Nov 4, 2015

Protecting your Brand: Mo Monsters, Mo Problems

The General Court has rejected an opposition by energy drink brand, Monster, to an application to register "MO MO MONSTERS" as a Community Trade Mark ("CTM").

Monster is a well-established brand known for its energy drinks. It is not yet immediately clear what exactly MO MO MONSTERS are intended to be in the market. The CTM application does however provide for registration in class 30 which covers confectionary and sweets as well as various other classes covering toys, games and other goods.

The company applying for the CTM has already registered other CTM's for sweets, including the curiously described "FART AND BURP LOLLIPOP" – which, assuming it is not descriptive, suggests that the applicant's target market is children.

Monster opposed the CTM application by relying on its earlier MONSTER word mark and a claw or slash mark which also includes the word 'MONSTER'. It argued that the CTM application should be rejected on the basis that:

(1) MO MO MONSTER was identical or similar to the MONSTER marks;

(2) the goods were similar; and

(3) that there was a likelihood of there being confusion amongst the public consumers.

This would include the association of one brand to the other brand. Monster argued that the sweets serve the same purpose as drinks and thus are competing or complementary, are sold in the same premises, share the same distribution channels and are aimed at the same type of consumers meaning the use of the mark MO MO MONSTERS would highly be likely to cause confusion as to the origin of the goods.

Opposition Division and Board of Appeal Decisions

Monster was initially successful before the Opposition Division at OHIM. However, the Board of Appeal overturned that decision by finding that the goods in those classes which were applied for by the applicant company were unlike or dissimilar to those associated with the MONSTER marks, i.e. sweets and drinks are not similar goods and that as a consequence of this, would not cause confusion by use of the MO MO MONSTERS mark.

Decision of the General Court

Monster appealed this decision but the General Court upheld and agreed with the Board of Appeal's decision rejecting Monsters arguments about the overlapping sales and distribution channels, customers and ingredients.

The General Court considered that the goods in issue did not serve the same purpose therefore there would not be a likelihood of confusion. The General Court felt that sweets were consumed to "satiate hunger or to address the desire to eat sugary goods" whereas Monster's mark was registered in respect of goods that are consumed to "quench thirst or possibly satisfy a need for either calcium … or caffeine".

Outcome for Brand Owners

This decision may not be welcomed by brands that seek to keep the European trade mark registers clear of marks that are phonetically, visually or conceptually similar to their registered marks because the test for similarity of goods or services used by the Board of Appeal and General Court in this case seems difficult to satisfy.

Note should also be taken as Monster is not an insignificant brand. It has invested a great deal of time and money building its brand through various channels including sponsoring sporting and music events. Therefore it is perfectly acceptable that such a well-known brand would want to protect its image and attempt to prevent others using similar marks for arguably similar goods.

Should MO MO MONSTERS be successful in registering their CTM, which now looks likely, this will not preclude Monster from alleging that its trademark rights have been infringed by the former.

(Monster Energy Company v OHIM, T‑736/14, 28 October 2015)

in: Case Law, News, Trade Marks

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