JUDGMENT OF THE GENERAL COURT (Second Chamber)
28 October 2015 (*)
(Community trade mark — Opposition proceedings — Application for the Community word mark MoMo Monsters — Earlier Community word marks MONSTER and MONSTER ENERGY and earlier international figurative mark MONSTER ENERGY — Relative ground for refusal — No similarity between the goods — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑736/14,
Monster Energy Company, established in Corona, California (United States), represented by P. Brownlow, Solicitor,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by E. Zaera Cuadrado, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Home Focus Development Ltd, established in Tortola, British Virgin Islands,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 7 August 2014 (Case R 1167/2013-2), concerning opposition proceedings between Monster Energy Company and Home Focus Development Ltd,
THE GENERAL COURT (Second Chamber),
composed of M.E. Martins Ribeiro, President, S. Gervasoni and L. Madise (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 27 October 2014,
having regard to the response lodged at the Court Registry on 7 January 2015,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur and pursuant to Article 135a of the Rules of Procedure of the Court of 2 May 1991, to rule on the action without an oral procedure,
gives the following
Judgment
Background to the dispute
1        On 21 December 2011, Home Focus Development Ltd filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2        The mark in respect of which registration was sought is the word sign MoMo Monsters.
3        The goods and services for which registration was sought are in Classes 14, 16, 25, 28, 30 and 41 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, for each of those classes, to the following description:
–        Class 14: ‘Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments’;
–        Class 16: ‘Writing utensils and materials, namely pencils and pencil sharpeners, ballpens, brushes, markers, chalk, staplers, hole punchers, rulers and other accessories for writing and drawing, and other cardboard and paper articles, namely but not limited to albums, boxes of paper and cardboard, writing pads, writing blocks, notebooks, booklets, wrapping paper, greeting cards, trading cards, labels, stickers and cardboard and paper articles for office and school use’;
–        Class 25: ‘Clothing and footwear, namely but not limited to footwear of all kinds, jackets, coats, shirts, blouses, T-shirts, socks, shorts, scarves, underwear, sportswear, headgear of all kinds including caps’;
–        Class 28: ‘Games and toys, namely board games, card games, action type target games, and parlour games; beanbags; toy building blocks; holders for caps, and cap guns; mechanical action toys; kites; electric action figures with lights and sounds; collectible items namely action figures, plastic toy figurines in various sizes, toy finger rings, yo-yo’s, spin tops, plastic toys, toys incorporating magnets; plush toys and flying discs; glass ornaments and decorations for Christmas trees; costume masks; stuffed toy animals in various sizes; equipment sold as a unit for playing card games; game boards for trading card games; toy stamps with figures; toy and water pistols, guns, and cannons; dolls and baby dolls; balloons; bathtub toys; skateboards, ice skates, roller skates, and inline skates; surf boards and swim boards; balls, namely, footballs and handballs; electronic toys; jigsaw puzzles’;
–        Class 30: ‘Confectionery, namely sweets, drops, boiled sweets, lollipops of any kind, pastilles, wine gum, jellies, bubble gum, chewing gum, jelly beans, licorice, chocolate, marzipan, candy strips, liquid candy, candy gel, candy juice, marshmallows, candy foam, candy powder, biscuits, cakes, pastry’ ;
–        Class 41: ‘Education; providing of training; entertainment; sporting and cultural activities.’
4        The Community trade mark application was published in Community Trade Marks Bulletin No 34/2012 of 17 February 2012.
5        On 17 May 2012, the applicant, Monster Energy Company, filed a notice of opposition, under Article 41 of Regulation No 207/2009, against 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 marks:
–        the Community word mark MONSTER, registered on 19 April 2011 under number 9492158, covering goods in Classes 5, 29, 30, 32 and 33 and corresponding, for each of those classes, to the following descriptions:
–        Class 5: ‘Nutritional supplements in Class 5’;
–        Class 29: ‘Dairy-based beverages and milk-based beverages containing coffee in Class 29’;
–        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’ ;
–        Class 33: ‘Alcoholic energy drinks; alcoholic coffee-based beverages, alcoholic beverages (except beers) in Class 33’,
–        the Community word mark MONSTER ENERGY registered on 9 October 2008 under number 6368005, designating, inter alia, goods in Classes 16 and 25 and corresponding, for each of those classes, to the following description:
–        Class 16: ‘Paper, cardboard and goods made from these materials, not included in other classes; printed matter; book binding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks; stickers; sticker kits’;
–        Class 25: ‘Clothing, footwear, headgear; hats’.
–        the international figurative mark
registered on 28 June 2010 under number 1048069, designating goods in Classes 9, 16, 18 and 25 and corresponding, for each of those classes, to the following description:
–        Class 9: ‘Sports helmets’;
–        Class 16: ‘Stickers; sticker kits comprising stickers and decals; decals’;
–        Class 18: ‘All-purpose sports bags; all-purpose carrying bags; backpacks; duffle bags’;
–        Class 25: ‘Clothing, namely, t-shirts, hooded shirts and hooded sweatshirts, sweat shirts, jackets, pants, bandanas, sweat bands and gloves; headgear, namely, hats and beanies’.
