERGY drinks are the best-selling energy drinks in the United States by unit volume and dollar value, the second best-selling worldwide by unit volume and the second best selling in terms of both unit volume and dollar volume throughout the EU.

Millions of cans of Monster energy drinks are sold every month in the EU. Through 31/12/2015 the opponent has sold more than 1,7 billion cans of Monster energy drinks in the EU. In the EU opponent’s energy drinks are sold in over 275.000 retail stores and outlets.

The combined sales of Monster energy drinks bearing the Monster marks in the member states of the EU were for 2015, EUR 286 million, for 2014, EUR 241 million, for 2013, EUR 229 million, for 2012, EUR 192 million, for 2011, EUR129 million, for 2010, EUR 75 million and for 2009 EUR, 40 million.

The opponent allocates a large proportion of its marketing, advertising and promotional budget to athlete endorsements and sponsoring athletic competitions and other events. The opponent sponsors for example the Road Racing World Championship Grand Prix events and a Mercedes F1 racing team that competes in the FIA Formula One World Championship Series.

In Europe, the Middle East and Africa over the period of 2008 till 30/09/2015 opponent has spent in excess of US dollars 685.5 million in advertising, marketing and promoting its Monster energy drinks and in 2015 the opponent has spent in excess of EUR 119.4 million in advertising, marketing and promotion in the EU.

According to the opponent, the website www.monsterenergy.com which was launched in 2003 and has been available to internet users based in the EU since that date. For the period from 01/09/2010 to 31/07/2016 the website received more than 31,5 million visitors, with more than 9 million visits from the EU. The exposure of the Monster marks on social media websites has also expanded (for example, the Monster energy Facebook page was set up on 20/04/2008 and currently has more than 24,6 million likes, with over 5.7 million coming from individuals residing in the EU).

The opponent has used and continues to use, its Monster marks on clothing since 2002 and apparel and merchandising bearing the Monster marks are sold in many places throughout the world, including in the EU

The opponent also provided the following exhibits:

Exhibit RCS-1: list of ‘MONSTER’ marks in the EU.

Exhibit RCS-2: exemplary invoices issued to the Wetherspoon chain of pubs in the United Kingdom (around 13 invoices dated in the period 2011 - 2016).

Exhibit RCS-3: extracts from contracts with on-premise retailers in the United Kingdom signed in 2009, 2010, 2012 and 2013.

Exhibit RCS-4: Copies of photographs showing cans of energy drinks bearing the Monster energy mark represented in different colours such as blue and green and sometimes in combination with additional elements such as ‘locarb’ or ‘export’, ´Taurine´, ´Ginseng´, ´L-Carnitine´, ´Guarana´, ´Vitamins´, etc.

Exhibits RCS-6 - RCS-7: Slides from presentations presented to investors and filed with the U.S. Securities and Exchange Commission which contain market share information relating to sales of Monster energy drinks in the European Union and South Africa.

Exhibit RCS-8: A document entitled ‘Energy Drinks Key Performance Report’ prepared for the opponent by Nielsen and showing the market share (by value and by unit) in EU Member States.

Exhibit RCS-9: A report showing the opponent´s market share for 2013, 2014, 2015 and for the 13 weeks ending 10/09/2016 in most of the EU member states showing that, for example, for the said period in 2016 Monster had a market share of more than 25 % in Spain, more than 14 % in the United Kingdom, more than 15 % in Germany.

Exhibits RCS-10 - RCS-15: A selection of web clippings, articles and reports dated between 2008 and 2016 from the United Kingdom, France, Germany, the Benelux, Spain (partly not in the language of the proceedings), etc. in relation to different (inter alia sponsoring) activities of the opponent (World championship motorsport, F1 pilots) or to the energy drink market and the opponent´s position among the brand leaders (it is mentioned that ´Monster´s success is also due in large part to strong brand building´).

Exhibits RCS-16 – RCS-72: photographs and promotional material showing use of the MONSTER marks by Monster sponsored teams and events (including photographs of sports personalities, professional and amateur athletes wearing MONSTER branded clothing, professional musicians, music festivals).

Exhibits RCS-81 – RCS-90: Extracts from MONSTER websites within the EU and examples of MONSTER on social media, as well as visitors/viewers statistics.

