JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
10 November 2021 (*)
(EU trade mark – Revocation proceedings – EU word marks MONSTER and MONSTER ENERGY – Genuine use of the marks – Use in connection with the goods in respect of which the marks were registered – Article 51(1)(a) of Regulation (EC) No 207/2009 (now Article 58(1)(a) of Regulation (EU) 2017/1001))
In Joined Cases T‑758/20 and T‑759/20,
Monster Energy Co., established in Corona, California (United States), represented by P. Brownlow, Solicitor,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by V. Ruzek and E. Śliwińska, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Frito-Lay Trading Company GmbH, established in Bern (Switzerland), represented by V. von Bomhard and J. Fuhrmann, lawyers,
TWO ACTIONS brought against the decisions of the Second Board of Appeal of EUIPO of 5 October 2020 (Cases R 2927/2019-2 and R 2928/2019-2), relating to two revocation proceedings between Frito-Lay Trading Company and Monster Energy,
THE GENERAL COURT (Sixth Chamber),
composed of A. Marcoulli, President, S. Frimodt Nielsen (Rapporteur) and R. Norkus, Judges,
Registrar: E. Coulon,
having regard to the applications lodged at the Court Registry on 22 December 2020,
having regard to the decision of 5 February 2021 joining Cases T‑758/20 and T‑759/20 for the purposes of the written part of the procedure, any oral part of the procedure and the decision which closes the proceedings,
having regard to the response of EUIPO lodged at the Court Registry on 17 March 2021,
having regard to the response of the intervener lodged at the Court Registry on 18 March 2021,
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
The first contested mark (Case T‑758/20)
1        On 3 November 2010, the applicant, Monster Energy Co., 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 word sign MONSTER.
3        The goods in respect of which registration was sought are in, inter alia, Classes 30 and 32 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 to the following description:
–        Class 30: ‘Coffee based beverages and coffee based beverages containing milk in Class 30’;
–        Class 32: ‘Non-alcoholic beverages, namely energy drinks and energy drinks flavoured with coffee, all enhanced with vitamins, minerals, nutrients, amino acids and/or herbs in Class 32’.
4        The trade mark application was published in European Union Trade Marks Bulletin
No 2011/005 of 10 January 2011 and on 19 April 2011 the sign at issue was registered as an EU trade mark under the number 9492158.
The second contested mark (Case T‑759/20)
5        On 5 November 2010, the applicant filed another application for registration of an EU trade mark with EUIPO, which related to the word sign MONSTER ENERGY.
6        The goods in respect of which registration was sought are in, inter alia, Class 30 and correspond to the following description: ‘Coffee based beverages and coffee based beverages containing milk in Class 30’.
7        That trade mark application was published in European Union Trade Marks Bulletin
No 2011/005 of 10 January 2011 and on 19 April 2011 the sign at issue was registered as an EU trade mark under the number 9500448.
The revocation proceedings
8        On 25 April 2017, the intervener, Frito-Lay Trading Company GmbH, filed applications for revocation of the contested marks on the ground that those marks had not been put to genuine use within a continuous period of five years, in accordance with Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001). Those applications concerned, inter alia, the goods in Class 30 referred to in paragraph 3 above, as regards the first contested mark, and in paragraph 6 above, as regards the second contested mark (taken together, ‘the goods concerned’).
9        The applicant submitted evidence of use of those marks.
10      By decisions of 22 and 23 October 2019, the Cancellation Division revoked the contested marks in respect of, inter alia, the goods concerned, finding that use of those marks had been proved only in connection with energy drinks, possibly various lines of energy drinks with different flavours, which fell within Class 32.
11      On 19 December 2019, the applicant filed two notices of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decisions of the Cancellation Division, inter alia in so far as they had upheld the applications for revocation in respect of the goods concerned.
12      By two decisions of 5 October 2020 (‘the contested decisions’), the Second Board of Appeal of EUIPO dismissed the applicant’s appeals, on the ground that the applicant had not proved genuine use of the contested marks during the relevant period in connection with the goods concerned.
