ORDER OF THE COURT (Eighth Chamber)

18 January 2018 (*)

(Appeal — Rules of Procedure — Article 181 — EU trade mark — Opposition proceedings — Figurative mark containing the word elements ‘HotoGo self-heating can technology’ — Composite mark — Application for registration — Opposition — Rejection — Appeal manifestly inadmissible)

In Case C‐678/16 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 29 December 2016,

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

appellant,

the other party to the proceedings being:

**European Union Intellectual Property Office (EUIPO),** represented by A. Folliard-Monguiral, acting as Agent,

defendant at first instance,

THE COURT (Eighth Chamber),

composed of J. Malenovský, President of the Chamber, M. Safjan and D. Šváby (Rapporteur), Judges,

Advocate General: H. Saugmandsgaard Øe,

Registrar: A. Calot Escobar,

makes the following

**Order**

1        By its appeal, Monster Energy Company (‘Monster Energy’) seeks to have set aside the judgment of the General Court of the European Union of 20 October 2016, *Monster Energy* v *EUIPO — Hot-Can Intellectual Property (HotoGo self-heating can technology)* (T‐407/15, not published, ‘the judgment under appeal’, EU:T:2016:624), by which the General Court dismissed its action seeking annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 4 May 2015 (Case R 1028/2014-5), relating to opposition proceedings between Monster Energy and Hot-Can Intellectual Property (‘the decision at issue’).

**Legal context**

2        Under the heading ‘Relative grounds for refusal’, Article 8 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) states, in paragraphs (1) and (5) thereof:

‘1.      Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:

...

(b)      if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

...

5.      Furthermore, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the Community and, 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 trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.’

**Background of the dispute**

3        On 12 December 2012, Hot-Can Intellectual Property Sdn Bhd filed an application for registration of an EU trade mark with EUIPO pursuant to Regulation No 207/2009.

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

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5        The goods in respect of which registration was sought are in Classes 29, 30 and 33 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 (‘the Nice Agreement’).

6        The EU trade mark application was published in *Community Trade Marks Bulletin* No 31/2013 of 13 February 2013.

7        On 13 May 2013 Monster Energy filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to registration of the mark applied for in respect of the goods referred to.

8        The opposition was based on 10 earlier EU trade marks, registered in respect of a variety of goods in Classes 5, 16, 25, 29, 30, 32 and 33 of the Nice Agreement.

9        The opposition was based, first, on the following EU trade mark No 3531639:

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10      The opposition was based, secondly, on the following EU trade mark No 9491093:

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11      The opposition was based, thirdly, on the following EU trade mark No 7451552:

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12      The opposition was based, fourthly, on the following EU trade mark No 8214462:

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13      The opposition was based, fifthly, on the following EU trade mark No 8463879:

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14      The opposition was based, sixthly, on the following EU trade mark No 8527947:

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15      The opposition was based, seventhly, on the following EU trade mark No 10346757:

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16      The opposition was based, eighthly, on the following EU trade mark No 10346724:

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17      The opposition was based, ninthly, on the following EU trade mark No 10346741:

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18      The opposition was based, tenthly, on the following EU trade mark No 11154739:

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19      The grounds relied on in support of that opposition were those set out in Article 8(1)(b) and 8(5) of Regulation No 207/2009.

20      On 21 February 2014, the Opposition Division found that the marks were dissimilar and rejected the opposition.

21      On 11 April 2014, Monster Energy filed a notice of appeal with EUIPO against the decision of the Opposition Division, pursuant to Articles 58 to 64 of Regulation No 207/2009.

22      By the decision at issue, the Fifth Board of Appeal of EUIPO dismissed the appeal. It found that the goods concerned were identical or similar, that the relevant public was the average consumer in the European Union having a relatively low level of attention and that the marks at issue were visually, conceptually and phonetically dissimilar. It concluded from this that, regardless of the degree of similarity or even an identity of the goods at issue or of the reputation or enhanced distinctiveness of the earlier marks, there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009. The Board of Appeal also found that, since the signs were dissimilar overall, the plea in law alleging infringement of Article 8(5) of Regulation No 207/2009 also had to be rejected.

