Monster Energy fails to prevent registration of 'monsters' mark for Class 30 goods

In Monster Energy Company v Office for Harmonisation in the Internal Market (OHIM) (Case T-736/14, October 28 2015), the General Court has upheld a decision of the Second Board of Appeal of OHIM dismissing an opposition against the trademark application for MOMO MONSTERS.

The opposition was based on the Community word mark MONSTER, the Community word mark MONSTER ENERGY and the international figurative mark MONSTER ENERGY:

Applicant Monster Energy Company based its action, which alleged infringement of Article 8(1)(b) of the Community Trademark Regulation (207/2009), on the following arguments:

1. The board's decision was vitiated by an error in the assessment of the similarity between, on the one hand, the goods covered by the application for registration falling within Class 30 and, on the other hand, the goods covered by one of the earlier trademarks registered and falling within Classes 29 and 30; and
2. The board's decision was also vitiated by an error in the overall assessment of the likelihood of confusion, from the relevant public's point of view, between the signs at issue.

The General Court rejected the first argument (similarity of the goods) for the following reasons.

First, the goods were different in nature. The goods covered by the application for registration and falling within Class 30 concerned, in essence, confectionery, biscuits, cakes and pastries; in contrast, the goods covered by one of the earlier marks falling within Classes 29 and 30 concerned milk-based or coffee-based beverages.

Second, the goods at issue did not serve the same purpose. The goods in Class 30 covered by the mark applied for are consumed to satiate hunger or to address a desire to eat sugary goods, namely confectionery, biscuits, cakes or pastries; in contrast, the products covered by one of the earlier trademarks in Class 29 and 30 are consumed to quench thirst or possibly to satisfy a need for either calcium or caffeine.

Third, the products were not in competition with each other. In order for goods to be regarded as being in competition, there must be an element of interchangeability between them (see Hartmann v OHIM (Case T-504/11), Paragraph 42, and the case law cited). For the General Court, “the choice made by consumers between the goods at issue, far from being based on preferences in respect of one item as compared with another, will be determined by considerations relating to the type of need which those consumers feel" (Paragraph 27).

Fourth, the products were not complementary: two goods are complementary where they are closely connected in the sense that one is indispensable or important for using the other, such that consumers may think that the same company is responsible for manufacturing those goods.

Fifth, the similarity between the goods at issue could not result from the fact that they are sold in the same commercial establishments, share the same distribution channels and are intended for the same consumers. It should be recalled that the fact that goods may be sold in the same commercial establishments, such as cafe chains, is not particularly significant, since very different kinds of goods can be found in those outlets, without consumers automatically attributing the same origin to them.

The General Court also rejected the second argument (overall assessment of the likelihood of confusion), referring to the same arguments used to reject the similarity of the goods and noting that, for the purposes of applying Article 8(1)(b) of the regulation, "a likelihood of confusion presupposes both that the signs at issue are identical or similar and that the goods or services which they cover are identical or similar". The court noted that those conditions are cumulative (see Commercy v OHIM (T-316/07)).

However, in Paragraph 36 of the decision, the General Court made an important conclusion concerning the process and evidence production.

The applicant stated that, in view of the images produced in the application, which are available on the websites of cafe chains and show drinks being served with goods covered by the mark applied for, consumers were likely to believe that the goods covered by the signs at issue have the same commercial origin. However, the images produced by the applicant were not submitted during the procedure before OHIM. According to the General Court:

“Those documents, produced for the first time just before the court, cannot therefore be taken into consideration. The purpose of actions before the court is to review the legality of decisions of the Boards of Appeal of OHIM for the purposes of Article 65 of Regulation No 207/2009, and it is therefore not the court’s function to review the facts in the light of documents which have been produced for the first time before it. Accordingly, the abovementioned documents must be excluded, without it being necessary to assess their probative value (see, to that effect... [Sadas v OHIM (Case T-346/04)], Paragraph 19 and the case law cited).”

The decision draws attention to an important issue regarding the production of evidence - namely, the need to produce all possible evidence during the proceedings before OHIM. The General Court’s decision emphasised that it could review only the legality of the decision of the Boards of Appeal of OHIM. In this specific case, the decision did not mention a lack of evidence. However, the evidence that was rejected by the court could have been important if the evidence produced had been insufficient.

In summary, the General Court concluded that:

1. the products were different in nature;
2. the products did not serve the same purpose;
3. the products were not in competition with each other;
4. the products were not complementary; and
5. the fact that they were sold in the same commercial establishments did not mean that they were similar.

Based on the above, the General Court held that there was no likelihood of confusion.

The decision reveals the importance of observing the relevant procedures and being aware of the limits of the jurisdiction of the General Court. The decision reminds practitioners of the importance of producing all the evidence necessary in a trademark case during the proceedings before OHIM.

Juliana Marcondes and Manuel Lopes Rocha, PLMJ - Sociedade de Advogados, Lisbon