13      The Board of Appeal pointed out at the outset that, in order to prove use of the contested marks in connection with the goods concerned, the applicant had referred to its goods ‘x-presso monster hammer’ and ‘x-presso monster midnight’, in actual fact ‘x-presso monster midnite’, (taken together, ‘the “x-presso monster” goods’), which are beverages in cans, and to photographs of those goods on which the words ‘espresso coffee drink with milk’ appeared.
14      In response, the Board of Appeal found that it was necessary to distinguish between ‘coffee based beverages’ in Class 30, whether or not they contained milk, on the one hand, and ‘energy drinks’ in Class 32 on the other hand.
15      In that regard, the Board of Appeal stated that the Encyclopedia Britannica defined an ‘energy drink’ as follows:
‘Any beverage that contains high levels of a stimulant ingredient, usually caffeine, as well as sugar and often supplements, such as vitamins or carnitine, and that is promoted as a product capable of enhancing mental alertness and physical performance. Energy drinks are distinguished from sports drinks, which are used to replace water and electrolytes during or after physical activity, and from coffee and tea, which are brewed, contain fewer ingredients, and may be decaffeinated. Energy drinks also differ from soft drinks, which either do not contain caffeine or contain relatively small amounts of caffeine. …’
16      In that context, the Board of Appeal stated that it was apparent from the pictures of the list of ingredients in the ‘x-presso monster’ goods that they contained L-carnitine, B vitamins, ginseng and taurine, ingredients which, according to the Board of Appeal, were not commonly used in ‘coffee based beverages containing milk’ in Class 30, but were usually found in energy drinks. According to the Board of Appeal, the presence of such ingredients constituted an essential aspect of the goods to which the applicant was referring.
17      As regards the fact that the ‘x-presso monster’ goods contained 1.3% of coffee extract, the Board of Appeal pointed out, first of all, that it had not been explained whether those goods were brewed or not. It also took the view that, although those goods might be coffee or espresso flavoured, the ingredients in those goods also included a broad range of ingredients which were not commonly found in ‘coffee-based beverages’ and that the label on those goods clearly indicated that they had a ‘high caffeine content’.
18      The Board of Appeal concluded that the ‘x-presso monster’ goods had the same characteristics as those which characterised ‘energy drinks’. It pointed out, in that regard, that the witness statement submitted by a director of the applicant and the presence of the wording ‘coffee energy’ in bold typeface and in a prominent position on the cans containing those goods showed that the real function or purpose of those goods was to serve as ‘energy drinks’, albeit coffee flavoured variants thereof, including milk.
19      Lastly, as regards the second contested mark, the Board of Appeal pointed out that that mark had not been used on the ‘x-presso monster’ goods on which the applicant had relied.
Forms of order sought
20      The applicant claims that the Court should:
–        annul the contested decisions to the extent that they revoked the contested marks in respect of the goods concerned;
–        annul the Cancellation Division’s decisions of 22 and 23 October 2019 to the extent that they revoked the contested marks in respect of the goods concerned;
–        reject the applications for revocation of the contested marks in respect of the goods concerned;
–        order EUIPO to pay the costs.
21      EUIPO and the intervener contend that the Court should:
–        dismiss the actions;
–        order the applicant to pay the costs.
Law
22      In support of its actions, the applicant relies, in essence, on a single plea in law, alleging infringement of Article 58(1)(a) of Regulation 2017/1001, a plea in law which consists of three parts, alleging, respectively:
–        that the Board of Appeal failed to have regard, in the light, in particular, of the evidence relating to the ‘x-presso monster’ goods, to the ‘principle that a product can be correctly classified, and therefore put to genuine use, in more than one class in view of its composite nature’;
–        that the Board of Appeal erred in that it found that genuine use had not been proved in connection with the goods concerned because those goods shared certain characteristics with the energy drinks in Class 32, which gave undue weight and significance to those characteristics;
–        that the Board of Appeal erred in taking the manufacturing process of the ‘x-presso monster’ goods into account for the purposes of its assessment.