**The procedure before the General Court and the judgment under appeal**

23      By application lodged at the Registry of the General Court on 27 July 2015, Monster Energy brought an action seeking annulment of the decision at issue, putting forward, essentially, two pleas in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009 and infringement of Article 8(5) of that regulation respectively.

24      By the judgment under appeal, the General Court dismissed the action.

25      The General Court examined the two pleas in law in turn.

26      As regards the first plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009, and in response to the ground of challenge alleging an incorrect assessment of the distinctive and dominant elements of the mark applied for, the General Court ruled in paragraph 38 of the judgment under appeal that:

‘It is to be noted that as regards the assessment of the dominant character of one or more given components of a complex trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the complex mark (judgment of 23 October 2002, *Matratzen Concord*v *OHIM — Hukla Germany (MATRATZEN)*, T‐6/01, EU:T:2002:261, paragraphs 33 to 35). Similarly, the notion of the distinctive character which an element of a complex mark possesses is concerned with its ability to dominate the overall impression created by that mark (order of 27 April 2006, *L’Oréal* v *OHIM*, C‐235/05 P, not published, EU:C:2006:271, paragraph 43, and judgment of 9 April 2014, *MHCS* v *OHIM — Ambra (DORATO)*, T‐249/13, not published, EU:T:2014:193, paragraph 47).’

27      After carrying out a detailed analysis of the figurative and word elements of the mark applied for in paragraphs 39 to 44 of the judgment under appeal, the General Court found, in paragraph 45 of that judgment, that those elements constituted a whole and that none of those elements could be considered negligible in the overall perception of the mark applied for.

28      In paragraph 46 of the judgment under appeal, the General Court considered that the Board of Appeal had acted correctly in finding that the three wavy lines were not the dominant element in the mark applied for, and went on to infer from this in paragraph 47 of that judgment that the comparison of the mark applied for with the earlier marks could not be carried out on the sole basis of that single figurative element composed of three wavy lines, but had to take into account all the elements of the mark applied for, none of which was negligible.

29      As regards the ground of challenge alleging an incorrect assessment of the overall impression and of the comparison of the signs, the General Court, before finding that there was no visual similarity in paragraph 52 of the judgment under appeal, observed in paragraph 51 of that judgment that:

‘... the argument that the Board of Appeal incorrectly presented the figurative element of the earlier marks as representing the letter “m” must be rejected. Visually, the Board of Appeal identified that figurative element as a “claw device”. If the figurative element of the three wavy lines in the mark applied for is alone compared with the “claw device” of the earlier marks, it must be found that there are considerable differences. The “claw device” may be described as three vertical slashes that claws might make, ripping from top to bottom. As the Board of Appeal stated, those lines, roughly drawn, are reminiscent of prongs or scratches, with the middle line longer than the other two. In the mark applied for, by contrast, the three wavy lines are identical to each other (but for shading), smooth, curvy and altogether softer. Visually, the earlier marks’ device gives the impression of a vigorous “slash” downwards, while the lines in the mark applied for give the impression of vapour (steam) gently rising upwards. Those figurative elements display, therefore, considerable differences. Moreover, and above all, if all the elements — figurative and word — in the mark applied for are taken into consideration, the marks at issue are very different visually. The mere fact that the marks include three parallel, non-straight lines does not invalidate that finding, since there is no element in the earlier marks which resembles the word elements in the mark applied for.’

30      The General Court held, first, in paragraphs 53 and 54 of the judgment under appeal, that the marks in question are dissimilar conceptually and, secondly, in paragraphs 55 to 57 of that judgment, that those marks are not phonetically similar.

31      In paragraph 58 of the judgment under appeal, the General Court concluded from all of those considerations that the marks at issue are dissimilar overall. Moreover, observing, in paragraph 59 of that judgment, that one of the cumulative conditions necessary for finding a likelihood of confusion was not fulfilled, it accordingly held that the Board of Appeal was fully entitled to conclude that there was no such likelihood of confusion in the present case. In paragraph 60 of that judgment, the General Court found that the first plea in law had to be rejected as unfounded.

