Monster Energy v EUIPO - Bosel (MONSTER DIP) (EU trade mark - Judgment) [2018] EUECJ T-274/17 (13 December 2018)

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(EU trade mark — Opposition proceedings — Application for EU figurative mark MONSTER DIP — Earlier EU word and figurative marks and unregistered sign used in the course of trade, all including the word element ‘monster’ — Relative grounds for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) — No likelihood of misleading association — Article 8(4) of Regulation No 207/2009 (now Article 8(4) of Regulation 2017/1001) — No likelihood of dilution of the reputation of the earlier mark — Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001))

Monster Energy Company, established in Corona, California (United States), represented by P. Brownlow, Solicitor,

European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 13 December 2016 (Case R 1062/2016-2), relating to opposition proceedings between Monster Energy Company and Marco Bösel,

composed of S. Gervasoni, President, L. Madise (Rapporteur) and R. da Silva Passos, Judges,

having regard to the response of EUIPO lodged at the Court Registry on 5 July 2017,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

1 On 28 July 2014, Mr Marco Bösel filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

3 The goods and services for which registration was sought fall within Classes 2, 37 and 40 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, in relation to each of those classes, to the following description:

– Class 2: ‘Resurfacing materials [coatings] in the nature of paints; Shellac; Preparations for coating surface to protect against corrosion; Gum resins; Rubber paints; Raw natural resins; Colours; Dyes, colorants, pigments and inks; Coatings; Thinners and thickeners for coatings, dyes and inks; Paints and washes; Preservatives; Lacquers and varnishes; Coatings in the nature of sprays [paints]’;

– Class 37: ‘Painting of vehicles; Painting, interior and exterior; Varnishing; Coating [painting] services’;

– Class 40: ‘Customised manufacture and production of coating preparations’.

4 The trade mark application was published in European Union Trade Marks Bulletin No 154 of 20 August 2014.

5 On 13 November 2014, the applicant, Monster Energy Company, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001), to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.

– the EU word mark MONSTER ENERGY, filed on 18 March 2014 and registered on 13 August 2014 under number 12 705 711, covering services in Class 35 corresponding to the following description: ‘Promoting goods and services in the sports, motorsports, electronic sports, and music industries through the distribution of printed, audio and visual promotional materials; promoting sports and music events and competitions for others’;

– the EU figurative mark reproduced below, filed on 31 August 2012 and registered on 9 January 2013 under the number 11 154 739 (‘the earlier EU figurative mark’), covering goods in Classes 5, 16, 25, 30 and 32 and corresponding, for each of those classes, to the following description:

– Class 16: ‘Printed matter and publications; posters; stickers and decals; transfers; cards; stationery; signboards’;

– Class 30: ‘Ready to drink tea, iced tea and tea based beverages; ready to drink flavoured tea, iced tea and tea based beverages; ready to drink coffee, iced coffee and coffee based beverages; ready to drink flavoured coffee, iced coffee and coffee based beverages’;

– the EU figurative mark reproduced below, filed on 10 May 2010 and registered on 27 December 2010 under No 9091001, covering goods in Classes 5 and 32 and corresponding, for each of those classes, to the following description:

– EU word mark MONSTER ENERGY, filed on 19 March 2013 and registered on 24 October 2013 under No 11669744, covering goods in Classes 9, 14, 24, 26 and 28 and corresponding, for each of those classes, to the following description:

– Class 9: ‘Protective covers and cases for cell phones, laptops, tablets, portable media players and other electronic devices, namely, mobile phones, smartphones, media players, music players, computers, and portable electronic devices; earphones and headphones; protective ear coverings, namely helmets; eye glasses, eye glass cases, sunglasses, sunglass cases’;

– Class 14: ‘Wrist bands, bracelets, cufflinks, tie clips, jewellery, body jewellery, watches, clocks, jewellery boxes and cases; watch clasps’;

– Class 24: ‘Towels, bath towels, hand towels, hooded towels, and terry towels’;

– Class 26: ‘Belt buckles of precious metals for clothing; belt buckles not of precious metal for clothing; belt clasps; clasps for clothing; ornamental novelty pins; zipper pulls; charms for attachment to zipper pulls and buttons; charms for shoes’;

– Class 28: ‘Protective covers and cases for other electronic devices, namely hand-held video game systems’;

– EU word mark MONSTER, filed on 1 June 2010 and registered on 12 November 2010 under No 9144536, covering goods in Classes 7, 8, 11 and 21 and corresponding, for each of those classes, to the following description:

– Class 7: ‘Machines and machine tools, in particular electrical machines, electro-mechanical machines, apparatuses for production, preparation, further processing and treatment of foodstuffs; apparatuses for preparation of carbonated beverages, electro-mechanical apparatuses for preparation of beverages’;