Preliminary observations
23      It must be pointed out at the outset that the applicant, the intervener and EUIPO, in their written pleadings, and the Board of Appeal, in the contested decisions, refer to the provisions of Regulation 2017/1001. However, given the date on which the applications for revocation at issue were filed, namely 25 April 2017, which is decisive for the purposes of identifying the substantive law applicable, the present dispute is governed by the substantive provisions of Regulation No 207/2009. Since Article 58 of Regulation 2017/1001 corresponds to Article 51 of Regulation No 207/2009, the references made by the applicant and by the Board of Appeal to the former article must be understood as referring to the latter article (see, to that effect, judgment of 3 July 2019, Viridis Pharmaceutical v EUIPO, C‑668/17 P, EU:C:2019:557, paragraphs 3 and 25).
24      Under Article 51(1)(a) of Regulation No 207/2009, the rights of the proprietor of an EU trade mark are to be declared to be revoked, inter alia on application to EUIPO, if, within a continuous period of five years, the trade mark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.
25      In the present case, the contested marks were registered on 19 April 2011 and the applications for revocation were filed on 25 April 2017. Consequently, since the contested marks had been registered for more than five years at the time when those applications were filed, the applicant had to prove genuine use of those marks in connection with the goods concerned during the five years preceding that latter date, namely from 25 April 2012 to 24 April 2017 inclusive.
26      In proceedings for the revocation of a mark, it is, in principle, for the proprietor of the mark to establish genuine use of that mark (see judgment of 23 January 2019, Klement v EUIPO, C‑698/17 P, not published, EU:C:2019:48, paragraph 57 and the case-law cited).
27      In that regard, it is apparent from the case-law that there is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see judgment of 8 July 2004, Sunrider v OHIM – Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 39 and the case-law cited).
28      When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial use of the mark is real, particularly the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (see judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 40 and the case-law cited).
29      In order to examine whether an earlier trade mark has been put to genuine use, a global assessment must be carried out, which takes into account all the relevant factors of the particular case (see judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 42 and the case-law cited).
30      Genuine use of a trade mark cannot be proved by means of probabilities or presumptions, but must be demonstrated by solid and objective evidence of actual and sufficient use of the trade mark on the market concerned (see judgment of 6 October 2004, Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 28 and the case-law cited).
31      It is in the light of the foregoing that the parties’ arguments must be examined.
The first part of the single plea, alleging failure to have regard to the ‘principle that a product can be put to genuine use in more than one class in view of its composite nature’ and the absence of any examination of the evidence in the light of that principle
32      The applicant submits that the Board of Appeal failed to have regard to a principle which implies that a ‘finished product which is a multipurpose composite object’ may be classified, and therefore put to genuine use, in all the classes that correspond to any of its functions or intended purposes. It refers in that regard to the General Remarks to the ninth edition of the Nice Classification, which was in force at the time when the applications for registration of the contested marks were filed (‘the General Remarks’), and to the decision of the Second Board of Appeal of 11 December 2017 in Case R 344/2017-2, with regard to an auto-injector pen with adrenaline named ‘epipen’ which was classified in Classes 5 and 10 on account of its composite nature. In the present case the Board of Appeal should, according to the applicant, have considered whether the evidence relating to the ‘x-presso monster’ goods could prove genuine use in relation to goods in both Class 30 and Class 32. It submits that one consumer might purchase those goods because he or she wishes to consume a ‘coffee-based beverage’ in Class 30, whereas another might do so because he or she wishes to consume an ‘energy drink’ in Class 32. In order to prove that the contested marks have been used in order to market those goods as ‘coffee based beverages’, the applicant relies on the following evidence from the file relating to the proceedings before EUIPO:
–        the reference to ‘x-presso’, which is a play on the term ‘espresso’ and appears prominently in a large stylised font on the front of the cans of the ‘x-presso monster’ goods;
–        the reference to the English term ‘coffee’, which appears in bold text on the front of the cans of those goods;
–        the English product description ‘espresso coffee drink with milk’, which appears in large bold text in a prominent position on the back of the cans of those goods; and
–        the reference to coffee in the list of ingredients which appears on the cans of those goods.