32      With regard to the second plea in law alleging infringement of Article 8(5) of Regulation No 207/2009, the General Court held in paragraphs 65 to 70 of the judgment under appeal that one of the cumulative conditions necessary for the application of Article 8(5) of Regulation No 207/2009, that is to say, the similarity of the marks at issue, was not fulfilled, with the result that that plea was unfounded.

**Form of order sought before the Court of Justice**

33      Monster Energy claims that the Court of Justice should:

–        set aside the judgment under appeal;

–        annul the decision at issue;

–        annul the Opposition Division’s decision;

–        reject the registration of the mark applied for in respect of all the goods in Classes 29, 30 and 33 of the Nice Agreement; and

–        order EUIPO to pay the costs.

34      EUIPO contends that the Court of Justice should dismiss the appeal and order Monster Energy to pay the costs.

**The appeal**

35      Under Article 181 of its Rules of Procedure, where an appeal is, in whole or in part, manifestly inadmissible or manifestly unfounded, the Court may at any time, acting on a proposal from the Judge-Rapporteur and after hearing the Advocate General, decide by reasoned order to dismiss that appeal in whole or in part.

36      That provision must be applied in the present case.

37      In support of its appeal, Monster Energy relies on two grounds of appeal alleging, first, infringement of Article 8(1)(b) of Regulation No 207/2009 and, secondly, infringement of Article 8(5) of that regulation.

38      The first ground of appeal is, essentially, divided into two parts.

**The first ground of appeal**

*Arguments of the parties*

39      By the first part of its first ground of appeal, Monster Energy argues that the General Court infringed Article 8(1)(b) of Regulation No 207/2009 in the context of the assessment of the dominant and distinctive elements of the mark applied for, and of the weight to be attached to those elements. It submits that the General Court, particularly in the last sentence of paragraph 38 of the judgment under appeal, wrongly took the view that an element of a composite mark could be distinctive only if it dominates the overall impression created by that mark. According to the appellant, the General Court thus wrongly found that the three wavy lines did not have an independent distinctive role, as they did not constitute the dominant element of the composite mark.

40      By doing so, Monster Energy submits, the General Court failed to have regard to the scope of the judgment of 6 October 2005, *Medion* (C‐120/04, EU:C:2005:594). In that judgment, the Court found that, where an element of a composite mark plays an independent distinctive role without being dominant, it is possible that the overall impression produced by the composite mark might lead the public to believe that the goods or services concerned derive from a company linked to the earlier mark, given the close similarity of that mark to the element that plays an independent distinctive role in the composite mark applied for. Thus, the General Court ought to have concluded that, even if the wavy lines were not dominant, they nonetheless had an independent distinctive role.

41      By the second part of the first ground of appeal, Monster Energy challenges the overall assessment and the comparison of the signs carried out in paragraphs 50 to 60 of the judgment under appeal.

42      EUIPO contends that this first ground of appeal must be rejected as inadmissible to the extent to which it is a new plea. EUIPO maintains that the appellant did not claim before the General Court that the figurative element of the sign at issue had an independent distinctive role and confined itself to asserting that that element was the dominant and distinctive element of the sign at issue. In any event, according to EUIPO, that ground of appeal is unfounded as it is based on an incorrect reading of the judgment under appeal. Moreover, findings of fact made by the General Court in the judgment under appeal are not subject to review by the Court of Justice in an appeal.

*Findings of the Court*

43      It should be borne in mind that, under Article 170(1) of the Rules of Procedure, the subject matter of the proceedings before the General Court may not be changed in the appeal. The jurisdiction of the Court of Justice in an appeal is limited to review of the findings of law on the pleas argued before the General Court.

44      A party cannot therefore put forward for the first time before the Court of Justice, in an appeal, a plea in law which it has not raised before the General Court as that would allow it to bring before the Court, the appellate jurisdiction of which is limited, a dispute of wider ambit than that which came before the General Court (see, inter alia, order of 12 June 2014, *Bimbo*v *OHIM*, C‐285/13 P, not published, EU:C:2014:1751, paragraph 16, and judgment of 19 May 2011, *Union Investment Privatfonds*v *OHIM*, C‐308/10 P, not published, EU:C:2011:327, paragraph 31).