– Class 8: ‘Hand tools and implements (hand-operated); cutlery, forks and spoons; all aforementioned goods exclusively for production, preparation, further processing and treatment of foodstuffs and beverages’;

– Class 11: ‘Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply, in particular ice machines and ice apparatus, ice chests, refrigerators, freezers and top-opening freezers, cooling apparatus for beverages, electrical apparatus for preparing yoghurt, boiling apparatus, cooking apparatus and installations, cookers, electrical cookers, electric cooking utensils, boilers, cooling installations for liquids, cooling installations and machines, cooling appliances and installations, refrigerated containers, cold storage room, fridges, cooling cabinets, apparatus for dehydrating foodstuffs, pasteurisers, toasters, water heaters, water purification installations, water purifying apparatus and machines, water tabs’;

– Class 21: ‘Household or kitchen apparatus and containers, not in precious metal or coated therewith, all aforementioned goods exclusively for production, preparation, further processing and treatment of foodstuffs and beverages’;

– the unregistered United Kingdom mark MONSTER ENERGY, designating goods corresponding to the following description: ‘Drinks, sponsorship of events, in particular sporting events’.

7 The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001) and Article 8(4) and (5) of Regulation No 207/2009 (now Article 8(4) and (5) respectively of Regulation 2017/1001).

8 On 19 April 2016, the Opposition Division rejected the opposition in its entirety for all the goods and services listed in paragraph 3 above.

9 On 10 June 2016, the applicant filed a notice of appeal with EUIPO, under Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.

10 By decision of 10 February 2017 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. In the first place, in paragraphs 15 to 58 of the contested decision, the Board of Appeal analysed the ground for opposition to registration of the mark applied for, based on Article 8(1)(b) of Regulation No 207/2009. In that respect, firstly, in paragraph 16 of the contested decision, it stated that, since the opposition was based on earlier EU marks, the relevant territory for the assessment of the likelihood of confusion was the European Union. Secondly, in paragraphs 19 and 20 of the contested decision, it found that the goods and services at issue were directed at both the general public and professionals and that, since the level of attention varied from average for the general public to high for professionals, it was appropriate to take into account, in accordance with the case-law, the group showing the lower level of attention. Thirdly, as is apparent from paragraphs 23 to 48 of the contested decision, the Board of Appeal compared the goods and services covered by the signs at issue and concluded that they were all different. Consequently, it rejected the opposition based on Article 8(1)(b) of Regulation No 207/2009 on the ground that the condition relating to the existence of a similarity between the goods and services covered by the signs at issue was not satisfied in this case.

11 In the second place, in paragraphs 52 to 110 of the contested decision, the Board of Appeal examined the ground for opposition based on Article 8(5) of Regulation No 207/2009. In that respect, firstly, in paragraphs 52 to 59 of the contested decision, it stated that the applicant’s only mark for which proof of reputation had been established was the earlier EU figurative mark MONSTER ENERGY and that, therefore, in its analysis, it would take into account only that earlier mark. Secondly after identification of the distinctive and dominant elements of the mark applied for and the earlier EU figurative mark MONSTER ENERGY and having compared the marks at issue visually, phonetically and conceptually, the Board of Appeal concluded, in paragraph 87 of the contested decision, that they were similar to a certain extent. Thirdly, as is apparent from paragraphs 90 to 110 of the contested decision, it found that the relevant public would not establish a link between those marks. In consequence, it rejected the opposition based on Article 8(5) of Regulation No 207/2009.

12 In the third place, in paragraph 111 of the contested decision, the Board of Appeal found that, in so far as all the goods and services covered by the signs at issue were different and the relevant public would not establish a link between the earlier EU figurative mark MONSTER ENERGY and the mark applied for, there was no need to examine the ground for opposition based on Article 8(4) of Regulation No 207/2009, since the rejection of the opposition would be unaffected. It concluded, in paragraph 112 of the contested decision, that it was appropriate to confirm the decision of the Opposition Division and reject the opposition under Article 8(1)(b) and Article 8(4) and (5) of Regulation No 207/2009.