7        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of Regulation No 207/2009.
8        On 23 April 2013, the Opposition Division partially upheld the opposition with respect to the goods and services in Classes 16, 25, 28 and 41, as covered by the application for registration.
9        On 24 June 2013, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision, in so far as it had not upheld the opposition, grounded on the provisions of Article 8(1)(b) of that regulation, to the registration of the sign applied for in respect of the goods in Class 30, as mentioned in paragraph 3 above.
10      By decision of 7 August 2014 (the ‘contested decision’), the Second Board of Appeal of OHIM, in essence, found that there was no similarity between, on the one hand, the goods in Class 30, as covered by the application for registration, and, on the other hand, the goods covered by the earlier mark registered under number 9492158 and falling within Classes 29 and 30, on which, inter alia, the opposition was based. Consequently, it confirmed the Opposition Division’s decision, in so far as the latter had not upheld the opposition to registration of the sign applied for in respect of the goods falling within Class 30, and dismissed the appeal brought by the applicant.
Forms of order sought by the parties
11      The applicant claims that the Court should:
–        annul the contested decision;
–        order OHIM to pay the costs.
12      OHIM contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
13      In support of its action the applicant relies on a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009. That plea is based, in essence, on the following two arguments. First, the contested decision is 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 the earlier mark registered under number 9492158 and falling within Classes 29 and 30. Second, that decision is also vitiated by an error in the global assessment of the likelihood of confusion, from the relevant public’s point of view, between the signs at issue.
14      OHIM disputes the merits of that single plea.
15      Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the sign applied for is not to be registered if, because of its identity with or similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the two signs, 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.
16      According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to that same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services in question, and taking account of all factors relevant to the case, in particular, the interdependence between the similarity of the signs and the similarity of the goods or services designated (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
17      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, 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. Those conditions are cumulative (see judgment of 22 January 2009 in Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, ECR, EU:T:2009:14, paragraph 42 and the case-law cited).
18      In the present case, it should be noted at the outset that the Board of Appeal, in paragraphs 19 and 20 of the contested decision, did not err in defining the relevant public as consisting of average consumers in the territory of the European Union, showing an average level of attention when purchasing goods in Class 30 covered by the sign applied for. Moreover, that definition is not contested by the applicant.
19      It is, first and foremost, appropriate to examine the two arguments on which the single plea raised by the applicant is grounded.
Error of assessment as to the comparison of the goods respectively covered by the signs at issue
20      In paragraph 25 of the contested decision, the Board of Appeal found that the goods in Class 30, as covered by the application for registration, and the goods covered by the earlier mark registered under number 9492158 and falling within Classes 29 and 30 were dissimilar.
21      The applicant disputes that finding and, to that end, submits that the goods respectively covered by the signs mentioned in paragraph 20 above serve the same purpose, are competing or complementary, are sold in the same premises, share the same distribution channels and are aimed at the same consumers.
22      According to settled case-law, in order for the similarity of the goods or services at issue to be assessed, all the relevant features of the relationship between those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as, for example, the distribution channels of the goods concerned (see judgment of 11 July 2007 in El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, ECR, EU:T:2007:219, paragraph 37 and the case-law cited).
23      In the present case, first, it should be noted that the goods covered by the application for registration and falling within Class 30 concern, in essence, confectionery, biscuits, cakes and pastries. By contrast, the goods covered by the earlier mark registered under number 9492158 and falling within Classes 29 and 30 concern milk-based or coffee-based beverages. The Board of Appeal was accordingly correct in holding, in paragraph 24 of the contested decision, that the goods covered by the signs mentioned in paragraph 20 above were different in nature.
24      This latter finding cannot be called into question by the applicant’s argument by which it claims that all of the goods in question belong to the sweet-snacks category, while acknowledging that those goods differ in nature. It must be stated that the applicant fails to show that the goods covered by the earlier mark registered under number 9492158 and falling within Classes 29 and 30, all of which are milk-based beverages, in the case of the goods in Class 29, or coffee-based beverages, in the case of the goods in Class 30, necessarily contain sugar. Sugar might be added to those beverages, but this would depend solely on the consumer’s taste. Accordingly, the applicant is wrong to claim that the goods covered by the earlier mark registered under number 9492158 and falling within Classes 29 and 30 belong to the sweet-snacks category.
25      Second, the applicant errs in claiming that the goods at issue 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. By contrast, the goods covered by the earlier mark registered under number 9492158 and falling within Classes 29 and 30 are, in principle, consumed to quench thirst or possibly to satisfy a need for either calcium, with regard to the goods in Class 29, or caffeine, with regard to the goods in Class 30. Consequently, the goods covered by the signs at issue do not serve the same purpose.
26      Third, the applicant is also wrong to claim that the goods covered by the signs at issue are in competition with each other. In this regard, it must be noted that, according to settled case-law, in order for goods to be regarded as being in competition, there must be an element of interchangeability between them (see judgment of 4 February 2013 in Hartmann v OHIM — Protecsom (DIGNITUDE), T‑504/11, EU:T:2013:57, paragraph 42 and the case-law cited).
