Date: 3 June 2019
For reasons that are not immediately apparent to the writer, energy drinks have become increasingly popular with young people: 10 to 18-year-olds in the UK consume more of these caffeine and sugar-laden concoctions on average than young people in other European countries, according to a survey conducted by the European Food Safety Authority.
It’s therefore unsurprising that leading players in the energy drinks market are fiercely protective of their brands; for example, Monster Energy battles to maintain a monopoly not only in its trade mark for Monster Energy, but also in all trade marks containing the word “monster”. However, this doesn’t always go to plan, as recent failures before the (European) General Court and the UK IPO attest.
In the General Court case between Monster Energy Company and EUIPO (T-274/17), the US company opposed the registration of a MONSTER DIP logo mark (shown below) for goods and services in Classes 2, 37 and 40, including paints, coating preparations and the painting of vehicles. None of the goods related to energy drinks.
Amazingly, Monster Energy was basically suggesting that the public might not be able to differentiate between its energy drink and industrial paint. Perhaps they’d read cases such as T-175/06 Coca Cola v OHIM  ECR II-1055 (in which the court compared the goods at issue and concluded that the average consumer would consider “it normal for wines, on the one hand, and beers, ale and porter, on the other, to come from different undertakings”) or T-584/10 Yilmaz v OHIM (in which case the goods found to be dissimilar were tequila and beer) and thought “hold my beer”.
Although Monster Energy relied on a number of earlier EUTMs, the only mark for which proof of reputation was established was its EU figurative mark for MONSTER ENERGY (shown below) covering goods in Classes 5, 16, 25, 30 and 32:
The EUIPO Opposition Division, the Board of Appeal and the General Court in turn rejected the opposition in its entirety for all the goods and services. In the Court’s opinion, the goods and services covered by the signs at issue were different. Monster Energy argued that the goods within Class 16 - namely “stickers”, “decals” and “transfers” – covered by its earlier EUTM were similar to the painting, varnishing and coating services in Class 37 covered by the MONSTER DIP logo mark.
At this point, the reader can be forgiven for feeling confused.
Monster Energy reasoned that an undertaking that provided painting services for vehicles could also produce stickers for use on vehicles. However, the Board found that spin on the facts was not sufficient to establish a direct link between the goods and services, explaining that “To hold otherwise would give the proprietor of a trade mark covering stickers and decals a right to which it was not entitled to ‘block’ similar marks in a wide range of commercial activities, while, in reality, the risk that consumers would confuse or associate the marks in question is highly unlikely”.
In the light of the description of the goods and services at issue, their different nature, intended purpose, method of use, method of manufacture and distribution channels and the fact that those goods and services were neither competing nor complementary, the Board concluded that there was no similarity between them. This was fatal to the opposition based on Article 8(1)(b) of the EUTMR, as lack of similarity between the goods and services at issue precludes any likelihood of confusion. It was also fatal to Monster Energy’s other allegation that the Board had wrongly excluded the risk that use of the MONSTER DIP logo mark would be detrimental to the distinctiveness of the earlier EU figurative mark MONSTER ENERGY, within the meaning of Article 8(5) of the EUTMR.
One of the cumulative conditions that must be satisfied to obtain broader protection under Article 8(5) is that the earlier trade mark must have a reputation in the EU. In essence, the Board upheld the Opposition Division’s finding that the earlier EU figurative mark MONSTER ENERGY had a higher degree of repute solely in respect of non-alcoholic beverages in Class 32. The Board then decided that the relevant public would be more likely to focus on the word elements in the signs at issue, and the sections of the “relevant public” who would understand the words “monster” and “energy” would also be able to distinguish between the two brands.
Overall, the Board found that MONSTER ENERGY and the mark applied for were visually similar “at least” to a low degree and phonetically similar.
Conceptually, the common element “monster” referred to an imaginary creature (“usually large, ugly and scary” was the Board’s considered opinion of monsters), which would be understood by the English and Dutch speakers as that word existed in their own language, or because that word was very similar to an equivalent; for example in French (monstre), in Maltese and Romanian (monstru), in Polish (monstrum), or in Lithuanian (monstras). However, a part of the relevant public, such as Bulgarian, Czech or Slovak-speaking consumers, would not give any meaning to the word “monster”. The word “energy” would be understood by a large part of the relevant public throughout the EU, in particular the English-speaking public but also members of the relevant the public who spoke Spanish (energía), Portuguese, Slovak, Polish and Finnish (energia), Danish, Maltese (enerġija), French, Romanian, Czech and Netherlands (energie), Lithuanian (energija) or Latvian (enerģija). The Board also found that, for the part of the public that understood only the terms “energy”, “dip” or all the other elements of the marks at issue apart from “monster”), the signs were at least partially conceptually different.