33      EUIPO and the intervener dispute that line of argument.
34      In essence, the applicant claims that the Board of Appeal examined the evidence relating to the use of the contested marks in connection with the goods concerned on the basis of the wrong criterion.
35      In order to find that it was necessary to distinguish between ‘energy drinks’ in Class 32, on the one hand, and ‘coffee based beverages’ in Class 30, on the other hand, the Board of Appeal referred to the first criterion mentioned under the heading ‘Goods’ in the General Remarks (see paragraph 28 of the second contested decision and the reference to that criterion which was made in paragraph 29 of the first contested decision with regard to the first category of goods examined in that decision). According to that criterion, the categorisation of a finished product in the Nice Classification is carried out in principle according to its function or purpose and, if the function or purpose of a finished product is not mentioned in any class heading, the finished product is classified by analogy with other comparable finished products.
36      The applicant relies on another criterion mentioned under the heading ‘Goods’ in the General Remarks, according to which ‘a finished product which is a multipurpose composite object (e.g. clocks incorporating radios) may be classified in all classes that correspond to any of its functions or intended purposes’. It therefore claims that, since one consumer might purchase the ‘x-presso monster’ goods because he or she wishes to consume a ‘coffee-based beverage’ in Class 30, whereas another might purchase them because he or she wishes to consume an ‘energy drink’ in Class 32, the Board of Appeal did not apply the correct criterion.
37      However, it must be pointed out, as EUIPO and the intervener rightly submit, that, as regards a finished product, that is to say, a product which is ready to be marketed (judgment of 19 July 2016, Alpha Calcit v EUIPO – Materis Paints Italia (CALCILITE), T‑742/14, EU:T:2016:418, paragraph 51), the General Remarks first of all set out a principle before envisaging a specific situation.
38      The principle is that of the classification of a finished product in one class according to its function or purpose, whereas the specific situation is that of ‘a multipurpose composite object’, the latter, by way of exception to the aforementioned principle, being capable of being classified in a number of classes because of its various functions or intended purposes. A dual classification of the same product is not normally possible in the light of the wording of Rule 2(2) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation (EC) No 40/94 (OJ 1995 L 303, p. 1), which is applicable ratione temporis to the present case.
39      The Board of Appeal therefore correctly found, in the context of the assessment of the evidence of use, in particular that relating to the ‘x-presso monster’ goods, that it was necessary to refer to the principle set out in the General Remarks rather than to the specific situation relating to multipurpose composite objects.
40      In accordance with that principle, the Board of Appeal found that the real function or purpose of the ‘x-presso monster’ beverages in cans was to serve as ‘energy drinks’ in Class 32, albeit coffee-flavoured variants thereof including milk (see the first contested decision, paragraph 52, and the second contested decision, paragraph 39). It is also apparent from the contested decisions that the ‘x-presso monster’ goods are energy drinks in Class 32, namely coffee-flavoured energy drinks, the real function or purpose of which is to provide an energy boost or to serve as a pick-me-up (see the first contested decision, paragraph 54, which states that those beverages are enhanced with vitamins, minerals, nutrients, amino acids and/or herbs, and the second contested decision, paragraph 42).
41      In order to reach that conclusion, the Board of Appeal examined the various items of evidence that had been submitted by the applicant and referred to a number of factors relating to, in particular, the nature of the ‘x-presso monster’ goods and to the characteristics of the market, which will be examined below in the context of the assessment as to the merits of the second part.
42      The following must be pointed out as regards, more specifically, the various items of evidence on which the applicant relied in the context of the first part in order to prove that the ‘x-presso monster’ goods are ‘coffee based beverages’ in Class 30.
