Monster Energy Drinks have become increasingly popular over the last 3 years. Readers will likely recognise their branded energy drink cans with 3 green vertical slashes down the side. The slash symbol is registered as an EU Trade Mark, and Monster recently unsuccessfully attempted to use that mark to oppose an application by Mad Catz for a sign consisting of four horizontal slashes.
In the current case both marks covered goods in class 25 - being clothing, footwear and headgear - with Monster using the 3 slash sign on extreme sports apparel. Monster were originally unsuccessful at the Opposition Division and Board of Appeal and they have now also been unsuccessful in the General Court.
Monster claimed that the Appeal Board had wrongly assessed the similarities between the two marks and the overall impression created by the marks. This was on the basis that the Appeal Board had stated that the Mad Catz mark would be perceived as scratches whereas the Monster mark would be perceived as a claw. Monster did not agree with this finding and also denied there was a likelihood of confusion, and claimed that its mark enjoyed enhanced acquired distinctiveness through extensive use and reputation.
The General Court did not agree with Monsters arguments and concurred with the Appeal Board that there was no likelihood of confusion between the marks. Additionally, a distinction was drawn between Monster's use of its mark to promote drinks and that of clothing, that being that reputation generated by using the mark for drinks is not linked to using the mark in respect of clothing. In respect of the marks themselves, the General Court accepted that they were similar in some respects but said that they differed in many others, including shape, number and positioning.
An interesting point to take from this case is the example it provides that distinctiveness in one class will not necessarily support distinctiveness in another. Monster had claimed that their mark was distinctive but the General Court disagreed in relation to its use on clothing. The General Court noted that the mark was used on clothing primarily to promote Monster Energy Drinks, and though the mark may have enjoyed a reputation in relation to drinks this did not extend to class 25, being the only class in which Monster had claimed a reputation in these proceedings.
This is not the first time that Monster have sought unsuccessfully to oppose trade mark applications; we reported previously on an earlier unsuccessful opposition here.
If you have any queries concerning the issues raised in this case and how they may impact on your trade marks please do not hesitate to contact the team at McDaniel & Co. on 0191 281 4000 or by email to firstname.lastname@example.org: News, Trade Marks