RED LIPCTICK MONSTER | Decision 2683996

Date Published: Sep 22, 2017

OPPOSITION No B 2 683 996

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

Red Lipstick Monster Ewa Grzelakowska-Kostoglu, ul. Drzewieckiego 48/25, 54129 Wrocław, Poland (applicant), represented by WTS Rzecznicy Patentowi - Witek  Śnieżko i Partnerzy, Weigla 12, 53-114 Wrocław, Poland (professional representative).

On 13/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 683 996 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 632 509, namely against all the goods and services in Classes 25 and 41. The opposition is based on, inter alia, European Union trade mark registrations No 6 368 005 and No 11 607 645. As regards the first earlier right, the opponent invoked Article 8(1)(b) and 8(5) EUTMR and as regards the latter Article 8(1)(b) EUTMR only.

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 above-mentioned opponent’s European Union trade mark registrations No 6 368 005 and No 11 607 645.

1. The goods and services

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

1. European Union trade mark registration No 6 368 005, earlier trade mark (1):

Class 25: Clothing, footwear, headgear; hats.

2. European Union trade mark registration No 11 607 645, earlier trade mark (2):

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 25: Clothing, footwear, headgear; t-shirts; small hats.

Class 41:        Education; providing of training; entertainment; sporting and cultural activities; production of cinematographic films; providing on-line electronic publications, not downloadable; publication via the internet of films and multimedia materials for teaching and educational purposes; publication via the internet of materials relating to entertainment and education.

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 (Canon criteria).

Contested goods in Class 25

The contested clothing, footwear, headgear are identically contained in the opponent’s earlier trade mark (1) list of goods.

The contested t-shirts are included in the broad category of the opponent’s clothing covered by earlier trade mark (1). Therefore, they are identical.

The contested small hats are included in the broad category of the opponent’s hats covered by earlier trade mark (1). Therefore, they are identical.

Contested services in Class 41

The contested entertainment; sporting and cultural activities include, as broader categories, the opponent’s 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. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services covered by earlier trade mark (2).

The contested education; providing of training are activities which are focused on particular issues and involve teaching the public very specific subjects. Therefore, they are primarily of different purposes than that of the opponent’s entertainment services involving motor sports covered by earlier trade mark (2). It is true that to make some of the educational services  more approachable and efficient they are nowadays provided through entertainment (e.g. teaching classes for children in the form of games and plays). However, it does not change in essence their function and principal purpose which is acquiring the knowledge in a particular area. The fact alone that the educational services may have some entertaining dimension and vice versa, is insufficient itself to establish a similarity between them. This specific kind of earlier services comprises organisation of activities and events for very special purposes related to motor sports. Therefore, they have different purposes and will usually not be offered by the same undertakings as trainings and educational workshops, classes and seminars which normally require specialised trainers with special knowledge in the particular field.

Furthermore they will generally not have the same distribution channels, nor will they have the same audience. They are usually not in competition with, or complementary to each other. The same must be said as regards the contested production of cinematographic films; providing on-line electronic publications, not downloadable; publication via the internet of films and multimedia materials for teaching and educational purposes; publication via the internet of materials relating to entertainment and education since they also have different purposes, similarly as education and training services described above are focused mainly on teaching function (or are provided for entertainment as regards production of cinematographic films; publication via the internet of materials relating to entertainment). They are not expected to be provided by the same providers, do not target the same public, nor are expected to be distributed through the same channels. They are not in competition with each other. Therefore, the aforementioned education; providing of training; production of cinematographic films; providing on-line electronic publications, not downloadable; publication via the internet of films and multimedia materials for teaching and educational purposes; publication via the internet of materials relating to entertainment and education are all dissimilar to the opponent’s earlier trade mark (2) services. It is even clearer that they are also dissimilar to the opponent’s goods in Class 25 covered by the earlier trade mark (1) as they do not coincide in any of the relevant factors mentioned above (Canon criteria).  

2. Relevant public — degree of attention

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

In the present case, the goods in Class 25 (i.e. clothing, footwear, headgear) and services in Class 41 (i.e. entertainment in the nature of motor sport events) found to be identical, are directed at the public at large.