43      First of all, the applicant’s claim that some consumers purchase the ‘x-presso monster’ goods not in order to obtain a stimulating coffee-flavoured energy drink flavoured with coffee but as ‘coffee based beverages’ in Class 30 is in no way substantiated.
44      That claim is in fact based on a series of indications appearing on the packaging of the ‘x-presso monster’ goods, indications which are capable, according to the applicant, of proving that consumers identify those goods as ‘coffee based beverages’ in Class 30.
45      However, in view of the various factors to which the Board of Appeal referred, and in particular of the fact that the ‘x-presso monster’ goods have the same function or purpose as the other energy drinks marketed by the applicant, it is more likely that the references made on the packaging of those beverages to the term ‘x-presso’, in order to mean ‘espresso’, or to the term ‘coffee’, will be interpreted by consumers as a reference to the flavouring used in those energy drinks, rather than as an indication that they are beverages which are prepared from coffee.
46      Furthermore, as regards the term ‘coffee’, it must be pointed out that that term is directly associated with the term ‘energy’ on the packaging of the ‘x-presso monster’ goods, which reinforces the idea that those goods are energy drinks flavoured with coffee, and not coffee-based beverages.
47      In addition, contrary to what the applicant submits and as is stated by the intervener, the English description of the product, ‘espresso coffee drink with milk’, does not really appear in a prominent position on the packaging of the ‘x-presso monster’ goods. That information is placed on the back of the cans in small characters, even though those characters are in bold, and is just above the list of ingredients. That information is, moreover, immediately followed, even before the beginning of the list of ingredients, by the following piece of information: ‘with taurine, L-carnitine, ginseng and B vitamins’. Taken together, those pieces of information on the back of that packaging do indeed attest to the fact that the ‘x-presso monster’ goods correspond to energy drinks, in the present case energy drinks flavoured with coffee and containing milk, rather than to coffee-based beverages.
48      Lastly, the reference to coffee in the list of ingredients which appears on the packaging of the ‘x-presso monster’ goods reinforces the idea that that ingredient, namely ‘coffee extract (1.3%)’, is, in itself, only one of the many ingredients of which that energy drink consists. That ingredient also constitutes, owing to the caffeine which it contains, a typical ingredient of such a beverage.
49      Moreover, as is stated by EUIPO, the Board of Appeal was entitled to take into account the fact that ‘energy drinks’ in Class 32 are distinguished with regard to the Nice Classification from ‘coffee based beverages’ in Class 30 (see, to that effect, the first contested decision, paragraphs 32 and 35). Notwithstanding the fact that the Nice Classification was adopted for exclusively administrative purposes, the explanatory notes on the different classes of that classification are relevant in determining the nature and purpose of the goods at issue (see, to that effect, order of 9 September 2019, Shore Capital International v EUIPO – Circle Imperium (The Inner Circle), T‑575/18, not published, EU:T:2019:580, paragraph 38 and the case-law cited). However, according to the explanatory notes to the ninth edition of the Nice Classification, non-alcoholic beverages generally fall within Class 32, whereas the beverages with coffee base which are included in Class 30 and expressly excluded from Class 32 refer more to beverages in which coffee constitutes the predominant and characteristic element.
50      A beverage which is merely ‘flavoured with coffee’ and is not ‘coffee based’ therefore falls within Class 32 and not Class 30.
51      Lastly, the applicant cannot usefully claim that the ‘x-presso monster’ goods are ‘multipurpose composite objects’. As is apparent from both of the examples which the applicant provided in that regard, namely clocks incorporating radios and an auto-injector pen with adrenaline, a multipurpose composite object consists of a number of components and fulfils more than one function: a radio and a clock or a device (auto-injector) and medical treatment (an adrenaline solution). Multipurpose composite objects are goods which are sold as a whole, but in which each of the components has an independent and distinct market value and could be marketed without the other specific component which is sold with it. By contrast, the applicant’s canned beverages constitute an inseparable homogeneous product which fulfils one main function, namely that of being essentially a stimulating energy drink, in the present case one which is flavoured with coffee.
