Monster ‘scratching’ around for evidence of enhanced distinctiveness


This article was first published on Lexis®PSL IP & IT, July 2016
IP & IT analysis: Daniel Byrne and Andrew Butcher on Monster Energy Company v European Union Intellectual Property Office (EUIPO)
What was this case about?
In November 2012, MCI applied to register a device resembling four white, parallel scratch marks on a black background as an EU trade mark:

The application covered, inter alia, clothing, footwear and headgear in Class 25.
EU Trade Mark Regulation No. 207/2009
Monster opposed the application in respect of all the Class 25 goods covered, on the basis of four earlier EU trade mark registrations which covered goods in Class 25. All four marks contained or comprised a device consisting of three vertical, rough-edged black lines on a white background. The grounds relied upon in Monster’s opposition were articles 8(1)(b) and 8(5) of EU Trade Mark Regulation (EU) 207/2009 (CTM Regulation) and were dismissed by the Opposition Division and by the EUIPO’s Fifth Board of Appeal.
In the appeal to the General Court, Monster focused its arguments on its simplest figurative mark (ie without words or other elements) No 6433817:

In respect of CTM Regulation, art 8(1)(b) (identical/similar marks and identical/similar goods, leading to a likelihood of confusion), Monster argued that the Board of Appeal’s assessment of the similarity of the relevant marks was incorrect and, in particular, that the Board of Appeal failed to take into account the enhanced distinctiveness acquired by Monster’s earlier mark via extensive use in relation to energy drinks and extreme sports clothing. Monster also sought to argue that there was similarity between the signs on the basis that the opposed mark might resemble scratches while Monster’s mark might resemble claws and that the Board of Appeal was wrong to hold that they had low visual and conceptual similarity.
In respect of CTM Regulation, art 8(5) (identical/similar marks where the later mark takes unfair advantage of the reputation of the earlier mark), Monster argued that the Board of Appeal had failed to recognise the reputation enjoyed by its earlier mark as shown by the evidence that Monster had submitted.
What did the court decide?
In respect of the likelihood of confusion between the relevant marks under CTM Regulation, art 8(1)(b), the parties did not dispute the Board of Appeal’s conclusion that the relevant goods were either identical (clothing and headgear is covered by both specifications) or similar (clothing and headgear versus footwear).
In respect of the visual similarity of the marks, the court upheld the Board of Appeal’s finding of a very low degree of visual similarity. The court agreed with the Board of Appeal’s assessment that MCI’s mark could be perceived as scratches or white brush strokes or a purely abstract device, while Monster’s earlier mark could be perceived as fingers or claws or a very abstract depiction to which no specific and clear meaning can be attributed. Therefore, Monster’s argument that the only visual perception likely to be retained by the relevant public (not disputed to be the average consumer in this case) was scratches in the case of MCI’s mark and claws as regards Monster’s earlier mark, was rejected.
As regards the conceptual similarity of the marks, Monster argued that the marks are both liable to convey ‘the message of something aggressive and that something is being ripped open’. However, the court held that the perception of MCI’s mark as scratches was not the most obvious perception, and that the relevant public were more likely to perceive MCI’s mark as white brush strokes on a black square, due, in particular, to the white spots which surround the four parallel white lines.
For the purposes of the global assessment of likelihood of confusion it was necessary to consider the level of distinctiveness of Monster’s earlier mark, as marks with a highly distinctive character (either per se or because of the public’s recognition of them) enjoy broader protection. Monster argued that, in spite of evidence submitted relating to its mark’s extensive use in relation to energy drinks and extreme sports clothing, the Board of Appeal wrongly concluded that Monster’s earlier mark did not enjoy an enhanced distinctive character in respect of all the goods at issue. However, the court rejected this argument and upheld the Board of Appeal’s finding that the evidence submitted did not demonstrate enhanced distinctiveness in relation to the Class 25 goods at issue. The court held that the evidence submitted showed that Monster operates in the energy drinks sector and that it is essentially for the purposes of sponsorship and promotion of its energy drinks that its marks are used on clothing and headgear.
In relation to CTM Regulation, art 8(5), Monster had argued that the Board of Appeal was wrong to conclude that the evidence submitted failed to show that its earlier mark enjoys a reputation in the EU. However, the court held that, just as the evidence failed to demonstrate enhanced distinctiveness in relation to the Class 25 goods at issue, it also failed to demonstrate reputation in respect of Class 25 goods. Given that Monster had only claimed that its earlier mark enjoyed a reputation for Class 25 goods, reputation in respect of any other goods that might be demonstrated by the submitted evidence was irrelevant.
What should IP & IT lawyers take note of?
This decision serves as a useful reminder that evidence to be submitted in opposition proceedings must be considered carefully to ensure it fulfils its intended purpose.
In this case, the evidence in respect of enhanced distinctiveness of the mark in relation to the relevant goods was simply not good enough (it mostly related to energy drinks and promotion of the same even when used on clothing and headgear). The General Court held the Board of Appeal to be correct in its statement 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 it was not possible to establish the market share.
Given that enhanced distinctiveness could not be found in relation to the mark when used in relation to the relevant goods (clothing and headgear), it should come as no surprise that reputation could also not be found in relation to the mark when used in relation to those goods. However, that should not have been the end of the story because CTM Regulation, art 8(5) provides a mark with repute may be invoked against a conflicting mark even where the goods are not similar. It seems likely that Monster’s mark would have been held to have a reputation for drinks, not least because the General Court records the Board of Appeal as saying that ‘the fact that the earlier mark enjoyed a reputation for drinks…’—although this was in the context of it having no relevance in respect of CTM Regulation, art 8(1)(b). However, it appears that Monster failed to claim a reputation in respect of drinks and the General Court, as a result, recorded that ‘reputation was claimed…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’.
This case highlights the importance of ensuring that evidence submitted supports the pleaded case, but also ensuring that the pleaded case is as full and as strong as it can be in light of the evidence available. In particular, for those trade mark owners whose marks are used in a variety of contexts it will be important to consider carefully how best to support the core goods/services offered under the mark in order to be in the best position to be able to exert the trade mark rights to their fullest possible extent (including in relation to goods/services which are, in effect, ancillary).
Also of interest in this case is a point dealt with in passing by the General Court which relates to the descriptions which may accompany trade mark applications or registrations. In fact, in this case MCI had stated in the description of the opposed mark that its mark was ‘four jagged scratch marks’, but this was confirmed to be entirely irrelevant when it comes to questions concerning the perception by the relevant public. The General Court explained that the description only provides information on the perception of the mark by the person applying for the mark, but not at all on the perception of the mark by the relevant public. This is conceptually consistent with the idea that the relevant public will perceive the mark alone and not in conjunction with the description.

Andrew Butcher

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