– refuse registration of the mark applied for in respect of all the goods and services which it covers;

15 In support of its action, the applicant puts forward five pleas in law. The first plea alleges infringement of Article 8(1)(b) of Regulation No 207/2009, in that the Board of Appeal wrongly held that the goods and services covered by the signs at issue were different. The second plea alleges infringement of Article 8(1)(b) and Article 8(5) of that regulation, in that the Board of Appeal wrongly rejected the existence of a conceptual similarity between the mark applied for and the earlier EU figurative mark MONSTER ENERGY and thus wrongly rejected the existence of a ‘higher’ degree of similarity between those marks. The third plea alleges infringement of Article 8(5) of that regulation, in that the Board of Appeal incorrectly concluded that the goods and services covered by those marks were different and thus wrongly held that the relevant public would not establish a link between those marks. The fourth plea alleges infringement of Article 8(5) of that regulation, in that the Board of Appeal, relying on the erroneous assessment that the relevant public would not establish any link between the earlier EU figurative mark MONSTER ENERGY and the mark applied for, wrongly concluded that the distinctive character of the earlier marks was not undermined. The fifth plea alleges infringement of Article 8(4) of that regulation, in that the Board of Appeal erred in failing to analyse the application of that provision.

16 First of all, it is appropriate to examine the first plea and the arguments put forward by the applicant under the second plea, in so far as they seek to show an infringement of Article 8(1)(b) of Regulation No 207/2009. Next, it is appropriate to examine the second, third and fourth pleas, alleging infringement of Article 8(5) of that regulation. Finally, it is appropriate to examine the fifth plea, alleging infringement of Article 8(4) of that regulation.

17 In the context of its first plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, the applicant claims that the Board of Appeal wrongly found that the goods and services covered by the mark applied for were dissimilar to the goods and services covered by its earlier marks and, in particular, from the goods ‘stickers, ‘decals’ and ‘transfers’ in Class 16, covered by the earlier EU figurative mark MONSTER ENERGY. In the context of the second plea, the applicant argues that the Board of Appeal was wrong to find that there was no conceptual similarity between the earlier EU figurative mark MONSTER ENERGY and the mark applied for. The applicant is of the view that, without that error, the Board of Appeal could have concluded that there was a ‘higher degree’ of similarity between the marks at issue and, accordingly, that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

19 Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

20 In accordance with settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. It is clear from the same case-law that the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

21 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

22 Consequently, for the purposes of applying Article 8(1)(b) of Regulation No 207/2009, it is still necessary, even where the marks at issue are identical, to adduce evidence of similarity between the goods or services covered by them (judgment of 22 June 2011, Mundipharma v OHIM — Asociación Farmaceuticos Mundi (FARMA MUNDI FARMACEUTICOS MUNDI), T‑76/09, not published, EU:T:2011:298, paragraph 22).

23 Finally, where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods and services in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T 81/03, T–82/03 and T 103/03, EU:T:2006:397, paragraph 76 and the case-law cited).

24 It is in the light of the principles set out above that the Court must examine the arguments put forward by the applicant in order to demonstrate an infringement of Article 8(1)(b) of Regulation No 207/2009.

25 In accordance with the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).

26 In the present case, it is common ground that, as the Board of Appeal found in paragraph 16 of the contested decision, the relevant territory for the purpose of assessing the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 is that of the European Union.

27 Furthermore, nor is it in dispute that, as the Board of Appeal confirmed in paragraphs 19 and 20 of the contested decision, the relevant public is composed of the general public showing an average level of attention and professionals showing a high level of attention and that, where the goods and services covered by the marks at issue are aimed at both the general public and professionals, it is appropriate to take into account the level of attention of the general public as the group showing the lowest level of attention (see, to that effect, judgment of 15 July 2011, Ergo Versicherungsgruppe v OHIM — Société de développement et de recherche industrielle (ERGO Group), T‑221/09, not published, EU:T:2011:393, paragraph 21 and the case-law cited).

28 It is appropriate to endorse those findings of the Board of Appeal, which are not vitiated by error.

29 According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño Original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).

30 Goods and services intended for different publics cannot be regarded as substitutable one for the other or, consequently, as being in competition with each other (see, to that effect, judgment of 22 January 2009, easyHotel, T‑16/07, EU:T:2009:14, paragraph 56).

31 Complementary goods or services are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other with the result that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services. By definition, goods and services intended for different publics cannot be complementary (see judgment of 22 January 2009, easyHotel, T‑316/07, ECR, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited).

32 According to the applicant, the Board of Appeal incorrectly found that the goods and services covered by the mark applied for were dissimilar to the goods and services covered by the earlier marks and, in particular, the goods within Class 16, ‘stickers’, ‘decals’ and ‘transfers’ covered by the earlier EU figurative mark MONSTER ENERGY.

33 In that regard, in the first place, it is necessary to uphold the Board of Appeal’s findings, set out in paragraphs 26 to 30, 32, 33, 35 and 40 to 47 of the contested decision, that the goods in Classes 5, 7 to 9, 11, 14, 21, 24 to 26, 28, 30 and 32 and that the services in Class 35 covered by the earlier marks are dissimilar to the goods and services in Classes 2, 37 and 40 covered by the mark applied for. Moreover, the applicant does not put forward any argument to challenge those findings.

