Judgment — ECLI:EU:T:2016:408
Date: 2016-07-14
Language of the case: English
Court formation: Sixth Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded

summary reports prepared by an independent organisation containing statistics relating to the energy drinks market for the years 2012 and 2013; – copies of extracts from a presentation by the applicant from 2013 concerning energy drinks; – copies of a selection of web extracts, articles and reports dated between 2009 and 2013 and referring to the territories of France, Germany, Benelux and Spain. The vast majority of those excerpts refer to energy drinks. There are a few pictures showing the earlier mark No 6433817 in different colours on clothing in connection with the applicant’s motorsports sponsorship; – copies of articles from various online sources (mostly gathered by LexisNexis) referring to Monster Energy drink and the earlier mark No 6433817 in different colours in relation to energy drinks, their sales and territories, dated from 2008 to 2012; – copies of photographs of athletes and sport teams from across the European Union. The earlier mark No 6433817, in an altered form, is depicted in the top right-hand corner of each photo-collage; – copies of photographs showing displays of energy drinks bearing international registration No 1048069 in different colours; – copies of photographs of sports events sponsored by the applicant showing the mark under international registration No 1048069, in an altered form, on banners, safety barriers, vans, tents and racing cars; – copies of photographs showing how the sponsored teams use the earlier marks. The earlier mark No 6433817 and international registration No 1048069 are shown in an altered form on certain articles of clothing and helmets; – copies of articles from various online sources referring mainly to motor-car and motor-bike racing and also to water sports contests. The earlier marks are shown, in an altered form, mainly on banners and safety barriers but also on cars, helmets, items of clothing and headgear; – copy of a 2009 Apparel Kawaski catalogue showing the mark under international registration No 1048069 in different colours on articles of clothing, headgear and backpacks always placed above the word ‘kawasaki’; – copy of a ONE Industries catalogue from 2011 showing the earlier mark No 6433817 in different colours on articles of clothing, headgear, a helmet and an umbrella. On each item there is a figurative sign in various forms referring to ONE Industries; – copies of excerpts from Facebook pages referring to the word ‘monster’ in relation to music, athletes and others, and where the earlier mark No 6433817 appears in an altered form either independently or on bicycles, cars and clothing; – copies of Monster Energy catalogues from 2010 to 2012 including a few pictures of articles of clothing and headgear bearing the earlier mark No 6433817 and the mark under international registration No 1048069 in different colours; – copies of media coverage about the applicant’s awards in relation to energy drinks and other beverages between 1999 and 2012. 39 In this respect, first, it should be noted that the existence of an unusually high level of distinctiveness as a result of the public’s recognition of a mark on the market necessarily presupposes that at least a significant part of the relevant public is familiar with that mark (see judgment of 12 July 2006 in Vitakraft-Werke Wührmann v OHIM — Johnson’s Veterinary Products (VITACOAT), T‑277/04, EU:T:2006:202, paragraph 34 and the case-law cited). In the present case, it has been established that the relevant public is that of European Union consumers. 40 In order to assess whether a mark has a highly distinctive character as a result of the public’s recognition of it, all the relevant facts of the case must be taken into consideration, that is, in particular, the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see judgment of 12 July 2006 in VITACOAT, T‑277/04, EU:T:2006:202, paragraph 35 and the case-law cited). 41 Therefore, the Board of Appeal was right to find, in paragraphs 38 to 41 of the contested decision, that, taken as a whole, the documents submitted by the applicant did not show any use establishing enhanced distinctiveness of the earlier mark in respect of items of clothing or headgear. 42 It is apparent from those documents that the applicant operates in the ‘non-alcoholic beverages’ or ‘energy drinks’ sector and that it is essentially for the purposes of sponsorship or promotion that the earlier marks are used on items of clothing and headgear. 43 In particular, the Board of Appeal did not err in finding that, even though certain evidence shows licence agreements with clothing manufacturers, those agreements authorise those manufacturers to make and sell clothing on which the early marks appear in order to promote the umbrella brand of those manufacturers. Thus, as regards the ONE Industries catalogue from 2011, it transpires that the earlier mark is represented in different colours on articles of clothing and headgear together with a figurative sign in various shapes referring to ONE Industries. 44 Similarly, whilst the Board of Appeal stated that it was clear from the documents submitted by the applicant that it ‘has invested considerable amounts of money in advertising, marketing and promoting its brand mainly by means of extreme sports’, it also correctly maintained that it was ‘impossible to infer anything about the volume and turnover of clothing articles sold in the relevant period of time on the relevant territories’ and that ‘the reference to pictures and catalogues of clothing and headgear [such as copies of Monster Energy catalogues from 2010 to 2012] is insufficient to conclude on any finding of enhanced distinctiveness of the earlier mark, let alone reputation’. 45 The applicant, moreover, does not put forward any argument or refer to any evidence whatsoever which the Board of Appeal allegedly failed to take into account and which might have made it possible to reach a different conclusion. 46 Furthermore, the Board of Appeal was also right to find that, in the assessment of the likelihood of confusion under Article 8(1)(b) of Regulation No 207/2009, the fact that the earlier mark enjoyed a reputation for drinks had no relevance, in so far as the opposition was not based on drinks as regards the earlier mark No 6433817 and drinks were clearly not similar to the goods at issue (clothing, footwear and headgear). 47 Lastly, it must also be pointed out that the various documents submitted by the applicant do not make it possible to establish what is the market share held by the mark in respect of the goods which form the basis for the opposition concerning the earlier mark No 6433817 or what proportion of the relevant section of the public, because of the earlier mark, identifies the goods or services as originating from a particular undertaking, even though such evidence is to be taken into consideration in determining the distinctive character of the earlier mark (see paragraph 40 above). 