Exhibits RCS-91(a) – RCS-95: Copies of licensees´ websites and catalogues, POS catalogues, etc., showing examples of clothing, merchandise and apparel which bear the Monster marks

Exhibits RCS-103 – RCS-106: Articles about the success of the company Hansen Natural and its Monster energy drink in different magazines (e.g. Forbes, Newsweek) and awards and listings received by the opponent, acknowledged as a leader in the beverage industry, including rank 7 in 2016 Ranking of The World´s Most Innovative Companies of Forbes and ‘Liquid Refreshment Company of the Year’ (2012).

On the basis of the above the Opposition Division concludes that the earlier trade mark has a reputation in the European Union for energy drinks in Class 32.

It is clear from the evidence that the earlier trade mark has been subject to long-standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources. The sales figures, marketing expenditure and market share shown by the evidence and the various references in the press to its success all unequivocally show that the mark enjoys a high degree of recognition among the relevant public.

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to energy drinks whereas there is no or little reference to other types of non-alcoholic beverages. Furthermore, although it is true that the opponent has demonstrated use of the earlier mark in relation to some merchandising, apparel and clothing, it has failed to prove use on a large enough scale to have acquired any kind of reputation and has also not proven otherwise that the earlier mark enjoys a certain level of recognition among the relevant public for the any other goods except for energy drinks.

The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. The Opposition Division points out that the earlier mark has been found to have reputation for energy drinks in Class 32 and, consequently, these are the relevant goods for which the assessment of the distinctiveness of the elements of the earlier mark is to be carried out. The Opposition Division is of the view that the analysis of the distinctiveness of the elements of the earlier mark performed under Article 8(1)(b) EUTMR with regard to Class 30 is equally applicable with regard to the relevant goods under the grounds of Article 8(5) EUTMR and, therefore, reference is made to those findings and to the comparison performed under Article 8(1)(b) EUTMR.

The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙ the degree of similarity between the signs;

∙ the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙ the strength of the earlier mark’s reputation;

∙ the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙ the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

In the present case, as set out in detail under the grounds of Article 8(1)(b) EUTMR above, the conflicting signs are similar to the extent that a likelihood of confusion cannot be safely excluded for identical or similar (even to a low degree) goods. Furthermore, the earlier mark as a whole is inherently distinctive for the goods for which a reputation has been found, namely energy drinks in Class 32. Even if when purchasing the relevant goods part of the English-speaking consumers might consider the expression ‘MONSTER ENERGY’ somewhat inherently weak for energy drinks, the earlier mark, nevertheless, acquired a considerable reputation in the relevant territory and that fact cannot be ignored when considering the perception of similarity that may be triggered in the minds of the relevant public who encounter the mark applied for. This is even more so the case for a large part of the public, for which the element ‘ENERGY’ in the earlier mark is not only secondary but also of limited distinctiveness while ‘MONSTER’ does not convey a meaning in connection with the goods and is inherently distinctive.

The earlier mark possesses a strong reputation for energy drinks in Class 32.

At this point, the Opposition Division finds it useful to recall that the examination of the opposition continues with regard to the contested goods, for which the opposition was rejected under the ground of Article 8(1)(b) EUTMR, namely:

