CANCELLATION No 12 731 C (INVALIDITY)
Monster Energy Company, 1 Monster Way, 92879 Corona, United States of America (applicant), represented by Bird & Bird LLP, 12 New Fetter Lane, EC4A 1JP London, United Kingdom (professional representative)
a g a i n s t
Varese Sport Events S.r.l., Viale Achille Papa, 30, 20149 Milan, Italy (EUTM proprietor), represented by Barzano’ Zanardo Milano S.p.A., Via Borgonuovo, 10, 20121 Milan, Italy (professional representative).
On 25/01/2017, the Cancellation Division takes the following
1. The application for a declaration of invalidity is rejected in its entirety.
2. The applicant bears the costs, fixed at EUR 450.
The applicant filed an application for a declaration of invalidity against all the goods and services of European Union trade mark No 9 840 497. The application is based on the following earlier trade marks:
- European Union trade mark registration No 3 531 639,
- European Union trade mark registration No 6 433 817,
- European Union trade mark registration No 9 491 093,
- United Kingdom trade mark registration No 2 439 068,
- United Kingdom trade mark registration No 2 481 659.
The applicant invoked Article 53(1)(a) EUTMR in connection with Article 8(1)(b) and 8(5) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant argues that the contested trade mark consists of three vertical ‘slashes’, which are superimposed with three further diagonal ‘slashes’. They give the impression of a stroke made by three claws. The overall impression of the contested mark is dominated by the red diagonal three-claw ‘slash’. The vertical ‘slash’ is less prominent due to its smaller size and grey colouring. The earlier trade marks also contain three ‘slashes’ which are arranged to resemble a three-claw device. Consequently, the marks are visually similar. Furthermore, the marks are similar from a conceptual perspective because consumers would perceive both marks to represent ‘slash’ marks caused by a claw, symbolizing energy and aggression. Therefore, the marks are highly similar. As regards the goods and services, they are partially identical and partially similar. Moreover, the earlier trade marks are reputed, namely for energy drinks. Consequently, there is a likelihood of confusion. Furthermore, the applicant owns a family of claw device trade marks and there would also be a likelihood of confusion between the contested EUTM and the applicant’s family of marks.
Under Article 8(5) EUTMR, the applicant argues that the earlier trade marks enjoy an extensive reputation for energy drinks, that there is a link between the contested mark and the earlier marks and that the use of the contested mark would take unfair advantage of, or be detrimental to, the distinctiveness or repute of the earlier trade marks.
In support of its observations, the applicant filed the following evidence:
- Annex 1: list of the applicant’s trade marks claimed to form a family of trade marks.
- Witness Statement of Mr Rodney Cyril Sacks, the Chairman and Chief Executive Office of the applicant’s company, dated 23/02/2016, concerning the use and reputation of the applicant’s trade marks. It is accompanied by Exhibits RCS-1 to RCS-87.
The EUTM proprietor did not submit any arguments in reply.
LIKELIHOOD OF CONFUSION — ARTICLE 53(1)(a) EUTMR IN CONNECTION WITH 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 application is based on five earlier trade marks. However, all these trade marks protect the same figurative sign. Consequently, the following reasoning applies to all the earlier trade marks and for the sake of simplicity, the Cancellation Division will refer to all the earlier marks as ‘the earlier trade mark’ in the singular.
- The signs
Earlier trade mark
Contested trade mark
The relevant territory is the European Union.
The earlier trade mark is depicted in black and white and consists of three irregular parallel vertical lines with thick slightly horizontally-shaped tops touching each other. The contested trade mark consists of three diagonal lines in various shades of red and three vertical lines in various shades of grey.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, bearing in mind their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The earlier trade mark has no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.
The same applies to the contested trade mark. The Cancellation Division cannot agree with the applicant’s argument that the three red diagonal lines are dominant. They are not eye-catching within the contested mark but rather more or less visually equivalent to the vertical grey lines in terms of size and appearance. Moreover, the two sets of three lines form a whole resembling an irregular grid and the three red diagonal lines do not particularly stand out visually from that grid.
Visually, the earlier trade mark consists of three irregular parallel vertical lines with thick slightly horizontally-shaped tops touching each other. This figurative element might resemble a highly stylised letter ‘m’ for a part of the public. The contested sign consists of three red irregular parallel diagonal lines superimposing three grey irregular parallel vertical lines. The two sets or lines essentially cross each other (with the exception of one red line in the lower part of the mark). The whole sign has a grid-like appearance. The lines are stylised in a different manner in each mark. In the case of the earlier trade mark, the lines are more irregular (crooked) whereas in the case of the contested mark, they are straighter.
Although it can be said that both marks contain three parallel lines, the configuration and stylization of these lines is clearly different. Moreover, the contested mark contains two sets of three parallel lines crossing each other which have a substantial impact on the appearance of the mark.
As the signs do not visually coincide in any element, it is concluded that the signs are not visually similar.
For the above reasons the applicant’s arguments on the visual similarity of marks must be set aside.
Aurally, the marks will be primarily perceived as abstract figurative elements. A part of the public might however perceive the earlier trade mark as a highly stylised letter ‘m’.
Purely figurative marks are not subject to an aural assessment. As both marks (or at least the contested one) are purely figurative, it is not possible to compare them aurally.
Conceptually, in principle neither of the signs has a meaning for the public in the relevant territory because they will be perceived as abstract figurative elements. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs in such a case.
Nevertheless, a part of the public might perceive the concept of the single letter ‘m’ in the earlier trade mark. On the other hand the contested mark lacks any meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for this part of the public.
The applicant asserts that the marks are conceptually similar because consumers would perceive both marks to represent ‘slash’ marks caused by a claw, symbolizing energy and aggression.
The Cancellation Division considers that such a concept does not clearly transpire from either mark. The public will not thoroughly analyse the marks to search for any possible meanings or connotations. In the present case, consumers will perceive the marks as abstract figurative elements, or at most, in the case of the earlier mark, as a stylised letter ‘m’. Consequently, there is no conceptual similarity between the marks as claimed by the applicant.
As the signs do not coincide in any element, they are dissimilar.
According to Article 8(1)(b) EUTMR, the identity or similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the application based on this ground must be rejected.
REPUTATION — ARTICLE 53(1)(a) EUTMR IN CONNECTION WITH ARTICLE 8(5) EUTMR
The identity or similarity of the signs is also a condition for the application of Article 8(5) EUTMR. Since the signs are dissimilar, one of the necessary conditions of Article 8(5) EUTMR is not fulfilled, and the application based on this ground must be rejected.
Since the application fails on all counts, it must be rejected in its entirety.
According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(iv) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.
The Cancellation Division
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 Cancellation 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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.