34 In the second place, as regards the comparison between the goods in Class 16 covered by the earlier EU figurative mark MONSTER ENERGY and the goods and services in Classes 2, 37 and 40 covered by the mark applied for, it is appropriate, first of all, to recall the content of the contested decision.

35 As regards the goods in Class 2 covered by the mark applied for, the Board of Appeal found, first, in paragraph 23 of the contested decision, that ‘resurfacing materials (coatings) in the nature of paints; rubber paints; colours; dyes, colourants pigments and inks; coatings; thinners and thickeners for coatings, dyes and inks; shellac; gum resins; pains and washes; preservatives; lacquers and varnishes; coatings in the nature of sprays (paints)’ constituted various types of paints, coatings and other colourants for decorating and refurbishing buildings and other objects. Second, it found, in paragraph 24 of the contested decision, that the goods in Class 16 covered by the earlier EU figurative mark MONSTER ENERGY were mainly printed paper, paper goods and office items. It noted that none of the goods in Class 16, including ‘stationery’, could be considered to be identical or similar to the goods in Class 2 covered by the mark applied for. Indeed, those goods are different in nature and the relevant public would not think that the origin of stationery is the same as that of the goods and services covered by the mark applied for. In the same way, the Board of Appeal found, in paragraph 25 of the contested decision, that the ‘surface coating for corrosion protection; raw natural resins’ in Class 2 covered by the mark applied for bore no similarity to the ‘stationery’ or any other product or service covered by the earlier marks. According to the Board of Appeal, those goods in Class 2 are used to cover articles for fixing and protection purposes. It concluded that, to the extent that their intended purpose was to prepare and cover areas or to protect them against corrosion due to air or moisture, deterioration, dust, or to give surfaces an attractive and glossy finish, those products were mainly intended to protect or to camouflage the appearance (colour and glossiness, for example) of the surfaces of certain objects.

36 With regard to the services in Class 37 covered by the mark applied for, the Board of Appeal, in paragraphs 32 to 39 of the contested decision, found, inter alia, that those painting, varnishing and coating services differed from the applicant’s products. In the view of the Board of Appeal, the fact put forward by the applicant that an undertaking providing painting services for vehicles can also produce stickers for use on vehicles is not sufficient to establish a direct link between those goods and services. To hold otherwise would give the proprietor of a trade mark covering stickers and decals a right to which it was not entitled to ‘block’ similar marks in a wide range of commercial activities, while, in reality, the risk that consumers would confuse or associate the marks in question is highly unlikely. The Board of Appeal stated, furthermore, that, during the proceedings before the Opposition Division, the applicant failed to submit detailed facts or substantiated evidence on the basis of which it could be concluded that, in the minds of the relevant public, a company providing painting services for vehicles also provided stickers and related goods in Class 16. According to the Board of Appeal, the applicant merely asserted in general that the stickers, decals and transfers were part of customised or personalised painting and coating services. In the light of the description of the goods and services at issue, their differed nature, intended purpose and method of use, their different method of manufacture and distribution channels and the fact that those goods and services are neither competing nor complementary, the Board of Appeal concluded that there was no similarity between them.

37 With regard to the services in Class 40 covered by the mark applied for the Board of Appeal, in paragraph 44 of the contested decision, confirmed the decision of the Opposition Division which found that those services were dissimilar to the goods and services covered by the applicant’s marks.

38 In that regard, firstly, it is appropriate to confirm the Board of Appeal’s findings, set out in paragraphs 25, 32 and 48 of the contested decision, rejecting the existence of any similarity between the goods in Class 16 covered by the earlier EU figurative mark MONSTER ENERGY and, secondly, the goods ‘shellac; preparations for coating surface to protect against corrosion; gum resins; rubber paints; raw natural resins’ in Class 2, and the services ‘painting, interior and exterior; varnishing’ in Class 37 covered by the mark applied for. Moreover, it must be stated that, in its arguments, the applicant does not refer to the abovementioned products and services in Classes 2 and 37 covered by the mark applied for. It is true that it argues that the Board of Appeal was ‘wrong in its assessment’ of the similarity of the goods and services in Classes 2, 37 and 40 covered by the mark applied for and the goods in Class 16 covered by the earlier EU figurative mark MONSTER ENERGY. However, it states that the Board of Appeal should have recognised that there is a similarity between ‘at least’, the goods ‘stickers’, ‘decals’ and ‘transfers’ in Class 16 covered by the earlier EU figurative mark MONSTER ENERGY and the goods and services covered by the mark applied for corresponding to the following description (together, ‘the goods and services at issue’):

– Class 2: Resurfacing materials (coatings) in the nature of paints; colours; dyes, colorants, pigments and inks; coatings; thinners and thickeners for coatings, dyes and inks; paints and washes; preservatives; lacquers and varnishes; coatings in the nature of sprays (paints).

