OPPOSITION No B 2 421 678

Monster Energy Company, 1 Monster Way, Corona, California 92879, United States of America (opponent), represented by Bird & Bird LLP, 12 New Fetter Lane, London London, City of EC4A 1JP, United Kingdom (professional representative)

a g a i n s t

Foodcare Spółka Z Ograniczoną Odpowiedzialnością, ul. Spokojna 4, 32-080 Zabierzów, Poland (applicant), represented by Kancelaria Patentowa Dr W. Tabor SP.J., Ul. Mazowiecka 28a/8-9, 30-019 Kraków, Poland (professional representative).

On 28/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 421 678 is upheld for all the contested goods.

2.        European Union trade mark application No 12 872 636 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 12 872 636 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 5 093 174 for the word mark ‘UNLEASH THE BEAST!’. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 5 093 174.

1. The goods

The goods on which the opposition is based are the following:

Class 32: Beverages.

The contested goods, after a finalised partial refusal, are the following:

Class 32: Mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; energy drinks; sherbets [beverages]; fruit drinks; waters [beverages]; non-alcoholic beverages; non-alcoholic beverages; isotonic drinks; part frozen slush drinks; beverages containing vitamins; sports drinks; iced fruit beverages.

The contested mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; energy drinks; sherbets [beverages]; fruit drinks; waters [beverages]; non-alcoholic beverages; non-alcoholic beverages; isotonic drinks; part frozen slush drinks; beverages containing vitamins; sports drinks; iced fruit beverages are included in the broad category of the opponent’s beverages. Therefore, they are identical.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical are directed at the public at large. The degree of attention is average or below the average since the goods that are concerned are relatively cheap and frequently purchased products, namely non-alcoholic beverages.  

3. The signs

UNLEASH THE BEAST!
Earlier trade mark	Contested sign

The relevant territory is the European Union. 

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The earlier mark is a word mark consisting in the expression ‘UNLEASH THE BEAST!’, whereas the contested sign is a figurative mark consisting of the words ‘BLACK BEAST’ written sideways in upper case white and grey letters and placed vertically in a black rectangular.

The two signs’ verbal elements, including the common element ‘BEAST’ in both of them, are meaningful to the English speakers. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public as it is more prone to confusion in the present case.

The common element ‘BEAST’ of the two signs, meaning ‘any animal other than man, esp. a large wild quadruped’ (Collins Dictionary Online, available on 22/08/2017), has no meaning for the relevant public in relation to the goods in question; since it is not descriptive or in any other way weak, this word is considered of a normal distinctiveness in relation to beverages.

Although the entire expression ‘UNLEASH THE (BEAST)!’ of the earlier mark will be understood by the relevant public as a slogan appealing to release a powerful force, feeling, activity or as, literally referred to, ‘to release the leash of the beast’, it is not per se descriptive, allusive or otherwise weak for the relevant goods; consequently, it is also considered distinctive as a whole.

As argued by one of the parties, it cannot be excluded that the element ‘BLACK’ of the contested sign may be associated with the consistence of some of the drinks that may be possibly coloured in black or in a darker colour, in particular non-alcoholic beverages; fruit beverages and fruit juices; energy drinks; sherbets [beverages]; fruit drinks; isotonic drinks; part frozen slush drinks; beverages containing vitamins; sports drinks; iced fruit beverages; consequently, this element may be seen as somewhat weak in relation to these goods and for some of the public. However, taking into consideration that the majority of the English public will most likely perceive the adjective ‘BLACK’ as a reference to the noun ‘BEAST’, the entire expression ‘BLACK BEAST’ will be of a normal distinctiveness as a whole, as it will be further presumed in the assessment of the signs.  

Furthermore, as regards the contested sign, it is also composed of a figurative element of a purely decorative nature, namely the black background. Therefore, the verbal elements are more distinctive than this decorative element.

None of the signs has an element that could be considered visually more dominant or eye-catching element.

