BBF Company v EUIPO - Monster Energy (INSOMNIA ENERGY) (EU trade mark - Judgment) [2024] EUECJ T-59/24 (23 October 2024

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( EU trade mark - Invalidity proceedings - EU figurative mark INSOMNIA ENERGY - Earlier EU figurative mark MONSTER ENERGY - Relative grounds for invalidity - Damage to reputation - Taking unfair advantage of the distinctive character or repute of the earlier mark - Article 8(5) of Regulation (EC) No 207/2009 (now Article 8(5) of Regulation (EU) 2017/1001) )

BBF Company EOOD, established in Plovdiv (Bulgaria), represented by A. Kostov, lawyer, authorised to replace Shoqëria Tregtare BBF Company SHPK,

European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Monster Energy Co., established in Corona, California (United States), represented by L. Junquera Lara, lawyer,

composed, at the time of the deliberations, of R. Mastroianni, acting as President, T. Tóth (Rapporteur) and S.L. Kalėda, Judges,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

1 By its action under Article 263 TFEU, the applicant, BBF Company EOOD, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 7 December 2023 (Case R 258/2023-4) (‘the contested decision’).

2 On 10 December 2020, the intervener, Monster Energy Co., filed with EUIPO an application for a declaration of invalidity in respect of the EU trade mark registered following an application filed on 9 October 2016 for the following figurative sign:

3 The goods covered by the contested mark in respect of which a declaration of invalidity was sought were in Class 32 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 corresponded to the following description: ‘Flavoured carbonated beverages; waters; juices; aperitifs, non-alcoholic; non-alcoholic fruit punch; non-alcoholic punch; non-alcoholic cocktail bases; non-alcoholic malt drinks; non-alcoholic honey-based beverages; non-alcoholic malt free beverages [other than for medical use]; fruit-based soft drinks flavored with tea; non-alcoholic beverages flavoured with coffee; non-alcoholic soda beverages flavoured with tea; non-alcoholic beverages containing fruit juices; vitamin enriched sparkling water [beverages]; energy drinks; energy drinks [not for medical purposes]; energy drinks containing caffeine; non-carbonated soft drinks; non-alcoholic sparkling fruit juice drinks; non-alcoholic fruit cocktails; cider, non-alcoholic; sarsaparilla [non-alcoholic beverage]; sports drinks; protein-enriched sports beverages; sports drinks containing electrolytes; nutritionally fortified beverages.’

4 The application for a declaration of invalidity was based, inter alia, on the earlier EU figurative mark registered on 9 January 2013 and covering, inter alia, the goods ‘non-alcoholic beverages’ in Class 32, as reproduced below:

5 The grounds relied on in support of the application for a declaration of invalidity were those set out in Article 60(1)(a) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1), read in conjunction with Article 8(1)(b) and Article 8(5) of that regulation.

6 On 2 December 2022, the Cancellation Division dismissed the application for a declaration of invalidity in its entirety and ordered the intervener to pay the costs of the proceedings. It found, first, that there was no likelihood of confusion between the marks at issue and, secondly, that, given the extremely low degree of similarity between the signs at issue, the relevant public would not establish a link between them, despite the identity of some of the goods and the solid degree of reputation of the earlier mark.

7 On 1 February 2023, the intervener filed a notice of appeal with EUIPO against the decision of the Cancellation Division.

8 By the contested decision, the Board of Appeal upheld the appeal, annulled the decision of the Cancellation Division and declared the contested mark invalid in its entirety.

9 As regards the application for a declaration of invalidity based on the existence of a risk that the use without due cause of the contested mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark, the Board of Appeal first confirmed, in paragraph 53 of the contested decision, the Cancellation Division’s finding that the evidence submitted by the intervener pointed to a very strong reputation in the European Union of the earlier mark for non-alcoholic beverages, namely energy drinks in Class 32. Furthermore, after examining the distinctive and dominant elements of the signs at issue, the Board of Appeal essentially found that, in view of their similar structure and the presence of the common word element ‘energy’, they were visually similar to a certain degree. It added that, at least for the part of the relevant public that would pronounce and understand the word element ‘energy’, the marks at issue had a low degree of phonetic and conceptual similarity.