– Class 40: ‘Customised manufacture and production of coating preparations’.

39 Thus, it is clear that the listing by the applicant of the goods and services covered by the mark applied for does not include all the goods and services for which the application for registration of that mark was filed (see paragraph 3 above). More specifically, the listing by the applicant does not include ‘shellac; preparations for coating surface to protect against corrosion; gum resins; rubber paints; raw natural resins’ in Class 2, and the services ‘painting, interior and exterior; varnishing’ in Class 37 covered by the mark applied for.

40 Secondly, as regards the comparison between ‘stickers’, ‘decals’ and ‘transfers’ in Class 16 covered by the earlier EU figurative mark MONSTER ENERGY and the goods and services at issue covered by the mark applied for and in respect of which the applicant makes an argument, it is appropriate to make the following observations.

41 The applicant does not dispute that the goods covered by the earlier EU figurative mark MONSTER ENERGY and the goods and services at issue in Classes 2, 37 and 40 covered by the mark applied for are different in nature and in their patterns of use. In addition, as EUIPO correctly points out, very different expertise, compared to that needed to manufacture the goods in Class 16 covered by the earlier EU figurative mark MONSTER ENERGY, is required to produce the goods and services covered by the mark applied for. Thus, those goods and services are generally not supplied or manufactured by the same undertakings. In addition, the distribution channels or the points of sale of those goods and services are also different. Moreover, the goods and services at issue are not complementary in the sense that one is indispensable or important for the provision of the others to the point that consumers are led to believe that the responsibility for their production or supply lies with the same undertaking.

42 Furthermore, as EUIPO correctly submits, even if the applicant’s argument seeking to demonstrate that the ‘stickers’, ‘decals’ and transfers in Class 16 covered by the earlier EU figurative mark MONSTER ENERGY have a very weak competitive link to the goods and services at issue, covered by the mark applied for, on the ground that the result of the use of those goods and services at issue is aesthetically to decorate something, that is not enough to accept that there is a similarity between them.

43 Moreover, even if it is accepted that it is common to decorate vehicles with decals or stickers, painting a vehicle, as rightly stated by EUIPO, is usually carried out by professionals in the production process of a vehicle or following an accident to repair the vehicle rather than to decorate it. In any event, the quite rare possibility that the paint is used to decorate a vehicle does not permit it to be argued that it is in a competitive relationship as a product which can be substituted for stickers or decals. Indeed, contrary to the applicant's submissions, it is unlikely that, when a consumer decides how to decorate his vehicle or another article, he actually chooses between, on the one hand, ‘painting of vehicles’, ‘painting of vehicles; coating (painting) services’, ‘dyes and inks’ and ‘coatings in the nature of sprays (paints)’ covered by the mark applied for and in Classes 2 and 37 and, on the other, ‘stickers’, ‘decals’ and ‘transfers’ covered by the earlier EU figurative mark MONSTER ENERGY and in Class 16, which would lead to the view that those goods and services can be substituted for each other.

44 It is thus without committing any error that the Board of Appeal held that the relevant public might believe that the goods in Class 16 covered by the earlier EU figurative mark MONSTER ENERGY and the goods and services at issue in Classes 2 and 37 covered by the mark applied for come from the same undertaking or from economically linked undertakings.

45 As regards the services in Class 40 covered by the mark applied for, it should be noted that the applicant merely asserts that the services of 'customised manufacture and prefabrication of coating preparations' in Class 40, on the one hand, and the goods ‘stickers’, ‘decals’ and ‘transfers’ in Class 16 covered by the earlier EU figurative mark MONSTER ENERGY, on the other, are interchangeable. That statement, which has not been proven, cannot call into question the findings of the Opposition Division and confirmed by the Board of Appeal (see paragraph 37 above), that the services in Class 40 covered by the mark applied for have no connection with the applicant’s goods. Moreover, as rightly pointed out by the Opposition Division, the nature of goods is generally dissimilar to that of services, on the ground that the first are articles of trade, goods or property, the sale of which involves the transfer of ownership of tangible property, while services consist of the provision of an intangible activity. In addition, contrary to the applicant’s assertions, the goods ‘stickers’, ‘decals’ or ‘transfers’ in Class 16 and covered by the earlier EU figurative mark MONSTER ENERGY cannot be regarded as ‘substitutes’ for the services of 'customised manufacture and prefabrication of coating preparations' in Class 40 covered by the mark applied for. In addition, it was also without error that the Board of Appeal upheld the finding of the Opposition Division that the services in Class 40 covered by the mark applied for had a different purpose from that of the applicant’s goods and that, furthermore, those goods and services had nothing in common.