Visually, the signs coincide in the word ‘BEAST’. However, they differ in the additional verbal elements, namely the expression ‘UNLEASH THE (…)!’ in the earlier mark and ‘BLACK’ in the contested sign, as well as in the different stylisation and decorative element of the contested sign. Therefore, to the extent that both signs contain the distinctive word ‘BEAST’, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‘BEAST’, present identically in both signs. The pronunciation differs in the remaining verbal elements, ‘UNLEASH THE (…)!’  of the earlier mark and ‘BLACK’ in the contested sign. Therefore, to the extent that both signs contain the same word, ‘BEAST’, albeit in their last parts, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For most of the public, the expressions ‘UNLEASH THE BEAST!’ and ‘BLACK BEAST’ will be perceived in their conceptual entirety, both associated with the concept of a ‘beast’, where in the first case, the focus lies on the beast that has to be released and in the second, on the description of the beast itself as black. Nevertheless, to the extent that both signs contain this common distinctive element, the signs are considered conceptually similar to a low degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods are found identical and the degree of attention of the relevant public will vary between low and average since the goods are everyday consumption products of a rather cheap character.

As concluded above, the signs are visually and aurally similar to an average degree and conceptually similar to a low degree, to the extent that they both contain the distinctive verbal part ‘BEAST’. Furthermore, the differentiating stylisation and position of the verbal elements in the contested sign, as well as its decorative background, are found to be of a less distinctive nature and the public will not pay as much attention to them as to the verbal elements they embellish. In addition, the earlier mark is a word mark and as such, it is protected for the combination of the verbal elements of which it consists; however, it is on the opponent to decide how to use the mark in a written or a stylised form of the composing elements, as long as it represents them.  

It has to be born in mind that two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (02/11/2003, T 286/02, Kiap Mou, EU:T:2003:311; 15/02/2005, T 169/02, Negra modelo, EU:T:2005:46; 16/03/2005, T 112/03, Flexi Air, EU:T:2005:102; 08/03/2005, T 32/03, Jello Schuhpark, EU:T:2005:82; 06/10/2004, T 356/02, Vitakraft, EU:T:2004:292; 23/10/2002, T 104/01, Fifties, EU:T:2002:262; 04/05/2005, T 22/04, Westlife, EU:T:2005:160), and this element that the marks have in common retains an independent distinctive role in a composite mark (06/10/2005, C 120/04, Thomson Life, EU:C:2005:594, § 30). As might be seen in the relevant case, the common word ‘BEAST’, although in a second position in both marks, will keep its independent role in the overall impression and will be perceived by the relevant public as an individual distinctive element regardless of the quite different conceptual nuances that the marks convey.  

The Opposition Division points out that, although the relevant public might not directly confuse the trade marks in question due to the abovementioned conceptual discrepancy, likelihood of confusion covers also situations where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). In the present case, it cannot be ruled out that some consumers may wrongly assume that the independent concept behind the word ‘BEAST’ is used for another line of products marketed under a similar ‘beast’-brand, most likely familiar to the public from a previous purchase, and vice versa.  

In addition, evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

Furthermore, the Court has stated that, when evaluating the importance attached to the degree of visual, aural and conceptual similarity between the signs, it is appropriate to take into account the category of goods or services in question and the way they are marketed (22/09/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 27). In the present case, the goods are identical and furthermore, they are frequently purchased and relatively cheap beverages that may be found on shelves in various retail spots and visually examined before being bought. In such cases, the visual impression of signs may count more in the assessment of likelihood of confusion. Consequently, the lower degree of attention of the relevant public, the identity of the products bearing the conflicting signs, as well as the manner in which they are merchandised may be sufficient to overcome the conceptual differences between the signs.

For the sake of completeness, it has to be noted that the opponent claimed to own a family of trade marks based on the word ‘BEAST’ and to be known for the use of these marks (‘PUMP UP THE BEAST!’, ‘REHAB THE BEAST!’, ‘UNLEASH THE ULTRA BEAST!’, etc.). The second claim has to be disregarded as explained in section d) of this decision.

As regards the claim of family of trade marks, the Courts have given clear indications on the two cumulative conditions that have to be satisfied (judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 123-127, confirmed by judgment of 13/09/2007, C-234/06 P, Bainbridge, EU:C:2007:514, § 63). Firstly, the proprietor of a series of earlier marks must submit proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’ (i.e. at least three). In the present case, apart from demonstrating a few packages bearing ‘BEAST’ signs, the opponent did not file any evidence in support of the use of its family of trade marks. Therefore, this claim has to be set aside.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 5 093 174. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right mentioned above leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Dorothée SCHLIEPHAKE

Manuela RUSEVA

Robert MULAC

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.