27      In the present case, however, the goods covered by the mark applied for and falling within Class 30 and those covered by the earlier mark registered under number 9492158 and falling within Classes 29 and 30 are not interchangeable in so far as, as has been stated in paragraph 25 above, they have different respective purposes and therefore cannot be interchanged. In those circumstances, 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.
28      Fourth, the Court cannot uphold the applicant’s argument that the goods covered by the mark applied for and falling within Class 30 and those covered by the earlier mark registered under number 9492158 and falling within Classes 29 and 30 are complementary. It must be pointed out that, according to settled case-law, 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 (see judgment in DIGNITUDE, cited in paragraph 26 above, EU:T:2013:57, paragraph 44 and the case-law cited).
29      In the present case, however, it must be noted, first, that, although certain goods in Class 30 covered by the mark applied for, inter alia, biscuits, cakes and pastries, may be consumed together with those beverages covered by the earlier mark registered under number 9492158 and falling within Classes 29 and 30, their use as such is optional and is not absolutely indispensable for the consumption of those beverages. Second, with regard to confectionery, such as that covered by the mark applied for and falling within Class 30, its possible consumption by the relevant public as an accompaniment to those types of beverages covered by the earlier mark has in no way been demonstrated by the applicant. Consequently, there is no close link between the goods at issue, such that they would be complementary for the purposes of the case-law cited in paragraph 28 above.
30      Fifth, the Court cannot uphold the applicant’s argument that the similarity between the goods at issue results in particular from the fact that they are sold in the same commercial establishments, share the same distribution channels and are intended for the same consumers. In the first place, it must be stated that the evidence put forward by the applicant with regard to the identical nature of the distribution channels relates only to certain specific outlets (see, by analogy, judgment of 24 March 2010 in 2nine v OHIM — Pacific Sunwear of California (nollie), T‑364/08, EU:T:2010:115, paragraph 39). Next, it should be recalled that the fact that the goods may be sold in the same commercial establishments, such as coffee 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 (see, to that effect, judgment of 26 October 2011 in Intermark v OHIM — Natex International (NATY’S), T‑72/10, EU:T:2011:635, paragraph 37 and the case-law cited). Finally, in the light of the assessments carried out in paragraphs 23 to 29 above, it must be held that, even if the goods at issue are intended for the same consumers, the Board of Appeal acted correctly in concluding that those goods differed in nature and purpose and were neither complementary nor in competition.
31      It follows from the foregoing that the Board of Appeal acted correctly in concluding that the goods covered by the signs at issue were different. The applicant’s first argument must therefore be rejected as unfounded.
Error in the global assessment of the likelihood of confusion
32      The Board of Appeal took the view, in paragraphs 24 and 27 of the contested decision, that, since the goods covered respectively by the signs at issue were different, consumers would not consider those goods to have the same commercial origin, and it therefore upheld the decision of the Opposition Division, by which the latter had concluded that there was no likelihood of confusion.
33      The applicant submits that, in view, first, of the similarity between the goods covered by the signs at issue, as follows, in its opinion, from the analysis of the factors to be taken into account in a comparison of the goods and, second, of the similarity between the signs at issue, consumers will believe that those goods have the same commercial origin. The Board of Appeal, it contends, therefore erred in finding that there was no likelihood of confusion between the signs at issue.
34      In the present case, it is clear that the second argument put forward by the applicant in support of the single plea is based on the same considerations as those which it put forward in support of the first argument. As the Court found after considering the first argument, the applicant is wrong to rely on the contention that the goods belong to the same sweet-snacks product category, that they coincide with regard to their purpose, consumers, retail outlets and distribution channels and that they are competing or complementary and that, therefore, they are similar.
35      Consequently, in the light of the case-law cited in paragraphs 16 and 17 above, it must be held that one of the two cumulative conditions required for the purposes of applying Article 8(1)(b) of Regulation No 207/2009 is absent, namely, as the Court has concluded in paragraph 31 above, the existence, at the very least, of a similarity between the goods covered by the signs at issue. The Board of Appeal therefore acted correctly in law in upholding the decision of the Opposition Division, which had concluded that there was no likelihood of confusion between those signs.
36      That conclusion cannot be called into question by the applicant’s arguments contending that, in view of the images produced in the application, which are available on the websites of coffee chains and show drinks being served with goods covered by the mark applied for, consumers are likely to believe that the goods covered by the signs at issue have the same commercial origin. It should be noted, as OHIM contends, that the images produced by the applicant in the application were not submitted during the procedure before OHIM. Those documents, produced for the first time 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, judgment of 24 November 2005 in Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, ECR, EU:T:2005:420, paragraph 19 and the case-law cited).
37      In conclusion, the second argument must be rejected as being unfounded.
38      In view of the findings reached in paragraphs 31 and 37 above, since none of the arguments put forward by the applicant, under the single plea which it raises in support of the present action, is well founded, the Court must, for the same reason, reject that plea and, therefore, dismiss the action in its entirety.
Costs
39      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 form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Monster Energy Company to pay the costs.
Martins Ribeiro
Gervasoni
Madise
Delivered in open court in Luxembourg on 28 October 2015.
[Signatures]
* Language of the case: English.