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7 October 2015Trademarks

Monster Energy CTM opposition runs out of steam

Energy drinks maker Monster Energy has failed to reverse the Office for Harmonization in the Internal Market’s (OHIM) decision to reject its opposition to a Community trademark (CTM) application.

In a decision handed down yesterday, October 6, the European General Court ruled that OHIM had correctly rejected Monster Energy’s attempt to halt Luis Yus Balaguer’s application for a figurative mark including the term ‘Ice expresso + energy coffee’.

Balaguer sought protection for the mark covering vending machines, coffee and tea-based beverages, energy drinks and retail services in his 2011 application.

Monster Energy claimed the mark was too similar both conceptually and phonetically to its own CTMs and would cause a likelihood of confusion.

The drinks company opposed the application in 2012. In its opposition it cited three of its own CTMs, ‘X-Presso monster’, ‘Hammer M X-Presso monster espresso + energy’, and ‘Midnight M X-Presso monster espresso + energy’, as the basis for its likelihood of confusion claim.

OHIM’s Opposition Division rejected the opposition in March 2013 and the Second Board of Appeal upheld the decision in November 2013.

Monster Energy appealed against the decision to the court arguing that OHIM had erred in its analysis of the similarity of the marks, which led to an incorrect determination that there is no likelihood of confusion.

But the court was not convinced and said OHIM was correct to state that the visual and phonetic similarities between the marks were very low.

The court added that OHIM’s overall analysis was correct because the “word elements common to the signs at issue will not attract the attention of the relevant public and, therefore, to conclude that, even if the goods and services are identical, there was no likelihood of confusion”.

Roland Mallinson, partner at law firm Taylor Wessing, said the decision is unremarkable and that the court arrived at the correct conclusion.

But he questioned the appeals system that could allow Monster Energy to oppose the CTM again and add another year to the application process.

He said: "I question if this is a good use of senior judicial time. There is much to be said for a once-only CTM appeal system where the grounds are essentially that the junior tribunal got it wrong, with the option of (potentially multiple) appeals via an alternative track but which costs more and carries a material costs risk."

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