The degree of attention is considered to be average.

 

3. The signs

MONSTER ENERGY MONSTERCROSS
Earlier trade marks (1), (2)	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 word element ‘MONSTER’ which the earlier trade marks (1) and (2) and the contested sign have in common 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 this word exists in their own language (e.g. in English and German), or because it is highly similar to the equivalent in respective 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, the ‘MONSTER’ element has no 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). As this element is not descriptive, allusive or otherwise weak for the relevant goods and services, it is normally distinctive in relation to all the marks in question for all consumers in the European Union.

The second element ‘ENERGY’ of the earlier word mark (1) 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). Since this element is not descriptive, allusive or otherwise weak for the relevant goods in Class 25 covered by the earlier trade mark (1), it is of normal distinctiveness.

Furthermore, the combination of ‘MONSTER’ and ‘ENERGY’ in the earlier mark (1) may be seen by the parts of the public for which both elements are meaningful such as 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 second element ‘CROSS’ combined with the ‘MONSTER’ element and constituting earlier trade mark 2) is meaningful for the English-speaking part of the public as in English it has various meanings, inter alia, intersection, a religious Christian symbol, (in sports) passing a ball in a diagonal way or punching from the side. Therefore, both parts of the earlier trade mark (1) are meaningful for this part of the public, and the respective meanings mentioned above can be associated to them. As regards the remaining parts of the relevant public within the European Union, the second part ‘CROSS’ in the earlier trade mark (2) is meaningless. Consequently, some part of these consumers will recognise the word ‘MONSTER’ in the compound earlier trade mark (2), and for another part of the consumers this mark has no meaning. Since the element ‘CROSS’ has no specific connotations to the relevant services in Class 41, it is of normal distinctiveness.

The contested sign is a figurative mark composed of the words ‘RED’, ‘LIPSTICK’ and ‘MONSTER’ written in bold upper case letters; the first word ‘RED’ is in red colour of which the letter ‘R’ is dissected diagonally in such a way that only its right hand side is represented and visible. The remaining letters ‘ED’ are in standard font, as well as the other word elements ‘LIPSTICK’ and ‘MONSTER’ which are in black and are placed one under another in a half-way position of the height of the word ‘RED’; moreover the upper part of the letter ‘I’ in the word ‘LIPSTICK’ is divided from its bottom part and it is in a red square shape with is cut at the top-left side.

In regard to the common element ‘MONSTER’ which appears in the contested sign, the remarks made above are applicable; therefore, it will be understood by some parts of the public in the European Union, and for some other parts it will be meaningless. The word element ‘LIPSTICK’ is an English word referring to a coloured cosmetic applied to the lips from a small solid stick, and it will be associated to this meaning by the English-speaking part of the public. To the non-English-speaking parts of the relevant public the element ‘LIPSTICK’ is meaningless. As the element ‘LIPSTICK’ has no connotation to the goods and services in question, it is of normal distinctiveness.  

The word ‘RED’ which comes at the beginning of the contested sign will be associated by the English-speaking part of the relevant public with the respective red colour, and by the Spanish-speaking part of the public with net or Network. For the remaining parts of the relevant public this word is meaningless. It is considered to be normally distinctive in relation to the goods and services covered by the contested sign as it has no specific connotations in relation to them. It should be mentioned that by the English-speaking part of the public this element will be associated with the red colour and even though the goods in question (Class 25), such as clothing or footwear, it can be reasonably assumed that this part of the consumers would not see this word as referring to the characteristics of the articles of clothing or footwear, that is to say, expect them all to be of red colour.

Consequently, all the elements of the contested sign are considered to be equally distinctive. The sign is not considered to have any elements that could be seen as clearly more dominant than other elements.

Likewise the earlier word marks (1) and (2) have no elements that could be considered clearly more distinctive than other elements.

In relation to the contested sign it should be mentioned that 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. 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). Consequently, even though this sign has a degree of stylisation, particularly the fanciful letter ‘R’, the word elements in this mark will attract the consumer’s primary attention.