52      Consequently, as correctly pointed out by EUIPO and the intervener, coffee-based beverages and energy drinks have different natures and do not fulfil the same main function. The former are characterised by the presence of coffee, whereas the latter include and combine a number of ingredients and coffee or coffee flavouring is given only a secondary role. Consumers are aware of those differences, which are, moreover, reinforced by the applicant’s communications and promotion with regard to the ‘x-presso monster’ goods, as is illustrated by various items of evidence in the case file, including the witness statement of its director or the applicant’s annual report for the year 2020, which highlight the energy content represented by those goods.
53      It is apparent from the foregoing that the applicant has not proved that the goods concerned fall both within Class 30 and within Class 32 by virtue of the exception referred to in paragraph 38 above and that, consequently, the Board of Appeal correctly analysed the various items of evidence on which the applicant had relied, by applying the principle that a finished product is classified in one class according to its function or purpose.
54      The first part of the single plea must therefore be rejected.
The second part of the single plea, alleging that undue weight and significance was given to the characteristics of energy drinks
55      The applicant submits that, even if it were the case that its ‘x-presso monster’ goods cannot fall within more than one class, the Board of Appeal attributed undue weight and significance to the characteristics associated with energy drinks in Class 32 and took insufficient account of the characteristics which indicate that those goods are coffee-based beverages which fall within Class 30. It argues that the Board of Appeal thus attributed more weight and significance to the fact that those goods contain L-carnitine, B vitamins, ginseng and taurine than it did to the fact that they contain coffee. It claims that the Board of Appeal also found that the words ‘high caffeine content’ on the packaging of those goods meant that those goods corresponded to ‘energy drinks’ rather than to ‘coffee-based beverages’, despite the fact that coffee-based beverages are often chosen by consumers and consumed because of their high caffeine content. Furthermore, it submits that the Board of Appeal put undue emphasis on the reference to ‘coffee energy’, which appears in a bold typeface and in a prominent position on that packaging, but did not take into account the reference to ‘expresso coffee drink with milk’, which also appears in bold typeface and in a prominent position on that packaging.
56      EUIPO and the intervener dispute that line of argument.
57      Contrary to what is, in essence, submitted by the applicant, it is apparent from the contested decisions that the Board of Appeal carried out a global assessment of whether the use of the contested marks in connection with the goods concerned was genuine, an assessment which took into account all the relevant factors of the particular case.
58      After considering, in the light of the evidence submitted by the applicant, the nature of the ‘x-presso monster’ goods, that is to say, whether they were ‘energy drinks’ in Class 32 or ‘coffee based beverages’ in Class 30, the Board of Appeal correctly found that the real function or purpose of those goods was to serve as ‘energy drinks’, albeit coffee-flavoured variants thereof including milk (see the first contested decision, paragraphs 41 to 52, and the second contested decision, paragraphs 25 to 40).
59      In the context of that global assessment, the Board of Appeal correctly took into account the various items of evidence which permitted the inference that the ‘x-presso monster’ goods met the definition of an energy drink, and that finding is not refuted by the applicant’s arguments to the contrary.
60      In order to substantiate that finding, the Board of Appeal duly pointed out that the ‘x-presso monster’ goods contained the same ingredients as those which are commonly used in energy drinks and that such ingredients are not commonly found in traditional coffee-based beverages.
61      It also stated that those goods were characterised by the presence of a warning which is characteristic of energy drinks, which often, as in the present case, have a ‘high caffeine content’. As is stated by the intervener, such a warning is not, from a regulatory point of view, required for coffee-based beverages.
62      The Board of Appeal also correctly stated that it was apparent from the witness statement of a director of the applicant that what was important for the applicant was to highlight the benefits which its goods had in terms of energy. It is in that context that, for example, the wording ‘coffee energy’ which is displayed on the ‘x-presso monster’ goods must be considered.