48 Consequently, the Board of Appeal was fully entitled to conclude, in paragraphs 41 to 43 of the contested decision, that the evidence submitted by the applicant did not prove that the earlier mark No 6433817 enjoyed an enhanced distinctive character in relation to the goods on which the opposition was based and that the assessment of the likelihood of confusion had, therefore, to rest on the average inherent distinctive character of that mark. 49 The applicant also criticises the Board of Appeal’s finding that there was no likelihood of confusion in circumstances where the goods are nonetheless identical and there is a visual and conceptual similarity, which should, on the basis of an overall assessment, lead to the opposite conclusion. 50 That argument also cannot be accepted. 51 In respect of the assessment of the overall likelihood of confusion, the Board of Appeal was entitled to find that the goods covered by the mark applied for and by the earlier mark No 6433817 were similar or identical. It also acted correctly in concluding that the signs were visually similar only to a very low degree and that they were not phonetically comparable (see paragraphs 21 to 29 above). 52 It is also apparent from the foregoing that, even if, conceptually, it cannot be entirely ruled out that the signs at issue might be perceived as a ‘message of something aggressive and of something being ripped open’, such an interpretation cannot be upheld in place of that set out by the Board of Appeal in paragraphs 34 and 35 of the contested decision, which remains much more probable when it is a question of the perception of those signs by the relevant public (see paragraphs 30 to 34 above). 53 Furthermore, contrary to what the applicant claims, the Board of Appeal was right to find that the earlier mark No 6433817 did not enjoy an enhanced distinctive character for the goods at issue (see paragraphs 41 to 48 above). 54 Consequently, the Board of Appeal was right to hold, in respect of the overall assessment of the likelihood of confusion, that the differences between the signs in the present case prevailed over their similarities and that, therefore, having regard to all the relevant factors, there was no likelihood of confusion on the part of the relevant public, even if the goods were identical (see paragraphs 46 and 47 of the contested decision). 55 Consequently, the arguments presented by the applicant concerning infringement of Article 8(1)(b) of Regulation No 207/2009 must be rejected. Application of Article 8(5) of Regulation No 207/2009 56 The applicant submits that, in the light of the extensive evidence filed in that regard, the Board of Appeal was wrong to conclude that Article 8(5) of Regulation No 207/2009 was not applicable in the present case. It asserts that it would therefore be wrong to take the view that, without relevant documentation on turnover or market share, it is not possible to establish that the earlier mark enjoys a high degree of recognition among the relevant public. 57 As set out in Article 8(5) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2), the trade mark applied for may 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 EU trade mark, the trade mark has a reputation in the European Union 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 mark. 58 The broader protection afforded to the earlier mark under Article 8(5) of Regulation No 207/2009 presupposes, therefore, that a number of conditions have been satisfied. First, the earlier mark which is claimed to have a reputation must be registered. Secondly, that mark and the mark applied for must be identical or similar. Thirdly, in the case of an earlier EU trade mark, it must have a reputation in the European Union. Fourthly, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. Since those conditions are cumulative, the failure to satisfy one of them is sufficient to render that provision inapplicable (judgment of 11 July 2007 in Mülhens v OHIM — Minoronzoni (TOSCA BLU), T‑150/04, EU:T:2007:214, paragraphs 54 and 55). 59 In the present case, it must first be noted that the Board of Appeal was right to find, in paragraph 53 of the contested decision, that reputation was claimed by the applicant in respect of the earlier mark No 6433817 only for goods in Class 25 and that consequently the question whether or not that mark enjoys a reputation for goods other than articles of clothing and headgear is irrelevant. 60 Likewise, the Board of Appeal also acted correctly in finding, in that same paragraph of the decision, that, for the same reasons as those in respect of the applicant’s failure to demonstrate the enhanced distinctiveness of the earlier mark in relation to the goods concerned, namely clothing and headgear in general, the applicant was not in a position to establish reputation under Article 8(5) of Regulation No 207/2009. In that context, the Board of Appeal was fully entitled to find, contrary to what the applicant claimed, that no relevant document relating to turnover, market share, brand awareness, marketing campaigns and others in respect of clothing and headgear had been submitted to it. 61 Consequently, as one of the conditions for the application of Article 8(5) of Regulation No 207/2009 had not been met, the Board of Appeal was entitled to reject the opposition on that basis. 62 Lastly, it must be stated that the applicant does not set out in its application any argument or refer to any evidence whatsoever that the Board of Appeal allegedly failed to take into account and which might have made it possible to reach a different conclusion. 63 Consequently, the applicant’s arguments concerning infringement of Article 8(5) of Regulation No 207/2009 must be rejected. 64 In conclusion, as none of the pleas in law raised by the applicant alleging infringement of Article 8(1)(b) and 8(5) of Regulation No 207/2009 is well founded, the heads of claim seeking annulment of the contested decision and consequently the annulment of the Opposition Division’s decision must be rejected, as must also be, without there being any need to adjudicate on the admissibility of such an application, the head of claim seeking rejection of the mark applied for. Costs 65 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO. On those grounds, THE GENERAL COURT (Sixth Chamber) hereby: 1. Dismisses the action; 2. Orders Monster Energy Company to pay the costs. Frimodt Nielsen Collins Valančius Delivered in open court in Luxembourg on 14 July 2016. [Signatures] Table of contents Background to the dispute Forms of order sought Law Infringement of Article 8(1)(b) of Regulation No 207/2009 The relevant public The comparison of the goods The comparison of the signs The global assessment of the likelihood of confusion Application of Article 8(5) of Regulation No 207/2009 Costs * Language of the case: English.