Class 30: Rice; Tapioca and sago; Flour and preparations made from cereals; Bread, pastry and confectionery; Sugar, honey, treacle; Yeast, baking-powder; Salt; Mustard; Vinegar, sauces (condiments); Spices; Ice; Allspice; Almond confectionery; Almond paste; Aniseed; Aromatic preparations for food; Baking powder; Baking soda [bicarbonate of soda for cooking purposes]; Barley meal; Bean meal; Bee glue; Beer vinegar; Binding agents for ice cream; Bread; Bread rolls; Breadcrumbs; Buns; Cake frosting [icing]; Cake powder; Cakes; Candy; Capers; Caramels [candy]; Celery salt; Cereal bars; Cereal-based snack food; Cereal preparations; Cheeseburgers [sandwiches]; Chewing gum; Chips [cereal products]; Chocolate; Chocolate mousses; Chow-chow [condiment]; Chutneys [condiments]; Cinnamon [spice]; Cloves [spice]; Condiments; Confectionery; Confectionery for decorating Christmas trees; Cookies; Cooking salt; Corn flakes; Corn meal; Corn, milled; Corn, roasted; Couscous [semolina]; Crackers; Cream of tartar for culinary purposes; Crushed barley; Crushed oats; Curry [spice]; Custard; Dessert mousses [confectionery]; Dough; Dressings for salad; Essences for foodstuffs, except etheric essences and essential oils; Farinaceous foods; Ferments for pastes; Flavorings, other than essential oils; Flavorings, other than essential oils, for beverages; Flavorings, other than essential oils, for cakes; Flour-milling products; Fondants [confectionery]; Fruit coulis [sauces]; Fruit jellies [confectionery]; Garden herbs, preserved [seasonings]; Ginger [spice]; Gingerbread; Glucose for culinary purposes; Gluten additives for culinary purposes; Gluten prepared as foodstuff; Golden syrup; Groats for human food; Gruel, with a milk base, for food; Halvah; Ham glaze; High-protein cereal bars; Hominy; Hominy grits; Honey; Husked barley; Husked oats; Ice for refreshment; Ice, natural or artificial; Ketchup [sauce]; Leaven; Linseed for human consumption; Liquorice [confectionery]; Lozenges [confectionery]; Macaroni; Macaroons [pastry]; Malt biscuits; Malt extract for food; Malt for human consumption; Maltose; Marinades; Marzipan; Mayonnaise; Meal; Meat gravies; Meat pies; Meat tenderizers, for household purposes; Mint for confectionery; Molasses for food; Muesli; Mustard; Mustard meal; Natural sweeteners; Noodle-based prepared meals; Noodles; Nutmegs; Oat-based food; Oat flakes; Oatmeal; Palm sugar; Pancakes; Pasta; Pasta sauce; Pasties; Pastries; Pastry; Peanut confectionery; Pepper; Peppermint sweets; Peppers [seasonings]; Pesto [sauce]; Petit-beurre biscuits; Petits fours [cakes]; Pies; Pizzas; Popcorn; Potato flour for food; Powders for ice cream; Pralines; Preparations for stiffening whipped cream; Puddings; Quiches; Ravioli; Relish [condiment]; Rice; Rice-based snack food; Rice cakes; Royal jelly; Rusks; Saffron [seasoning]; Sago; Salt for preserving foodstuffs; Sandwiches; Sauces [condiments]; Sausage binding materials; Sea water for cooking; Seasonings; Seaweed [condiment]; Semolina; Soya bean paste [condiment]; Soya flour; Soya sauce; Spaghetti; Spices; Spring rolls; Star aniseed; Starch for food; Stick liquorice [confectionery]; Sugar; Sushi; Sweetmeats [candy]; Tabbouleh; Tacos; Tapioca; Tapioca flour for food; Tarts; Thickening agents for cooking foodstuffs; Tomato sauce; Tortillas; Turmeric for food; Unleavened bread; Vanilla [flavoring] [flavouring]; Vanillin [vanilla substitute]; Vermicelli [noodles]; Vinegar; Waffles; Wheat flour; Wheat germ for human consumption; Yeast.

A significant part of the contested goods are types of confectionery (e.g. candy; chocolate; caramels [candy]) or different snack foods (e.g. rice-based snack food, tortillas, sandwiches). The Opposition Division is of the view that the relevant public will easily establish a link between the earlier mark on the opponent’s goods and these contested goods marketed under the contested mark, especially considering that all the goods in question target the same public and are commonly marketed or seen as high energy based food products (17/05/2017, R 1801/2016-2, MONSTROUS / MONSTER ENERGY (fig.) et al., § 61). Furthermore, these contested goods (as well as further contested goods, such as ice) may be consumed together with the opponent’s goods on certain occasions (e.g. at parties, as snacks etc.).

Moreover, some of the contested goods (sugar or goods falling in the category of flavourings for beverages) also belong to neighbouring markets so that the proximity of the respective sectors would not rule out the possibility of a link in the minds of the overlapping consumers.

The remaining contested goods are or fall in different categories such as rice; tapioca and sago; flour, vinegar, yeast, etc. It may be the case that these contested goods and the opponent’s reputed goods are neither similar not share such a direct connection as the aforementioned contested goods confectionery, snacks, etc. However, account must be taken of the fact that foodstuffs and beverages belong to proximate sections of the market and there is a clear overlap between the relevant public for the goods at issue.