45      In the present case, it must be noted that the appellant did not raise before the General Court the argument in support of the first part of its first ground of appeal, but relies on that argument for the first time in its appeal.

46      The application brought before the General Court does not show that the appellant claimed that the figurative element consisting of three wavy lines had an independent distinctive role. On the contrary, in paragraphs 12 to 20 of that application, the appellant confined itself to challenging the assessment of the facts carried out by the Board of Appeal with regard to the dominant character of the figurative element of the mark applied for. It asserted before the General Court that the figurative element in question, namely the three wavy lines, was the dominant element of the sign applied for and that the other figurative and word elements of that sign were descriptive and, therefore, negligible. That argument is therefore a new plea.

47      Consequently, the first part of the first ground of appeal must be rejected as being manifestly inadmissible.

48      As regards the second part of the first ground of appeal, it must be borne in mind that, in accordance with Article 256 TFEU and the first paragraph of Article 58 of the Statute of the Court of Justice of the European Union, an appeal lies on points of law only. The General Court thus has exclusive jurisdiction to find and appraise the relevant facts and to assess the evidence.

49      It is settled case-law that the assessment of the similarities between the signs at issue is of a factual nature and, save where the evidence and facts are distorted, is not subject to review by the Court of Justice (see, inter alia, judgment of 2 September 2010, *Calvin Klein Trademark Trust* v *OHIM*, C‐254/09 P, EU:C:2010:488, paragraph 50).

50      In the present case, taking account of the assessment carried out in paragraph 45 of the present order with regard to the admissibility of the first part of the first ground of appeal, it is clear that the appellant, in fact, confines itself to challenging the assessment of the facts carried out by the General Court, without adducing any evidence which would allow the inference that the General Court distorted the facts or evidence put before it.

51      The second part of the first ground of appeal must therefore also be rejected as being manifestly inadmissible.

52      Accordingly, the first ground of appeal must be rejected as being manifestly inadmissible.

**The second ground of appeal**

*Arguments of the parties*

53      By its second ground of appeal, Monster Energy argues that the General Court applied Article 8(5) of Regulation No 207/2009 incorrectly, inasmuch as, before finding that the marks at issue were dissimilar overall, it failed correctly to identify the distinctive and dominant elements of the mark applied for by not recognising the independent distinctive role of the three wavy lines.

54      EUIPO contends that this second ground of appeal must be rejected, in so far as it is based on the same arguments as those set out in the context of the first ground of appeal.

*Findings of the Court*

55      It must be noted at the outset that this second ground of appeal is based on the incorrect premiss that the General Court failed correctly to identify the distinctive and dominant elements of the mark applied for by not recognising the independent distinctive role of the three wavy lines.

56      As in the assessment carried out in paragraph 45 of the present order concerning the admissibility of the first part of the first ground of appeal, it must be noted that the appellant did not raise before the General Court the argument in support of its second ground of appeal, but relies on that argument for the first time in its appeal.

57      Consequently, the second ground of appeal must be rejected as being manifestly inadmissible.

58      As none of the grounds of appeal has been upheld, the appeal must be dismissed in its entirety without there being any need to adjudicate on the second to fourth heads of claim seeking the annulment of the decision at issue, the annulment of the decision of the Opposition Division and the rejection of the application for registration of the mark applied for.

**Costs**

59      Under Article 138 of the Rules of Procedure of the Court of Justice, which applies to appeal proceedings by virtue of Article 184 thereof, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. As Monster Energy has been unsuccessful and as EUIPO has applied for costs to be awarded against it, Monster Energy must be ordered to pay the costs of the present proceedings.

On those grounds, the Court (Eighth Chamber) hereby orders:

1.      **The appeal is dismissed.**

2.      **Monster Energy Company shall pay the costs.**

Luxembourg, 18 January 2018.

| A. Calot Escobar | | J. Malenovský |
| ---------------- | | ------------- |

| Registrar | | President of the Eighth Chamber |
| --------- | | ------------------------------- |

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*      Language of the case: English.