10 Next, the Board of Appeal, in essence, carried out an overall assessment of the relevant factors for the purposes of establishing the existence of a link between the marks at issue. It concluded that such a link existed, taking into account, first, the very strong reputation and enhanced distinctive character of the earlier mark for non-alcoholic beverages, namely energy drinks in Class 32; secondly, the identity of the public concerned and the at least high degree of similarity between the goods concerned and the goods for which reputation has been proved; and, thirdly, the visual similarities of the marks at issue. The Board of Appeal pointed out, in particular, that the very strong reputation of the earlier mark was capable of counterbalancing the low degree of similarity between the signs.

11 Lastly, the Board of Appeal found that, on account of the link between the marks at issue, the applicant had taken unfair advantage of the well-known character of the earlier mark for energy drinks, without the applicant having claimed any due cause for use of the contested mark.

12 Having found that the cumulative conditions necessary for the application of Article 8(5) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1) were satisfied, the Board of Appeal stated that there was no need to examine whether there was a likelihood of confusion within the meaning of Article 8(1)(b) of that regulation.

- dismiss the action as manifestly inadmissible in part and manifestly unfounded in part or, in the alternative, as unfounded;

- order the applicant to pay the costs in the event that an oral hearing is convened.

16 By letter of 23 February 2024, the applicant’s representative stated that the applicant was now the proprietor of the contested mark INSOMNIA ENERGY and that it wished to replace Shoqëria Tregtare BBF Company SHPK pursuant to Article 175 and Article 177(4) of the Rules of Procedure of the General Court.

17 Pursuant to Article 176(1) to (3) of the Rules of Procedure, once the parties have been notified of the application for replacement and had the opportunity to submit their observations, the decision on the application for replacement is to take the form of a reasoned order of the President or to be included in the decision closing the proceedings.

18 In accordance with Article 174 of the Rules of Procedure, where an intellectual property right affected by the proceedings has been transferred to a third party by a party to the proceedings before the Board of Appeal of EUIPO, the successor to that right may apply to replace the original party in the proceedings before the General Court. Article 176(5) of the Rules of Procedure specifies that, if the application for replacement is granted, the successor to the party who is replaced must accept the case as it finds it at the time of that replacement. It is bound by the procedural documents lodged by the party whom it replaces.

19 Furthermore, it is clear from Articles 20 and 27 of Regulation 2017/1001 that, after entry of the transfer of an EU trade mark in the EUIPO register, the successor may rely on the rights deriving from that mark.

20 In the present case, the representative for the applicant, the new holder of the rights linked to the contested mark, informed the Court of the transfer of the mark INSOMNIA ENERGY, and requested that the applicant be authorised to replace Shoqëria Tregtare BBF Company SHPK in the present proceedings. He produced proof that Shoqëria Tregtare BBF Company SHPK had, on 12 February 2024, assigned the contested mark to the applicant; he also produced the notification of entry in the EUIPO register, on 14 February 2024, of the transfer of the contested mark to the applicant.

21 In those circumstances, since the parties have been heard and have not opposed the application for replacement, the applicant should be authorised to replace Shoqëria Tregtare BBF Company SHPK in the present case.

22 In support of its action, the applicant puts forward, in essence, two pleas in law, alleging, first, infringement of Article 8(1)(b) of Regulation 2017/1001 and, secondly, infringement of Article 8(5) of that regulation.

23 In view of the date on which the application for registration at issue was filed, namely 9 October 2016, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, order of 5 October 2004, Alcon v OHIM, C-192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C-736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited).

24 Consequently, in the present case, as regards the substantive rules, the references to the provisions of Regulation 2017/1001 made by the Board of Appeal in the contested decision and by the parties in their written pleadings must be understood as referring to the identical provisions of Regulation No 207/2009.