In principle, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. In these circumstances, the different position of the coinciding element ‘MONSTER’ in the marks will be noted by the consumers, as it appears at the beginning of the earlier trade marks (1) and (2), while in the contested sign it comes at the end (the consumers will read the contested sign from left to the right side and from top to the bottom).

Generally, the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. In contrast, the public is less aware of differences between long signs. In the present case the consumers will quite easily differentiate the signs by their different lengths (two/one verbal elements in the earlier marks (1) and (2) respectively versus three word elements of the contested sign).  

Visually, the signs coincide in the common word element ‘MONSTER’ which appears as the first element of the earlier trade mark (1) and in the initial part of the earlier trade mark (2), on the other hand, it takes the bottom position (last one when read from left to right) in the contested sign. Moreover, they differ in the additional elements present in all the signs, that is, the words ‘ENERGY’ and ‘CROSS’ constituting the second element/part of the earlier trade mark (1) and (2) respectively; moreover, they differ in the words ‘RED’ and ‘MONSTER’ preceding the common element ‘MONSTER’ in the contested sign. Furthermore, the signs can be further differentiated by the stylisation of the word elements in the contested sign, particularly by the more outstanding initial element ‘RED’.

Therefore, the signs are visually similar to a low degree

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides only in the in the sound of the letters constituting the common element ‘MON/STER’. The pronunciation differs in the sound of the letters creating all the additional word elements ‛EN/ER/GY’ and ‘CROSS’ (in the earlier trade marks), and ‘RED’ and ‘LIP/STICK’ of the contested sign, which have no counterparts in the opposite signs.

Therefore, the signs are aurally similar to a low 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 the marks the concept of a ‘MONSTER’, the signs are similar to this extent (e.g. English-speaking public). For the remaining part of the public which would not see this coinciding concept, but another meaning(s) conveyed by the additional word elements: e.g. ‘ENERGY’ of the earlier trade mark (1) versus ‘RED’ (the contested sign) as possibly in the case of some Spanish-speaking consumers, the signs are conceptually dissimilar. 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.

4. Distinctiveness of the earlier marks

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

Although the opponent does not explicitly refer to an enhanced distinctiveness of the earlier trade marks (1) and (2), it explicitly claims a reputation in relation to the earlier trade mark (1) which according to the opponent, has been extensively used and enjoys an enhanced scope of protection in the United Kingdom in connection with the goods in Class 25: Clothing, footwear, headgear; hats. However, since in the observations of 20/10/2016, which is within the substantiation period, the opponent filed evidence also referring to other Member States, this evidence regarding all the relevant territories should be considered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 18).

On 20/10/2016 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 and its subsidiaries including Monster Energy Company (the Opponent),  dated 16/08/2016. It is stated therein, inter alia, that:

• The business of the opponent is the design, creation, development, production, marketing and selling of 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 the European Union Member states). Currently, MONSTER energy drinks are the best-selling energy drinks in the United States by unit volume and dollar value and the second best-selling worldwide by unit volume.

• Millions of cans of Monster energy drinks are sold every month in the European Union. By 31/12/2015 the opponent has sold more than 1,7 billion cans of Monster energy drinks in the European Union. In the European Union the 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 European Union were for 2015, EUR 286 million, for 2014, EUR 241 million, for 2013, EUR 229 million, for 2012, EUR 192 million, for 2011, EUR 129 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 AMG PETRONAS F1 racing team that competes in the FIA Formula One World Championship Series.

• In Europe, the Middle East and Africa (‘EMEA’) over the period of 2008 till 30/09/2015 the opponent has spent in excess of US $657 million in advertising, marketing and promoting its Monster energy drinks.

• According to the opponent, the website www.monsterenergy.com which was launched on 19/08/2003 and has been available to internet users based in the European Union since that date. For the period from 01/09/2010 to 31/07/2016 the website received more than 31,5 million visits, with more than 9 million visits from the European Union. 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 24,5 million likes, with over 5.3 million coming from individuals residing in the European Union)- Exhibits RCS-68 and RCS-70. The opponent on 22/03/2006 has also launched a YouTube channel which since the beginning has received more than 152 million views worldwide, and of these over 58.1 million have been from individuals residing in the European Union-Exhibit RCS-76.