46 In the light of all the foregoing, it must be concluded that the Board of Appeal rightly ruled out the existence of similarity between the goods and services covered by the signs at issue and, in particular, between the goods ‘stickers’, ‘decals’ or ‘transfers’ in Class 16 covered by the earlier EU figurative mark MONSTER ENERGY and the goods and services at issue.

47 The first plea in law, which seeks to challenge the finding of the Board of Appeal that there is a lack of similarity between all the goods and services covered by the signs at issue and, in particular, the lack of similarity between the goods ‘stickers’, ‘decals’ and ‘transfers’ in Class 16 covered by the earlier EU figurative mark MONSTER ENERGY and the goods and services at issue in Classes 2, 37 and 40 covered by the mark applied for, must therefore be dismissed as unfounded.

48 Since it has been found that the Board of Appeal was right to conclude that the goods and services covered by the signs at issue were different, it was not required to examine the existence of a similarity between those signs in the context of its analysis of the opposition based on the Articles 8, paragraph 1 (b) of Regulation No 207/2009. Indeed, as is apparent from the case-law cited in paragraphs 21 and 22 above, the lack of similarity between the goods and services at issue precludes any likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

49 Furthermore, recognition of a ‘higher’ degree of similarity between the earlier EU figurative mark MONSTER ENERGY and the mark applied for, as the applicant requests, would not have allowed the Board of Appeal, in accordance with the case-law cited in paragraphs 21 and 22 above, to recognise that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, since the condition relating to the existence of a similarity between the goods and services covered by the signs at issue is not satisfied in the present case.

50 The arguments raised by the applicant in the context of the second plea, alleging that, in the absence of any error concerning the conceptual similarity of the marks at issue and, thus, of any error as regards their degree of overall similarity, the Board of Appeal had found that there was a likelihood of confusion, must therefore be dismissed in so far as they seek to rely on an infringement of Article 8(1)(b) of Regulation No 207/2009.

51 Having regard to all the foregoing and in accordance with the case-law cited in paragraphs 21 and 22 above, it must be held that the Board of Appeal did not err in finding, in paragraph 48 of the contested decision, that, in the absence of similarity between the goods and services covered by the signs at issue, the opposition based on Article 8(1)(b) of Regulation No 207/2009 must be dismissed.

52 The applicant alleges an infringement of Article 8(5) of Regulation No 207/2009. In that regard, under the second plea, it puts forward arguments seeking to dispute the assessments made by the Board of Appeal in the contested decision as regards the conceptual similarity between the earlier EU figurative mark MONSTER ENERGY and the mark applied for and as regards the degree of overall similarity of those marks. It argues, inter alia, that the Board of Appeal was wrong to take the view, in the examination of the application of Article 8(5) of Regulation No 207/2009, that the marks at issue were conceptually different and, thus, that they were globally similar only to a certain extent. In the context of the third plea, the applicant claims that that error and that incorrect assessment of the lack of similarity between the goods and services covered by the signs at issue led the Board of Appeal wrongly to exclude the connection between the marks at issue made by the relevant public, within the meaning of Article 8(5) of that regulation.Finally, in the context of the fourth plea, the applicant argues that, given the considerable reputation of its earlier trade marks, the distinctive character of the earlier EU figurative mark MONSTER ENERGY with respect to all the goods for which it was registered, in particular goods in Class 16, the public at which the goods covered by that mark are aimed and the connection that that public is capable of establishing with the mark applied for, the Board of Appeal wrongly excluded the risk that the use of that mark is detrimental to the distinctiveness of the earlier EU figurative mark MONSTER ENERGY, within the meaning of Article 8(5) of that regulation.

54 Article 8(5) of Regulation No 207/2009 provides that upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for must not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the European Union and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

55 For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation No 207/2009, a number of conditions must, therefore, be satisfied. First, the earlier trade mark which is claimed to have a reputation must be registered. Second, that mark and the mark applied for must be identical or similar. Third, the earlier trade mark must have a reputation in the European Union, in the case of an earlier EU trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Fourth, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. As those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (see, to that effect, judgment of 22 March 2007, Sigla v OHIM — Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraphs 34 and 35, and of 11 July 2007, Mülhens v OHIM–Minoronzoni (TOSCA BLU), T‑150/04, EU:T:2007:214, paragraphs 54 and 55).