25 It must first be recalled that, by virtue of the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union, applicable to proceedings before the General Court pursuant to the first paragraph of Article 53 of that statute, and of Article 177(1)(d) of the Rules of Procedure, an application must state, inter alia, the subject matter of the proceedings and a summary of the pleas in law on which the application is based. Those elements must be sufficiently clear and precise to enable the defendant to prepare its defence and the General Court to rule on the application, where necessary, without further information (see judgment of 21 April 2004, Concept v OHIM (ECA), T-127/02, EU:T:2004:110, paragraph 17 and the case-law cited). In order to guarantee legal certainty and sound administration of justice, it is necessary, for an action to be admissible, that the basic legal and factual particulars on which it is based be indicated, at least in summary form, coherently and intelligibly in the application itself (order of 8 July 2010, Strålfors v OHIM (ID SOLUTIONS), T-211/10, not published, EU:T:2010:301, paragraph 5).

26 Next, it is clear from the case-law that requirements similar to those set out in the preceding paragraph apply where a claim or an argument is relied on in support of a plea in law (judgments of 9 July 2010, Grain Millers v OHIM - Grain Millers (GRAIN MILLERS), T-430/08, not published, EU:T:2010:304, paragraph 38, and of 8 November 2017, Pempe v EUIPO - Marshall Amplification (THOMAS MARSHALL GARMENTS OF LEGENDS), T-271/16, not published, EU:T:2017:787, paragraph 86).

27 Lastly, according to the case-law, the applicant must specify the grounds on which the action is based. Therefore, a mere abstract statement of the grounds does not meet the requirements of the Rules of Procedure (see judgment of 12 December 2014, Comptoir d’Épicure v OHIM - A-Rosa Akademie (da rosa), T-405/13, not published, EU:T:2014:1072, paragraph 21 and the case-law cited).

28 It is in the light of the case-law referred to in paragraphs 25 to 27 above that the Court will examine, individually, the admissibility of the pleas and arguments put forward by the applicant.

The first plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009

29 The applicant submits, in essence, that the contested decision infringed Article 8(1)(b) of Regulation No 207/2009.

30 However, in that regard, it should be borne in mind that the legality of the Board of Appeal’s decision must be assessed solely on the basis of the factual and legal findings in the contested decision (judgment of 8 September 2021, Qx World v EUIPO - Mandelay (EDUCTOR), T-84/20, not published, EU:T:2021:555, paragraph 31).

31 Since the Board of Appeal did not examine in the contested decision the application for a declaration of invalidity based on Article 8(1)(b) of Regulation No 207/2009, that plea must be rejected as inadmissible.

The second plea, alleging infringement of Article 8(5) of Regulation No 207/2009

32 The applicant submits, in essence, that the Board of Appeal erred in finding that the cumulative conditions necessary for the application of Article 8(5) of Regulation No 207/2009 were satisfied.

34 Under Article 8(5) of Regulation No 207/2009, upon opposition by the proprietor of a registered earlier trade mark within the meaning of paragraph 2, the trade mark applied for is not to be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the European Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

35 As regards the risk referred to by Article 8(5) of Regulation No 207/2009, it must be pointed out that, although it is true that the primary function of a mark is that of an indication of origin, the fact remains that a mark also acts as a means of conveying other messages concerning, inter alia, the qualities or particular characteristics of the goods or services which it covers or the images and feelings which it conveys. To that effect, each mark has an inherent economic value which is independent of and separate from that of the goods and services for which it is registered. The messages which are conveyed inter alia by a mark with a reputation or which are associated with it confer on that mark a significant value which deserves protection, particularly because, in most cases, the reputation of a mark is the result of considerable effort and investment on the part of its proprietor. Consequently, Article 8(5) of Regulation No 207/2009 ensures that a mark with a reputation is protected with regard to any application for an identical or similar mark which might adversely affect its image, even if the goods or services covered by the mark applied for are not similar to those for which the earlier mark with a reputation has been registered (judgment of 22 March 2007, Sigla v OHIM - Elleni Holding (VIPS), T-215/03, EU:T:2007:93, paragraph 35).