• 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 European Union.

In support of the aforementioned statements, the opponent provided the following Exhibits:

• Exhibit RCS-1: list of ‘MONSTER’ registered trade marks and pending trade mark applications in the European Union.
• Exhibit RCS-2: 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 ‘LO-CARB’ or ‘export’, ‘Taurina+Ginseng’, ‘L-Carnitine’.
• Exhibits RCS-3-RCS-04: slides from presentations presented to investors in the Monster Beverage Company on 12/01/2016, 12/01/2015, 07/01/2014 and 11/12/2012; also further presentations which contain market share information relating to sales of Monster energy drinks in the European Union (in some selected countries such as: France, Greece, Belgium, the United Kingdom, Germany, Spain) and South Africa.
• Exhibit RCS-05: ‘MONSTER’ EMEA 2012 results, February 2013 (as stated by the opponent some parts due to the confidential information have been removed/redacted).
• Exhibit RCS-06: 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 some of the European Union Member States such as: the United Kingdom, Belgium, France, the Netherlands, Sweden, Denmark (05/2012 – 03/2013).
• Exhibits RCS-07-RCS-11: a selection of web clippings, articles and reports dated between 2008 and 2013 from the United Kingdom, France, Germany, the Benelux, Spain (in considerable part in French, German, Dutch, Spanish; 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-12-RCS-67: considerable amount of 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, ‘Monster Girls’).
• Exhibits RCS-68–RCS-76: extracts from the Monster’s energy drink websites within the European Union and examples of Monster’s presence on social media, including Facebook and YouTube, as well as visitors/viewers statistics.
• Exhibits RCS-77–RCS-81: copies of licensees´ websites and catalogues, POS catalogues, etc., showing examples of clothing, merchandise and apparel which bear the Monster marks.
• Exhibits RCS-82–RCS-86: articles about of the company’s success 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).
• Exhibit RCS-87: an extract regarding example of a video games (Xbox, PS) promotional projects, inter alia, ‘Aliens-Colonial Marines’ accompanied by a screen shot of said ‘Aliens-Colonial Marines’ in-game avatar that bears the Claw Icon (2013).

In the present case the contested trade mark was filed on 29/09/2015. Therefore, the opponent was required to prove that the trade mark (1) on which the opposition is based had acquired a reputation in the United Kingdom prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation.

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.

It is clear from the evidence that the opponent’s Monster marks (figurative marks with a claw icon and variations thereof) have been extensively used by the opponent in relation to energy drinks and they can be considered as generally known on the market, worldwide and in the European Union. The opponent’s Monster marks enjoy 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 marks enjoy a high degree of recognition among the relevant public for energy drinks.

However, it must be noted that the opponent did not base its opposition on such goods nor did it claim that the earlier trade mark (1) had a reputation for beverages. It specifically stated in the notice of opposition that the opposition was based on goods in Class 25 (Clothing, footwear, headgear; hats), and reputation has been claimed for these goods in the United Kingdom. Moreover, the trade mark in question is a word mark ‘MONSTER ENERGY’, earlier trade mark (1), whereas the evidence presents mostly the words ‘MONSTER ENERGY’ in combination with the M-device (‘’ claw icon) that has a prominent position in the signs or this claw icon itself; moreover the stylisation of the word ‘MONSTER’ showed in the evidence provided--proves the importance and quite independent role of these figurative elements, while the word ‘ENERGY’ plays clearly a secondary role when either these word elements are combined separately or with a claw icon constituting a composite mark .