After balancing the various levels of visual, phonetic and conceptual similarity between the earlier EU figurative mark MONSTER ENERGY and the mark applied for, the Court upheld the Board’s conclusion that the marks were globally similar only to some extent.
The huge distance separating the goods in Class 32 covered by the earlier EU figurative mark MONSTER ENERGY from the goods and services covered by the mark applied for was also fatal for the claim under Article 8(5), as it meant that the consumer of the goods covered by that mark, when faced with the goods and services covered by the mark applied for, would not establish a link between the two marks at issue, despite the strong reputation of the earlier mark in respect of non-alcoholic drinks. It followed that the Board had correctly found that Monster Energy had failed to show that use of the mark applied for would be detrimental to the distinctive character of the EU figurative mark MONSTER ENERGY.
On that basis, Monster Energy’s opposition to the registration of Marco Bösel’s EUTM application for a MONSTER DIP logo mark failed. This is a good example of the trade mark register reflecting the reality of the market – it’s unlikely that an industrial paint company would siphon off beverage drinkers.
Unfortunately for Monster Energy, it also recently failed to convince the UK IPO that it could be mistaken for pizza (Chris Dominey & Christopher Timothy Lapham v Monster Energy Company; O/499/18). Monster Energy opposed an application for the series of two trade marks shown below in respect of pizza in Class 30 and pizza parlours in Class 43:
Monster Energy relied on its earlier EU word marks for “MONSTER”, “MONSTER JUICE” and “MONSTER ENERGY” and its EU figurative mark for MONSTER ENERGY.
Monster Energy alleged that the Monsta element of the mark applied for was the dominant element and that the words pizza was non-distinctive. However, that argument failed to bite and the Hearing Officer concluded that no misrepresentation would occur. “Clearly pizza is a food whilst the opponent’s goods are drinks. One is used to satisfy hunger the other to quench one’s thirst or artificially boost energy levels. Physically the goods are very different. […] I do not believe that they are in competition with each other. I accept that in restaurants and takeaway outlets beverages will be sold in cans, bottles or to drink on the premises, but an energy drink is not, in my opinion, a normal accompaniment to a meal”. Although the users of the goods and services covered by the marks at issue were the same, and they might share a trade channel, the Hearing Officer found that the goods and services differed in every other respect, and it followed that the ground of opposition had to fail.
In the second UK opposition, Daniel Smith v Monster Energy (O/768/18), an application for a logo featuring the words “Thirsty Beasts.com Quenching your thirst & keeping you healthy” and a blue fluffy monster head with bubble (shown below) was opposed.
Monster Energy relied on their earlier registered rights in word marks for UNLEASH THE BEAST and REHAB THE BEAST in Classes 30 and 32, amongst other marks. Considering the opposition from the point of Monster Energy’s mark which had been shown to have the most extensive use, and therefore the highest degree of acquired distinctiveness – namely the slogan “UNLEASH THE BEAST” – the Hearing Officer found only one similarity with the Thirsty Beasts logo, namely that the word “BEAST” appeared in both. Therefore, there was only a low degree of overall similarity between the marks, whether considered visually, aurally or conceptually. Even though in this particular case the goods were actually identical, and even assuming that Monster Energy’s mark had a high degree of enhanced distinctiveness (either due to its originality or as a result of the substantial use) there was no likelihood of confusion between them. The US company appealed, but the Appointed Person ruled in favour of Mr Smith, and awarded a further sum of £600 in costs, in addition to the £1100 costs already due under the Order made by the Hearing officer.
Launching a new food or drink company is an expensive business and legal fees eat into marketing budgets, which explains the tendency for small companies to quickly capitulate when faced with a trade mark action filed by big companies. The Thirsty Beasts and Monsta Pizza victories are evidence that it is possible for the small business to win.