36 It is apparent from the wording of Article 8(5) of Regulation No 207/2009 that the application of that provision is subject to the cumulative conditions that: first, the marks at issue must be identical or similar; secondly, the earlier mark cited in opposition must have a reputation; and, thirdly, there must be a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark (see judgment of 28 June 2018, EUIPO v Puma, C-564/16 P, EU:C:2018:509, paragraph 54 and the case-law cited).

37 It is in the light of those considerations that the arguments raised by the applicant must be examined.

38 As a preliminary point, it should be noted that Titles IV to VIII of the application contain the applicant’s arguments to show that the Board of Appeal infringed Article 8(5) of Regulation No 207/2009. The Court finds, however, that, for the most part, those arguments do not meet the minimum requirements in Article 177(1)(d) of the Rules of Procedure concerning the conditions for the admissibility of an action, on the ground that they are not sufficiently clear and coherent for the purposes of substantiating that infringement and of assessing whether the allegations are well founded.

39 The majority of the applicant’s comments are extremely vague, lack any explanation as to the alleged infringement of Article 8(5) of Regulation No 207/2009 relied on in the present case, and confuse the concepts applicable to Article 8(1)(b) of Regulation No 207/2009 with those applicable to Article 8(5) thereof.

40 In those circumstances, the Court finds that most of the arguments raised by the applicant in support of the infringement of Article 8(5) of Regulation No 207/2009 on which it relies must be rejected as manifestly inadmissible on the ground that they lack clarity and coherence and that, consequently, they do not meet the minimum requirements of Article 177(1)(d) of the Rules of Procedure.

41 As regards the applicant’s arguments that may be regarded as having been presented in a form that meets those minimum requirements, and which are limited to the similarity of the signs at issue and the reputation of the earlier mark, the following must be noted.

42 It should be recalled that, according to the case-law, in order to satisfy the condition that the signs at issue must be identical or similar, laid down by Article 8(5) of Regulation No 207/2009, it is not necessary to prove that there exists, on the part of the relevant section of the public, a likelihood of confusion between the earlier mark with an alleged reputation and the mark applied for. It is sufficient for the degree of similarity between those marks to have the effect that the relevant section of the public establishes a link between them (see, to that effect, judgment of 9 March 2012, Ella Valley Vineyards v OHIM - HFP (ELLA VALLEY VINEYARDS), T-32/10, EU:T:2012:118, paragraph 37).

43 In the present case, the applicant’s line of argument must be understood as seeking to demonstrate that the Board of Appeal erred in finding that there was a certain degree of similarity between the marks at issue. In essence, it claims that, since the dominant elements of the marks at issue are totally different, there is a difference between the signs at issue from a visual, phonetic and conceptual point of view. Therefore, as regards the overall impression of the marks at issue, the applicant criticises the Board of Appeal for having assessed it solely on the basis of the colour green that is common to the marks at issue.

45 From the outset, the argument that the Board of Appeal relied solely on the colour green in the overall impression of the marks at issue must be rejected as having no factual basis. Suffice it to state, in that regard, that it is clear from paragraphs 81 to 87 of the contested decision that, in order to find that the marks at issue had a certain degree of similarity, the Board of Appeal relied in particular on their general appearance, the similarity of which was reinforced through use of the same black, green and white colours, by their similar structure and by the same position of the word elements of each of those marks.

46 As regards the alleged difference between the marks at issue, the applicant’s argument can only be rejected, since it is based on the incorrect premiss that those marks are necessarily different if their dominant elements are different.

47 In that regard, it should be borne in mind that, according to settled case-law, it is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments of 12 June 2007, OHIM v Shaker, C-334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C-193/06 P, not published, EU:C:2007:539, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C-193/06 P, not published, EU:C:2007:539, paragraph 43).

48 In the present case, the Board of Appeal was right to find that the word element ‘energy’, present in each of the marks at issue, was not negligible. Although it has a weak distinctive character with regard to the goods at issue, that element will not go unnoticed on account of its size and colour. Similarly, the Board of Appeal did not make an error of assessment in finding that, despite the differences introduced by the distinctive and dominant elements of the marks at issue, the signs at issue were visually, phonetically and conceptually similar to a degree in view of the presence of the common word element ‘energy’, the use of the same colours (black, green and white), the highly similar structure of those marks and the same position of the word elements in each of the marks.

