Monster Mash

With Halloween around the corner, it is time to review a ‘monstrous’ decision of the German Patent Court involving the popular Monster Energy drink. 

 

Background

In 2017, FOKUS BILGISAYAR SANAYI VE TICARET LIMITED SIRKETI (‘Fokus’) designated Germany in its International Registration no. 1352854 for the following sign:

It covered ‘notebook computers, laptop computers, mouses, mouse pads, laptop carrying cases, sleeves for laptops, notebook computer carrying cases, cases adapted for notebook computers’ in Nice class 9.

The Monster Energy Company (‘MEC’) filed an opposition inter alia on the basis of EU trade mark no. 002784486 ‘MONSTER’, registered in class 32 for ‘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.’

MEC invoked a likelihood of confusion and detriment to its trade mark with a reputation for energy drinks.

The German Patent and Trade Mark Office upheld the opposition in part for ‘mouse pads, laptop carrying cases, sleeves for laptops, notebook computer carrying cases’. It found Fokus’ trade mark to take unfair advantage of the reputation of MEC’s trade mark for energy drinks.

Both parties appealed to the German Patent Court.

The German Patent Court’s decision

The German Patent Court upheld Fokus’ appeal and dismissed MEC’s appeal, thereby dismissing the opposition in its entirety (case 30 W (pat) 78/21).

No genuine use

The Court found that MEC had not, after a request by Fokus, established genuine use of its ‘MONSTER’ trade mark because the actual use in the following forms altered the distinctive character of the ‘MONSTER’ mark (Art. 18(1)(a) EUTMR):

The Court agreed with MEC that the addition of the word ‘ENERGY’ did not alter the distinctive character as it was merely descriptive and represented in a different and smaller font than the word ‘MONSTER’.

The judges found it convincing that the claw device, with which the term ‘MONSTER’ was always used, altered the distinctive character of the word mark. Consumers would perceive the word and device element as a single trade mark and not as two separate signs because their styles are aligned. Both elements convey a ghost train-like image, which MEC described as ‘edgy and aggressive’.

In the end, the judges did not take a final position on whether the claw device altered the distinctive character of the word mark ‘MONSTER’ because they found that the use of the graphic stylization and did.

Even though a word mark’s distinctive character is not altered if it is used in a standard typeface, the German Patent Court held that the font MEC used is not standard. It is striking and has a rune-like character. In particular, the element would not readily be perceived as the letter ‘O’. Also, the other letters have unusual proportions.

Due to the distinctive character of the font, the average consumer would not equate the word ‘MONSTER’ with   or .

No claims based on trade mark with reputation

Even assuming that MEC had established genuine use, the Court did not consider the conditions of a claim based on a trade mark with a reputation to be fulfilled.

1. The judges accepted a reputation of the ‘MONSTER’ mark but its degree was deemed to be low. MEC claimed a market share between 15 % and 17 % for energy drinks in Germany in the relevant period. However, the judges considered that the trade mark was registered for broad categories of goods. The Court had doubts whether energy drinks constituted a separate market segment or whether, in order to determine the scope of the reputation, the broader market for soft drinks or caffeinated soft drinks was decisive. The judges were of the opinion that a trademark owner may not claim a high market share for a narrow, arbitrarily defined market.

2. Accepting a low degree of reputation of the ‘MONSTER’ mark, the German Patent Court held that the relevant public would not establish a link with the contested trade mark.

a. The judges denied a visual similarity because of the stylisation of the contested trade mark. The phonetic and conceptual similarity was considered to be low because the contested sign would not readily be perceived as the word ‘MONSTER’. In particular, the letters ‘M’, ‘N’ and ‘T’ are not immediately identifiable. The sign might be understood as ‘iT(I)OSLER’ or ‘MO(?)SLER’.

b. The goods were considered to be different. Energy drinks had no connection with computers and their accessories. The fact that the market leader in the energy drinks sector, Red Bull, offered merchandising articles was not deemed sufficient to establish a connection between the goods. One may not infer the public’s perception from the conduct of a single company, even if it is the market leader.

MEC’s evidence on its licensing agreements in the gaming industry (inter alia PlayStation and Xbox controllers were branded with the ‘MONSTER ENERGY’ marks) and MEC’s dedicated gaming website were not taken into account because they post-dated the relevant filing date of the contested trade mark.

c. In the overall assessment, the judges deemed the goods to be too different and the signs not sufficiently similar for consumers to establish a link between the marks.

Comment

The decision is questionable on many levels, too many to discuss here. Nevertheless, a few lessons can be learned from this decision:

1. If a word mark is not used in a customary font, it should also be registered as a figurative mark.

2. If a word mark is combined with a logo, it is safer to register three trade marks: The word, the logo and the combination of both. Some trade mark offices are more generous than others in accepting that the combined use of a word and a device mark constitutes genuine use of the trade mark for the word, the logo and the combination of both.

If possible, the word and the logo mark should also be used separate from each other.

3. Some cases are better litigated before the civil courts and not before the trade mark offices and their appeal bodies. This case seems to be a good example. It appears more likely to me that a civil court would have agreed with the assessment of the examiner of the German Patent and Trademark Office. A (successful) lawsuit also has the advantage of obtaining an injunction against the owner of the later mark. MEC still has this option available. 

 

The first picture is by Nika Benedictova and used under the licensing terms of pexels.com.