63      Likewise, for the reasons set on in paragraphs 45 to 48 above, it cannot be claimed that the Board of Appeal did not give sufficient weight and significance to the evidence on which the applicant had relied in order to submit that the ‘x-presso monster’ goods had the function or purpose of being coffee-based beverages, and not energy drinks which were, in present case, flavoured with coffee.
64      Furthermore, as is pointed out by the intervener and as is apparent from a number of the items of evidence which the applicant provided, it is established, as regards the ‘current market conditions for energy drinks’ referred to by the Board of Appeal (see the first contested decision, paragraph 45, and the second contested decision, paragraph 30), that energy drinks flavoured with coffee are usually found on the same shelves as energy drinks with other flavours, whether they are the applicant’s or those of other manufacturers. Consumers do not perceive any difference in function or purpose between the various flavours of energy drinks, whether they are coffee flavoured, cherry flavoured, kiwi fruit flavoured, chewing-gum flavoured or mango flavoured. All of those drinks fulfil the same function, namely that of providing an energy boost.
65      Consequently, the second part of the single plea must be rejected.
The third part of the single plea, alleging that considerations relating to the manufacturing process of the ‘x-presso monster’ goods were wrongly taken into account
66      The applicant submits that the Board of Appeal erred in complaining that it ‘ha[d] not clearly indicated whether the [“x-presso monster”] products are brewed or manufactured by a different technique, although they do appear to contain “coffee extract (1.3%)”‘ (see the first contested decision, paragraph 47, and the second contested decision, paragraph 34). It argues that, in so doing, the Board of Appeal took considerations relating to the manufacturing process into account in assessing the function or purpose of the goods concerned.
67      EUIPO and the intervener dispute that line of argument.
68      In the present case, it must be pointed out that, in finding that the evidence of use related to beverages the real function or purpose of which was to serve as ‘energy drinks’, albeit coffee-flavoured variants thereof including milk, the Board of Appeal essentially relied on the definition of energy drinks provided by the Encyclopedia Britannica, which emphasised the ingredients in, and functions of, those beverages, and on the witness statement of a director of the applicant.
69      As regards the difference relating to the manufacturing process which is mentioned by the Encyclopedia Britannica, it is apparent from the contested decisions that the Board of Appeal found that the applicant had not clearly indicated whether its goods ‘[were] brewed or manufactured by a different technique’. The applicant has not, moreover, provided any details in that regard in its actions.
70      In that context, the Board of Appeal cannot be criticised for having referred to the difference between goods which are brewed, like coffee-based beverages, and those which are not, like energy drinks in which various ingredients such as L-carnitine or taurine are combined, as one of the factors which is likely to be taken into consideration by the consumer in assessing the real function or purpose of the beverages on which the applicant has relied in order to prove that the contested marks have been used in connection with the goods concerned. It was permissible for the Board of Appeal to refer to that difference by way of an additional assessment. In any event, it is sufficient to point out, as is apparent from paragraphs 57 to 63 above, that the Board of Appeal, after carrying out the global assessment of whether the use of the contested marks was genuine, was right in finding that the function and purpose of the ‘x-presso monster’ goods met the definition of an energy drink, with the result that genuine use of those marks has not been proved in connection with the goods concerned.
71      Consequently, the third part of the single plea must be rejected.
72      It follows from all of the foregoing that the first head of claim must be rejected, and consequently so must the second and third heads of claim, without it being necessary to rule on whether they are admissible.
Costs
73      Under Article 134(1) of the Rules of Procedure of the General Court, 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 forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1.      Dismisses the actions;
2.      Orders Monster Energy Co. to pay the costs.
Marcoulli
Frimodt Nielsen
Norkus
Delivered in open court in Luxembourg on 10 November 2021.
E. Coulon
S. Gervasoni
Registrar
President
*      Language of the case: English.