It is true that the risk of association (or ‘link’) between the signs decreases as the proximity between the contested goods and energy drinks weakens. However, it is to be noted that it is not a condition of Article 8(5) EUTMR that the contested goods be similar, only that there be a ‘relevant factor’ for the purposes of establishing the necessary link. Indeed, the Article was originally drawn up in terms of contested goods or services that were not similar.

In view of all relevant factors in the present case, in particular the strong reputation of the earlier mark, the similarity between the signs, the overlap of the relevant public and the proximity of the market sectors, the Opposition Division finds that such a link in the mind of the consumers, when being confronted by the ‘Moshi Monsters’ trade mark in connection with the remaining contested goods, also cannot be excluded.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that when encountering the contested mark the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 96).

Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

∙ it takes unfair advantage of the distinctive character or the repute of the earlier mark;

∙ it is detrimental to the repute of the earlier mark;

∙ it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims that its earlier mark enjoys an extensive reputation, so that the relevant public would make a link between the marks in question and this link would affect the economic behaviour of the public and lead to the risk that without due cause the contested mark takes unfair advantage of the distinctive character and/or reputation of the opponent’s mark. The opponent finds that the calling to mind of the earlier mark has the effect of inciting consumer interest in the contested goods by adding the ‘Monster’ reputation to the applicant’s goods. Furthermore, the opponent claims that due to the presence of another ‘MONSTER’ mark on the market the distinctiveness of the earlier mark would be eroded. The opponent is also of the opinion that the opponent’s reputation and trust gained by the opponent’s quality products would be damaged.

In other words, the opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to the distinctive character and repute of the earlier trade mark.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).

The opponent claims that the contested mark will gain undeserved exposure merely on the basis that the mark and the goods for which registration is sought are highly similar to the opponent’s goods in respect of which the opponent enjoys extensive reputation in the European Union. The advantage gained by the applicant is unfair as it is parasitic on the well/established reputation and goodwill enjoyed by the opponent’s goods under the earlier mark.

The notion of taking unfair advantage of distinctiveness or repute covers cases where the applicant benefits from the attractiveness of the earlier right by affixing on its goods/services a sign which is similar (or identical) to one widely known in the market and, thus, misappropriating its attractive powers and advertising value or exploiting its reputation, image and prestige. This may lead to unacceptable situations of commercial parasitism where the applicant is allowed to take a ‘freeride’ on the investment of the opponent in promoting and building-up goodwill for its mark, as it may stimulate the sales of the applicant’s products to an extent which is disproportionately high in comparison with the size of its promotional investment.

In the Opposition Division’s view, there is a probability of free-riding in the circumstances of this case. Due to the long-established use and recognition of the earlier mark there is a risk that the image of the reputed mark – or the characteristics which it projects (which in the present case concerns that of a well-known energy drink), will be transferred to the contested goods, with the result that the marketing of those goods is made easier by the association with the earlier mark. Although in its submissions the opponent limited itself to rather general statements and argumentation it did nevertheless put forward a coherent line of argument, showing how unfair advantage would occur, and that it is indeed likely in the ordinary course of event and, furthermore, the submitted evidence not only shows the opponent used the earlier mark intensively but also provides indications as to the image of the opponent’s mark and brand extensions in different sectors (merchandising, clothing, apparel, computer games, as acknowledged by the applicant). Therefore, given that the contested goods are different foodstuffs, there is a risk that the image achieved by the opponent’s earlier mark in the minds of consumers (especially those consumers who will be prompted to perceive the expression ‘MONSTER’ or ‘MONSTER ENERGY’ as arbitrary) will be transferred to the contested goods, which in turn would enhance the contested mark’s ability to stand out among its competitors – an association that would provide the applicant with an unfair advantage.

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Other types of injury

The opponent also argues that use of the contested trade mark would be detrimental to the distinctive character and repute of the earlier trade mark.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.

Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods.

Given that the opposition is entirely successful under Article 8(1)(b) EUTMR and Article 8(5) EUTMR on the basis of earlier EUTM No 11 154 739 it is not necessary to examine the remaining earlier rights and grounds invoked in relation to the other earlier rights on which the opposition was based.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Claudia MARTINI

Denitza STOYANOVA-VALCHANOVA

Martin EBERL

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.

Moshi Monsters | Decision 2295825 - Monster Energy Company v. Mind Candy Limited

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