It must be underlined that if there is a reference to the relevant goods such as clothing, footwear, headgear, as the opponent points out in its own observations and declaration, these are advertising or merchandising articles for the goods (energy drinks) which originate from the opponent and on sales of which the opponent has built its business and reputation. The fact, that shirts, hats, jackets, sweatshirts or other clothing promote the beverages is not sufficient to prove a reputation for the promotional products themselves. Even if the reputation claim of the opponent’s ‘Monster marks’ in relation to energy drinks could be potentially successful, which is not the subject of the present proceedings, it could not lead to the extension of this reputation to the promotional articles, which as shows the evidence filed bears the opponent’s Monster marks. There is no evidence of a reputation for these goods in the form of invoices, turnover or sales figures, for example. It cannot be concluded that in fact they originate from the opponent or have been put into the market by the opponent for general public’s use. The evidence filed rather confirms, what the opponent appears to admit itself, that the goods bearing the opponent’s Monster marks are merchandising and promotional articles presented e.g. by athletes on the basis of the opponent’s sponsorships during various sport events (motor and F1 races) which is first, and foremost, the opponent’s promotional and advertising tactic.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark (1) acquired a high degree of distinctiveness and reputation through its use.

As regards earlier trade mark (2) the evidence filed does not concern this mark at all, and the opponent did not refer to it as possessing an enhanced scope of protection by virtue of intensive use or reputation.

Therefore, the assessment of the distinctiveness of the earlier marks (1) and (2) 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.

5. 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.

The Opposition Division has concluded that there are some visual and aural similarities to a low degree between the earlier trade marks (1), (2) and the contested sign. As regards the conceptual part, reference is made to the section c) above. The signs are conceptually similar only to the extent to which some part of the relevant public attributes the same meaning to the verbal element ‘MONSTER’. As wholes they are considered not conceptually similar for these consumers who can associate any of the opposite marks any further meaning. Moreover, the signs can be further conceptually differentiated as wholes due to their additional different meanings by the English-speaking public by who they are considered conceptually dissimilar. Lastly, the signs will not bring to the minds of some consumers in the European Union any meaning and for this part of the public the conceptual comparison cannot be made.  

The signs differ in the additional verbal elements, ‘ENERGY’ of the earlier mark (1) and the second part ‘CROSS’ of the earlier trade mark (2); moreover, the contested sign contains the words ‘RED’ and ‘LIPSTICK’. Therefore, the only similarity between the signs is owed to the coinciding element ‘MONSTER’ that appears in different positions in the signs (at the beginning of the earlier trade marks (1) and (2) while in the contested sign it takes the last position). Furthermore, earlier marks (1) and (2) are of different lengths and have respectively two or one verbal elements while the contested sign is made up of three words, of which the initial one ‘RED’ is highly stylised and prevalent due to its red colour (which will perceived as such by the English-speaking public on all three levels: visually, aurally and conceptually). The stylisation of the first part of the contested sign further reinforces these differences on a visual level.

As some of the contested goods in Class 25 are clothing it should be noted that generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T 117/03 - T 119/03 & T 171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable visual differences between the signs caused by the additional different verbal element ‘RED’ in the contested sign and its quite outstanding stylisation in red colour should be perceived as particularly relevant when assessing the likelihood of confusion and it cannot be omitted.

The goods are found to be identical, and some services are found to be identical or dissimilar to the goods and services covered by the earlier rights (1) and (2).The goods and services in question are directed at the public at large whose degree of attention is average. 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). As it has been concluded above in section d), earlier marks (1) and (2) are considered to enjoy a normal degree of inherent distinctiveness  

It is clear that the significant difference in the position of the coinciding element ‘MONSTER’ and in the lengths of the signs will play an important role in accordance with the general principles of imperfect recollection of the marks and a greater importance to the beginnings of the marks that govern the way in which consumers generally perceive trade marks.

Therefore, it is concluded that the signs in question create overall different impressions, which the Opposition Division to safely exclude likelihood of confusion on the part of the public and therefore the opposition must be rejected insofar it is founded on the basis of the opponent’s European Union trade mark registrations (1) and (2).

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

• International trade mark registration No 1 048 069, earlier trade mark (3) , registered inter alia for goods in:

Class 9:         Sports helmets.

Class 18: All purpose sports bags; all-purpose carrying bags; backpacks; duffle bags.

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

• European Union trade mark registration No 11 154 739, earlier trade mark (4) , registered for goods in:

Class 25: Clothing, footwear, headgear.

