Introduction
In a world where dupes and look-a-likes are the new “fakes”, the General Court rendered a decision on 23 October 2024, in Case No. T-59/24, which has significant implications for trademark disputes involving an earlier reputed trademark acting against look-a-like trade dress application reproducing weaker elements of the reputed mark. This decision highlights important aspects of Article 8(5) EUTMR and its application in specific legal contexts.
The case originated from an invalidity action brought before the EUIPO Cancellation Division by Monster Energy Co. represented by MSA IP, against BBF Company, represented by Mr. Atanas Kostov. The dispute involved Monster Energy’s prior EUTM versus BBF’s later mark registered for various non-alcoholic beverages in Class 32. The action was based on the likelihood of confusion and reputation. The Cancellation Division dismissed the application for invalidity in its entirety. On appeal, the Fourth Board of Appeal found in favor of Monster Energy on its Article 8(5) EUTMR reputation claim and did not need to rule on the issue of likelihood of confusion. BBF then appealed to the General Court on the grounds that the Board erred in finding similarity between the marks and that the prior mark possesses a high level of reputation in the EU.
Key Legal Issues
Although many of the Appellant’s arguments were deemed inadmissible, the General Court addressed several pivotal legal questions in its judgment, the reputation of the Monster Energy mark being the most significant one.
The Court considered the Appellant’s arguments that the reputation of the earlier mark had not been established by observing that the evidence submitted by Monster was listed in the Board’s decision; that the Board took note of the objective value of the invoices, marketing materials, and articles demonstrating the market share and publicity of Monster Energy in the EU; and that the Board found the evidence to unequivocally show 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.” Consequently, the Court rejected the Appellant’s claim that no evidence was presented showing that the prior mark is known in the EU in the field of energy drinks. These findings clarify what constitutes objective evidence for the purposes of establishing reputation.
Court’s Findings
In its judgment, the General Court ruled in favor of the EUIPO and Intervenor Monster Energy Co. The court’s findings included:
• Admissibility of Arguments: The Court determined that a number of the arguments raised on appeal lacked the clarity and coherence required by the Rules of Procedure and were therefore deemed inadmissible.
• Similarity of the Marks: The Court rejected the Appellant’s arguments on the similarity of the marks, finding that the common verbal element “ENERGY” was not negligible, and on account of that and the common use of colors, structure and word positioning, the Board correctly found a degree of similarity between the marks.
• Reputation of the Earlier Mark: Lastly, the judgment reaffirmed the Board’s findings on the objectivity of the evidence submitted and the establishment of reputation of the Monster Energy mark in the European Union.
Implications of the Judgment
While the findings of the General Court were limited by the scope of the appeal, the implications are nevertheless significant. This decision follows a line of precedential cases in which infringement of Article 8(5) hinged on weaker common elements. The decision thus ranks among a limited number of examples in highlighting unacceptable reproduction of various weaker elements of a reputed mark, which create an overall impression of similarity. Therefore, the decision serves as both a precedent for the protection of reputed marks and as a warning against mimicking their overall appearance even if the dominant elements differ.
Conclusion
The Fourth Board of Appeal was diligent in thoughtfully considering the issues raised on appeal in view of the case law. Further, the General Court’s judgment in Case No. T-59/24 marks a significant development in reputation claims before the EUIPO. The particular issues of similarity addressed in the decision have been rapidly evolving in recent years, and this case both affirms and clarifies those issues.