56 More specifically, the fourth of the conditions for the application of Article 8(5) of Regulation No 207/2009 refers to three distinct and alternative types of risk, namely that use of the trade mark applied for without due cause would (i) be detrimental to the distinctive character of the earlier mark, (ii) be detrimental to the repute of the earlier mark, or (iii) take unfair advantage of the distinctive character or repute of the earlier mark. The first type of risk referred to in that provision arises where the earlier mark is no longer capable of arousing immediate association with the goods for which it is registered and used. That risk thus refers to the dilution of the earlier mark through the dispersion of its identity and its hold upon the public mind. The second type of risk occurs where the goods or services covered by the mark applied for may be perceived by the public in such a way that the earlier mark’s power of attraction is diminished. The third type of risk concerns the risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation. It should, however, be emphasised that in none of those cases is it necessary that there be a likelihood of confusion between the marks at issue; the relevant public has only to be able to establish a link between them and does not necessarily have to confuse them (see judgment of 22 March 2007, VIPS, T‑215/03, EU:T:2007:93, paragraphs 36 to 42 and the case-law cited).

57 The existence of injury consisting of detriment to the distinctive character or the repute of the earlier mark must be assessed by reference to average consumers of the goods and services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect. However, the existence of injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect (see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 35 and 36).

58 Moreover, the infringements referred to in Article 8(5) of Regulation No 207/2009, where they occur, are the consequence of a certain degree of similarity between the conflicting signs, by virtue of which the relevant public makes a connection between those signs, even though it does not confuse them. The existence of such a connection must be assessed globally, taking into account all factors relevant to the circumstances of the case, in particular the degree of similarity between the marks at issue, the nature of the goods or services for which the marks were registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant public, the strength of the earlier mark’s reputation and the existence of a likelihood of confusion on the part of the public (see judgment of 5 May 2015, Spa Monopole v OHIM — Orly International (SPARITUAL),T‑131/12, EU:T:2015:257, paragraph 48 and the case-law cited).

59 It is in the light of the abovementioned principles that the Court must examine the arguments raised by the applicant in the context of the second, third and fourth pleas (see paragraph 52 above) and therefore must assess whether the Board of Appeal was correct to find that, in the light of all the factors to be taken into account in accordance with the case-law set out in paragraph 58 above, the relevant public would not have established a connection between the earlier EU figurative mark MONSTER ENERGY and the mark applied for and whether, consequently, the use of the latter mark would not injure the distinctiveness of that earlier EU figurative mark.

60 With regard to the condition relating to the reputation of the earlier marks relied upon by the applicant to justify its opposition to registration of the mark applied for, it must be noted that, in paragraphs 53 to 56 of the contested decision, the Board of Appeal found that that condition was met only as regards the earlier EU figurative mark MONSTER ENERGY and to the extent that that mark covered non-alcoholic beverages and, more specifically, energy drinks. In essence, it upheld the assessments of the Opposition Division that the applicant had proved that the earlier EU figurative mark MONSTER ENERGY had a higher degree of repute solely in respect of non-alcoholic beverages in Class 32. Furthermore, the Board of Appeal took the view, as did the Opposition Division, that the applicant had failed to show that the earlier EU figurative mark MONSTER ENERGY was reputed in connection with the services in Class 35 referred to in the first indent of paragraph 6 above.

61 Those findings of the Board of Appeal, which are not disputed by the applicant, and which, moreover, are not vitiated by errors, must be upheld.

62 Thus, it must be ascertained, as did the Board of Appeal, whether the conditions for the application of Article 8(5) of Regulation No 207/2009 are satisfied in the present case, taking into account the earlier EU figurative mark MONSTER ENERGY, on the one hand, and the mark applied for, on the other.

63 As a preliminary point, it is clear from the case-law that the existence of a similarity between the earlier mark and the mark applied for is a precondition for the application of Article 8(1) (b) and (5) of Regulation No 207/2009 (judgment of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraph 51). That condition of similarity between the earlier mark and the mark applied for presupposes, in the context both of Article 8(1)(b) of Regulation No 207/2009 and of Article 8(5) thereof, the existence, in particular, of elements of visual, phonetic or conceptual similarity (judgment of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraph 52 and the case-law cited).

64 It is true that those provisions differ in terms of the degree of similarity required. Whereas the implementation of the protection provided for under Article 8(1)(b) of Regulation No 207/2009 is conditional upon a finding of a degree of similarity between the marks at issue such that there exists a likelihood of confusion between them on the part of the relevant public, the existence of such a likelihood is not necessary for the protection conferred by Article 8(5) of that regulation. Accordingly, the types of injury referred to in Article 8(5) may be the consequence of a lesser degree of similarity between the earlier mark and the mark applied for, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them (see, to that effect, judgment of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraph 53). On the other hand, it does not appear either from the wording of those provisions or from the case-law that the similarity between the marks at issue must be assessed in a different way depending on whether the assessment is carried out under Article 8(1)(b) or under Article 8(5) of Regulation No 207/2009 (judgment of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraph 54).