49 In essence, by its arguments submitted in a form meeting the aforementioned minimum requirements for the admissibility of an action, the applicant claims, first, that there is no evidence that the earlier mark is known in the European Union in the field of energy drinks and, secondly, that ‘objective, sociological data, trademark assessment, data on acquired market share, market realisation are missing to justify, and even claim such a thing’.

50 Furthermore, the applicant claims that the contested decision is vitiated by an error of law in that the Board of Appeal rejected its request for proof of use of the earlier mark on the ground that that request had not been made by a separate document.

52 As a preliminary point, it should be noted, first, that all the evidence submitted by the intervener in order to demonstrate the reputation of the earlier mark is listed in paragraph 45 of the contested decision. Secondly, as the Board of Appeal pointed out in paragraph 50 of the contested decision, it appears that that evidence contains objective information, such as invoices that confirm the market shares presented by the intervener, screenshots from websites, articles and reports on media coverage, including its broad promotional activities at miscellaneous global sports events. Furthermore, it is apparent from that evidence that the global marketing campaigns portray the image of the earlier mark worldwide and that drinks bearing the earlier mark are sold in every Member State of the European Union, in numerous retail stores and outlets. Thirdly, it is clear from paragraphs 47 and 53 of the contested decision that the Board of Appeal considered that the evidence adduced showed unequivocally that the earlier mark ‘enjoyed a solid degree of recognition among the relevant public as of the filing date of the contested mark and also of the filing of the invalidity application’ and that, consequently, there was ‘no reason to divert from the findings of the Cancellation Division on the reputation of the earlier mark … for energy drinks’.

53 In those circumstances, it is necessary to reject the claim, which is neither substantiated nor demonstrated, that, in essence, there is no evidence to show that the earlier mark is known in the European Union in the field of energy drinks. In its written pleadings, and as EUIPO and the intervener point out, the applicant does not develop any specific argument in that regard and does not identify the reasons why the evidence produced lacks objectivity and why the Board of Appeal’s assessment is incorrect.

54 Furthermore, it is necessary to reject the applicant’s argument that the Board of Appeal erred in law in rejecting its request for proof of use of the earlier mark on the ground that that request had not been made by means of a separate document.

55 It must be borne in mind that the Board of Appeal can examine the issue of genuine use of the earlier mark only if a party raises it specifically before it and that when the issue of genuine use of the earlier mark is not specifically raised before the Board of Appeal, it must be considered as not being part of the subject matter of the proceedings before the Board of Appeal (see judgment of 6 June 2018, Glaxo Group v EUIPO - Celon Pharma (SALMEX), T-803/16, not published, EU:T:2018:330, paragraph 27 and the case-law cited). In the present case, suffice it to note that the applicant did not raise that issue before the Board of Appeal.

56 In the light of all the foregoing considerations, it must be held that the applicant has failed to demonstrate that the Board of Appeal had made an error of assessment as regards the similarity of the signs at issue and the reputation of the earlier mark. Furthermore, it must be pointed out that, in its written pleadings, the applicant does not develop any specific arguments seeking to dispute the Board of Appeal’s assessment relating to the existence of a risk that the use without due cause of the contested mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark.

57 The second plea must therefore be rejected and, consequently, the action dismissed in its entirety.

58 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

59 Since EUIPO has claimed that the applicant should be ordered to pay the costs only in the event that a hearing is held, the parties must be ordered each to bear their own costs.

1. Authorises BBF Company EOOD to replace Shoqëria Tregtare BBF Company SHPK as applicant;

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> BBF Company v EUIPO - Monster Energy (INSOMNIA ENERGY) (EU trade mark - Judgment) [2024] EUECJ T-59/24 (23 October 2024 URL: http://www.bailii.org/eu/cases/EUECJ/2024/T5924.html Cite as: [2024] EUECJ T-59/24, ECLI:EU:T:2024:714, EU:T:2024:714

Court of Justice of the European Communities (including Court of First Instance Decisions)