General Court: common descriptive elements will not attract attention of relevant public

European Union

In Monster Energy Company v Office for Harmonisation in the Internal Market (OHIM) (Case T-61/14, October 6 2015), the Second Chamber of the General Court has upheld a decision of the Second Board of Appeal of OHIM of November 15 2013 in opposition proceedings.

The opposition was filed on March 30 2012 by Monster Energy Company against the application for the semi-figurative mark ICEXPRESSO + ENERGY COFFEE:


Monster Energy filed the opposition on the basis of Article 8(1)(b) of the Community Trademark Regulation (207/2009) and based its action on the following earlier marks:

  • X-PRESSO MONSTER (CTM No 8445711);

On March 11 2013 the Opposition Division rejected the opposition and Monster Energy filed an appeal on April 30 2013. The appeal was dismissed by the Second Board of Appeal of OHIM on November 15 2013 on the grounds that there was no likelihood of confusion.

Subsequently, Monster Energy contested the decision of the Board of Appeal before the General Court and requested its annulment. To support its action, Monster Energy put forward only one plea in law – infringement of Article 8(1)(b) of the regulation.

Monster Energy claimed that the Board of Appeal had erred with respect to:

  • the determination of the dominant and distinctive elements of the mark applied for;
  • the analysis of the similarity of the signs at issue; and
  • the examination of the likelihood of confusion.

Regarding the first claim, Monster Energy argued that, because the application related only to a figurative mark in black and white and did not indicate the figurative element (ie, the representation of a metallic tube), the board should have concluded that the most dominant and distinctive element was the word element and the symbol ‘+’.

The General Court observed that, even though the application made no reference to a metallic tube, this was not sufficient to conclude that the figurative element was insignificant compared with the word element. The black and white colours allowed the relevant public to perceive the figurative element through an optical effect created by the black lateral columns on both sides and a white central column containing shades of grey. Thus, the court agreed with the Board of Appeal that the figurative element of the contested mark attracted the public’s attention and that it had to be taken into account together with the word element for the assessment of the similarity of signs.

The argument based on an error of assessment of the dominant and distinctive elements of the mark applied for was thus rejected as unfounded.

With respect to the second claim, the court evaluated the way in which the Board of Appeal had analysed the visual, phonetic and conceptual similarities between the marks.

First of all, it agreed with the Board of Appeal that the marks were visually different. To support its decision, the court referred to prior case law establishing that the consumer generally pays greater attention to the beginning of a mark than to the end (see Esge v OHIM (Case T-444/10)). The court analysed the position of the word 'x-presso'/'xpresso' in the marks at issue, since this word element was shared by all of them. As this term was not always at the beginning of the marks, the court sided with the Board of Appeal.

Secondly, the court analysed the Board of Appeal’s assessment of the phonetic similarity. The court confirmed the conclusion of the Board of Appeal that the marks were phonetically similar only to a low degree, finding that:

  • the sequence of syllables was not identical;
  • certain words were present in the prior marks but not in the mark applied for, and vice versa; and
  • long marks can be abbreviated to easily separable elements, in which case greater attention is again paid to the beginning of the mark.

Finally, regarding conceptual similarity, the court agreed with the board that there was some degree of conceptual similarity between the marks, and rejected the allegations of Monster Energy that the word 'energy' and the symbol '+' were sufficient to bring the conceptual similarity to a higher level than that established by the Board of Appeal.

Further, the court held the Board of Appeal was entitled to conclude that there was no overall similarity between the signs at issue due to the presence of a number of different terms in every mark and to their varied position.

The last claim made by Monster Energy was rejected by the court. In fact, the marks were found to be similar only with regard to the descriptive elements, namely the term 'x-presso'/'xpresso', which, in the mind of the relevant public, would evoke the idea of coffee beverages. Therefore, the court agreed with the Board of Appeal that there was no likelihood of confusion since the common word elements would not attract the attention of the public.

It is important to keep in mind that the sole reproduction of identical word elements within a contested trademark is insufficient to conclude that there is a likelihood of confusion, especially if these word elements only have a low degree of similarity. Hence, one can question the benefits of owning complex trademarks whose scope of protection remains limited - especially given that, under established case law, consumers tend to shorten marks to their first element.

Meriem Loudiyi, INLEX IP Expertise, Paris

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