Judgments nº T-274/17 of Tribunal General de la Unión Europea, December 13, 2018

• Resolution Date: December 13, 2018
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-274/17

(EU trade mark - Opposition proceedings - Application for EU figurative mark MONSTER DIP - Earlier EU word and figurative marks and unregistered sign used in the course of trade, all including the word element ‘monster’ - Relative grounds for refusal - No likelihood of confusion - Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) - No likelihood of misleading association - Article 8(4) of Regulation No 207/2009 (now Article 8(4) of Regulation 2017/1001) - No likelihood of dilution of the reputation of the earlier mark - Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001))

In Case T-274/17,

Monster Energy Company, established in Corona, California (United States), represented by P. Brownlow, Solicitor,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being:

Marco Bösel, residing in Bad Fallingbostel (Germany),

ACTION brought against the decision of the Second Board of Appeal of OHIM of 13 December 2016 (Case R 1062/2016-2), relating to opposition proceedings between Monster Energy Company and Marco Bösel,

THE GENERAL COURT (Ninth Chamber),

composed of S. Gervasoni, President, L. Madise (Rapporteur) and R. da Silva Passos, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 10 May 2017,

having regard to the response of EUIPO lodged at the Court Registry on 5 July 2017,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

Background to the dispute

1 On 28 July 2014, Mr Marco Bösel filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2 Registration as a mark was sought for the following figurative sign:

3 The goods and services for which registration was sought fall within Classes 2, 37 and 40 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, in relation to each of those classes, to the following description:

- Class 2: ‘Resurfacing materials [coatings] in the nature of paints; Shellac; Preparations for coating surface to protect against corrosion; Gum resins; Rubber paints; Raw natural resins; Colours; Dyes, colorants, pigments and inks; Coatings; Thinners and thickeners for coatings, dyes and inks; Paints and washes; Preservatives; Lacquers and varnishes; Coatings in the nature of sprays [paints]’;

- Class 37: ‘Painting of vehicles; Painting, interior and exterior; Varnishing; Coating [painting] services’;

- Class 40: ‘Customised manufacture and production of coating preparations’.

4 The trade mark application was published in European Union Trade Marks Bulletin No 154 of 20 August 2014.

5 On 13 November 2014, the applicant, Monster Energy Company, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001), to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.

6 The opposition was based on the following earlier rights:

- the EU word mark MONSTER ENERGY, filed on 18 March 2014 and registered on 13 August 2014 under number 12 705 711, covering services in Class 35 corresponding to the following description: ‘Promoting goods and services in the sports, motorsports, electronic sports, and music industries through the distribution of printed, audio and visual promotional materials; promoting sports and music events and competitions for others’;

- the EU figurative mark reproduced below, filed on 31 August 2012 and registered on 9 January 2013 under the number 11 154 739 (‘the earlier EU figurative mark’), covering goods in Classes 5, 16, 25, 30 and 32 and corresponding, for each of those classes, to the following description:

- 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 flavoured 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 EU figurative mark reproduced below, filed on 10 May 2010 and registered on 27 December 2010 under No 9091001, covering goods in Classes 5 and 32 and corresponding, for each of those classes, to the following description:

- Class 5: ‘Nutritional supplements’;

- Class 32: ‘Non-alcoholic beverages, excluding non-alcoholic beers’;

- EU word mark MONSTER ENERGY, filed on 19 March 2013 and registered on 24 October 2013 under No 11669744, covering goods in Classes 9, 14, 24, 26 and 28 and corresponding, for each of those classes, to the following description:

- Class 9: ‘Protective covers and cases for cell phones, laptops, tablets, portable media players and other electronic devices, namely, mobile phones, smartphones, media players, music players, computers, and portable electronic devices; earphones and headphones; protective ear coverings, namely helmets; eye glasses, eye glass cases, sunglasses, sunglass cases’;

- Class 14: ‘Wrist bands, bracelets, cufflinks, tie clips, jewellery, body jewellery, watches, clocks, jewellery boxes and cases; watch clasps’;

- Class 24: ‘Towels, bath towels, hand towels, hooded towels, and terry towels’;

- Class 26: ‘Belt buckles of precious metals for clothing; belt buckles not of precious metal for clothing; belt clasps; clasps for clothing; ornamental novelty pins; zipper pulls; charms for attachment to zipper pulls and buttons; charms for shoes’;

- Class 28: ‘Protective covers and cases for other electronic devices, namely hand-held video game systems’;

- EU word mark MONSTER, filed on 1 June 2010 and registered on 12 November 2010 under No 9144536, covering goods in Classes 7, 8, 11 and 21 and corresponding, for each of those classes, to the following description:

- Class 7: ‘Machines and machine tools, in particular electrical machines, electro-mechanical machines, apparatuses for production, preparation, further processing and treatment of foodstuffs; apparatuses for preparation of carbonated beverages, electro-mechanical apparatuses for preparation of beverages’;

- Class 8: ‘Hand tools and implements (hand-operated); cutlery, forks and spoons; all aforementioned goods exclusively for production, preparation, further processing and treatment of foodstuffs and beverages’;

- Class 11: ‘Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply, in particular ice machines and ice apparatus, ice chests, refrigerators, freezers and top-opening freezers, cooling apparatus for beverages, electrical apparatus for preparing yoghurt, boiling apparatus, cooking apparatus and installations, cookers, electrical cookers, electric cooking utensils, boilers, cooling installations for liquids, cooling installations and machines, cooling appliances and installations, refrigerated containers, cold storage room, fridges, cooling cabinets, apparatus for dehydrating foodstuffs, pasteurisers, toasters, water heaters, water purification installations, water purifying apparatus and machines, water tabs’;

- Class 21: ‘Household or kitchen apparatus and containers, not in precious metal or coated therewith, all aforementioned goods exclusively for production, preparation, further processing and treatment of foodstuffs and beverages’;

- the unregistered United Kingdom mark MONSTER ENERGY, designating goods corresponding to the following description: ‘Drinks, sponsorship of events, in particular sporting events’.

7 The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001) and Article 8(4) and (5) of Regulation No 207/2009 (now Article 8(4) and (5) respectively of Regulation 2017/1001).

8 On 19 April 2016, the Opposition Division rejected the opposition in its entirety for all the goods and services listed in paragraph 3 above.

9 On 10 June 2016, the applicant filed a notice of appeal with EUIPO, under Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.

10 By decision of 10 February 2017 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. In the first place, in paragraphs 15 to 58 of the contested decision, the Board of Appeal analysed the ground for opposition to registration of the mark applied for, based on Article 8(1)(b) of Regulation No 207/2009. In that respect, firstly, in paragraph 16 of the contested decision, it stated that, since the opposition was based on earlier EU marks, the relevant territory for the assessment of the likelihood of confusion was the European Union. Secondly, in paragraphs 19 and 20 of the contested decision, it found that the goods and services at issue were directed at both the general public and professionals and that, since the level of attention varied from...