It should be noted that the evidence submitted by the opponent to prove the highly distinctive character and reputation as claimed by the opponent in relation to these earlier trade marks (in the United Kingdom for the respective goods in Class 25 listed above) has already been examined above under the section d ‘Distinctiveness of the earlier marks’). Reference is made to those findings as the evidence filed in relation to these earlier trade marks (3) and (4) is the same as in case of the earlier trade mark (1) for which the reputation claim has been examined above, and consequently, no other conclusion can be reached as the one presented above in relation to earlier trade mark (1). Therefore, these earlier marks are considered to enjoy a normal degree of inherent distinctiveness.

The aforementioned other earlier rights (3) and (4) invoked by the opponent are less similar to the contested sign than the earlier trade mark (1) that has already been compared to the contested sign. This is because they contain further figurative elements such as highly stylised M-device (‘claw icon’) which would be seen as an additional word element. Moreover, the word ‘ENERGY’ included in them is not present in the contested sign.

They both cover the same goods in Class 25, which have been already compared above. As regards the earlier trade mark (3) it also covers goods in Class 9 (sports helmets) and in Class 18 (all purpose sports bags; all-purpose carrying bags; backpacks; duffle bags). In this regard it must be noted that the remaining contested services have nothing in common with any other opponent’s goods in Classes 9, 18, or 25. They differ in nature (tangible goods vs. intangible services), purpose, providers and distribution channels; moreover they do not target the same public, and they cannot be considered complementary to, or in competition with each other. Therefore, the remaining contested services in Class 41: education; providing of training; production of cinematographic films; providing on-line electronic publications, not downloadable; publication via the internet of films and multimedia materials for teaching and educational purposes; publication via the internet of materials relating to entertainment and education are dissimilar to all the opponent’s goods covered by earlier trade marks (3) and (4). Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists.

Consequently, the outcome cannot be different with respect to earlier trade marks (3) and (4) and the opposition must also fail insofar as based on these marks and on grounds under Article 8(1)(b) EUTMR.

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

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

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

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

In the present case, the opponent failed to prove that it uses a family of ‘Monster’ marks, and moreover that it uses such a family in the same fields as those covered by the contested sign. The evidence filed by the opponent (referring to a reputation claim), mostly shows use of figurative marks (3)  and (4) , and variations thereof. These trade marks are not sufficient to form a ‘family of marks’ as only two marks cannot constitute a series of marks; there is no mentioning or evidence filed in relation to earlier trade mark (2) ‘MONSTERCROSS’, neither the considerable evidence refer to earlier word mark (1) ‘MONSTER ENERGY’ itself, as the evidence shows mostly the use of the marks as presented above (highly stylised words ‘monster energy’ in connection with ‘claw icon’ or ‘claw icon’ itself).

Secondly, the trade mark applied for must not only be similar to the marks belonging to the series, but also display characteristics capable of associating it with the series. This could not be the case where, for example, the element common to the earlier series of marks is used in the contested trade mark, either in a different position from that in which it usually appears in the marks belonging to the series, or with a different semantic content.

The Opposition Division will now continue with examination of the opposition under Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

The Opposition Division will  examine the opposition in relation to earlier European Union trade mark registration No 6 368 005, earlier trade mark (1), for which the opponent in the notice of opposition of 08/04/2016 claimed repute for goods in Class 25:  clothing, footwear, headgear; hats in the United Kingdom.

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 European 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.

1. Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

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. Since on the basis of the evidence filled in support of reputation claim such factors are not proved in relation to the relevant goods in Class 25, it is concluded that the trade mark in question is not reputed in the United Kingdom, and consequently, in the European Union.

2. Conclusion

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark (1) has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected insofar it is based on this ground.

The same remarks are valid for the remaining earlier rights for which reputation has been claimed, namely trade mark registrations (3) and (4) for which the same evidence has been filled, and no other conclusion can be reached than the one presented above.

COSTS

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

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

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

The Opposition Division

Gregor SCHNEIDER

Birgit FILTENBORG

Francesca CANGERI SERRANO

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.