OPPOSITION No B 2 432 634

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

a g a i n s t

Sushi Monster, S.L., C/Gala Placidia 25, 08006 Barcelona, Spain (applicant), represented by AB Asesores, Balmes 180- 4º- 2ª, 08006 Barcelona, Spain (professional representative).

On 22/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 432 634 is partially upheld, namely for the following contested services:

Class 35:        Retailing via global networks of foodstuffs, in particular Japanese and oriental food.

Class 43:        Services for providing food and drink; take-away meals, in particular Japanese and oriental meals.

2.        European Union trade mark application No 13 104 849 is rejected for all the above services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 13 104 849 (word mark: MONSTER), namely against all the services in Classes 35, 39 and 43. The opposition is based on, inter alia, European Union trade mark registration No 2 784 486 (word mark: MONSTER). 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 2 784 486.

1. The goods and services

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

Class 32:        Fruit juice drinks, soft drinks, carbonated soft drinks, aerated water, soda water and seltzer water enhanced with vitamins, minerals nutrients, amino acids and/or herbs. 

The contested services are the following:

Class 35:         Retailing via global networks of foodstuffs, in particular Japanese and oriental food; Advertising; Business management; Business administration.

Class 39:         Storage, distribution and transport of all kinds of foodstuffs, in particular Japanese and oriental food.

Class 43:         Services for providing food and drink; Take-away meals, in particular Japanese and oriental meals.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘in particular’, used in the applicant list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Taking into account that foodstuff is ‘a particular substance suitable for consumption as food’, and food is ‘any nutritious substance that people or animals eat or drink in order to maintain life and growth; nourishment, provisions’ (from the Oxford English Dictionary at http://www.oed.com/, extracted on 18/09/2017) and as such (soft) drinks are used for nourishment and may thus be considered as falling into the  broader category of foodstuff it is held that  the contested retailing via global networks of foodstuffs, in particular Japanese and oriental food are similar to a low degree to the opponent’s soft drinks.

The contested advertising; business management; business administration are dissimilar to all the opponent’s goods. This is because the contested services are aimed at supporting or helping other businesses to do or improve their business, and are therefore in principle directed at the professional public, and as such they have different natures and purposes, different methods of use and publics to the goods of the earlier mark. Furthermore they are not complementary, nor are they in competition with the goods of the earlier mark.

Contested services in Class 39

Transport services and distribution services are not considered similar to goods in Class 32. Transport services refer, for example, to a fleet of lorries or ships used for moving goods from point A to point B. These services are provided by specialist transport companies whose business is not the manufacture and sale of the goods that are transported. The services differ from the goods in terms of their nature, purpose and method of use. They do not have the same distribution channels and are not in competition. The same is equally applicable for distribution services. Therefore, the contested transport, distribution of all kinds of foodstuffs, in particular Japanese and oriental food are dissimilar to the opponent’s goods, namely fruit juice drinks, soft drinks, carbonated soft drinks, aerated water, soda water and seltzer water enhanced with vitamins, minerals nutrients, amino acids and/or herbs.

Storage services refer to services whereby a company’s merchandise is packed and kept in a particular place for a fee. These services are not similar to the goods in Class 32. The nature, purpose and method of use of these services and goods are different. They do not have the same providers/producers or distribution channels and are not in competition. Therefore, the contested storage of all kinds of foodstuffs, in particular Japanese and oriental food are dissimilar to the opponent’s goods, namely fruit juice drinks, soft drinks, carbonated soft drinks, aerated water, soda water and seltzer water enhanced with vitamins, minerals nutrients, amino acids and/or herbs.

Contested services in Class 43

The contested services for providing food and drink are similar to a low degree to the opponent’s soft drinks. This is because drinks may be consumed at restaurants, but consumers, more than merely purchasing a drink, are asking to be served one. Although, their purpose and nature differs, they can coincide in producer and distribution channels. Furthermore, they are also complementary.

As take-away meal typically includes soft drinks along the food, the arguments above equally apply to the contested take-away meals, in particular Japanese and oriental meals. Therefore they are similar to a low degree to the opponent’s soft drinks.

2. The signs

MONSTER	MONSTER
Earlier trade mark	Contested sign

The signs are identical.

3. Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

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).

In the present case, the contested goods are similar to a low degree or dissimilar, and the signs are identical.

Given the identity of the signs, a low degree of similarity between the goods and services is sufficient to lead the consumers into thinking that the goods of the earlier mark and the contested services found to be similar thereto originate from the same undertaking or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 2 784 486.

It follows from the above that the contested trade mark must be rejected for the services found to be similar to a low degree to the goods of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

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

Furthermore, the opponent argued that its earlier trade mark forms part of a family of trade marks, all characterised by the presence of the same word component ‘MONSTER’. In fact, the concept of the family of marks was exhaustively analysed by the General Court in its judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65.

When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’ a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.

Firstly, the proprietor of a series of earlier registrations must furnish 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’.

Secondly, the trade mark applied for must not only be similar to the marks belonging to the series, but also display characteristics capable of associating it with the series.

In the present case, the opponent failed to prove that it uses a family of ‘MONSTER’ marks, and moreover that it uses such a family in the same fields as those covered by the contested trade mark.

However, even if the mark enjoyed enhanced distinctiveness and formed part of a family of marks, the dissimilarity of goods and services cannot be overcome by enhanced distinctiveness or family of marks under the invoked ground of Article 8(1)(b) EUTMR.

The opponent has also based its opposition on the following earlier European Union trade mark registration No 4 823 563 (word mark: MONSTER ENERGY).

Since this mark covers the same scope of goods in Class 32 as the other earlier right, and since the goods it covers in Class 5 (medicinal drinks and dietetic substances adapted for medical use) are dissimilar to the contested services (along a similar line of reasoning as in the comparison with the goods in Class 32 – because they have different natures and purposes, different methods of use and publics, they are not complementary, nor are they in competition) the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

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COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Denitza STOYANOVA-VALCHANOVA

Martin EBERL

Claudia MARTINI

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.