65 In the present case, it is not disputed that the trade marks to be compared are the following:

66 As a preliminary point, it must be noted that, as EUIPO correctly points out, the Board of Appeal examined the similarity between the mark applied for and the earlier EU figurative mark MONSTER ENERGY in the context of the examination of the ground of opposition based on Article 8(5) of Regulation No 207/2009. Indeed, since, when examining the ground of opposition based on Article 8(1)(b) of that regulation, the Board of Appeal found that the condition relating to the existence of a similarity between the goods and services covered by the signs at issue was not satisfied, it was not necessary for it to examine whether, for the purposes of the application of Article 8(1)(b) of that regulation, the condition relating to the existence of a similarity between the signs at issue was satisfied (see paragraphs 48 to 51 above).

67 Furthermore, as regards the applicant’s argument that the Board of Appeal failed to take account of all the components of the marks at issue when assessing the conceptual similarity, it should be noted that, in paragraphs 62 to 69 of the contested decision, the Board of Appeal identified the distinctive and dominant elements of the signs at issue.

68 In this respect, as regards the earlier EU figurative mark MONSTER ENERGY, the Board of Appeal was of the view that the figurative element which could be perceived as a letter ‘m’ was clearly visible and could not be ignored due to its very large size, its position and its unusual stylisation It concluded therefrom that it was the dominant element or, at least, co-dominant with the word element ‘monster’ which, given its size and its position, was clearly perceptible and distinctive and would be remembered more easily by consumers. Next, it took the view that the word ‘energy’, due to its subordinate position underneath the word ‘monster’ and its relatively small letters in a fairly standard typeface, must be considered of secondary importance vis-à-vis the larger and more stylized word ‘monster’.

69 As regards the mark applied for, the Board of Appeal found that, in view of the size and position of the word elements ‘monster’ and ‘dip, those elements need to be regarded as co-dominant in the mark applied for. It stated that the graphics chosen, that is to say, the stylisation of the words, the colour used and the black, rectangular background, and the figurative elements, that is to say, the spray cans and representation of eyes, having regard to their position and/or size, were not striking to the point of turning the public’s attention away from the word elements. It concluded that the graphic elements were merely decorative and were not particularly distinctive. It therefore took the view that the relevant public would be more likely to focus on the word elements, as is apparent from the settled case-law (see judgments of 6 September 2013, Leiner v OHIM — Recaro (REVARO), T‑349/12, not published, EU:T:2013:412, paragraph 23 and the case-law cited, and of 16 September 2013, Gitana v OHIM — Teddy (GITANA), T‑569/11, not published, EU:T:2013:462, paragraph 56 and the case-law cited).

70 Furthermore, the Board of Appeal also examined the meaning to the relevant public of the words ‘monster’, ‘energy’ and ‘dip’ which made up the marks at issue. In that respect, it took the view that a large part of the relevant public would understand the word ‘monster’, common to the signs at issue, as meaning one or more imaginary creatures, usually large, ugly and scary, because that word exists in its own language (for example in English and Dutch), or is very similar to the equivalent in its language, for example in French (monstre), in Maltese and Romanian (monstru), in Polish (monstrum), or in Lithuanian (monstras). However, according to the Board of Appeal, a part of the relevant public, such as Bulgarian, Czech or Slovak-speaking consumers, would not give any meaning to the word ‘monster’. In addition, on the basis of the meaning of the word ‘dip’, drawn from the digital version of the Oxford English Dictionary, the Board of Appeal held that that English word in the mark applied for would be understood, at least by the English-speaking part of the relevant public, as meaning ‘act of immersion’, ‘to put or let something down quickly or briefly in or into water or other liquid’, ‘bath’ or ‘preparation in which something is immersed’. The English word ‘energy’ in the earlier EU figurative mark MONSTER ENERGY would be understood by a large part of the relevant public throughout the European Union, in particular the English-speaking public but also the public speaking Spanish (energía), Portuguese, Slovak, Polish and Finnish (energia), Danish, Maltese (enerġija), French, Romanian, Czech and Netherlands (energie), Lithuanian (energija) or Latvian (enerģija), as meaning ‘strength and vitality needed for a sustained physical or mental activity’.

71 On the basis of the findings concerning the distinctive or dominant nature of the elements of the signs at issue, the Board of Appeal found, in paragraph 81 of the contested decision, that, overall, the earlier EU figurative mark MONSTER ENERGY and the mark applied for were visually similar ‘at least’ to a low degree. It found, in paragraph 83 of the contested decision, that those marks were to be regarded overall as phonetically similar. Finally, in paragraph 84 of the contested decision, it found that, conceptually, the common element ‘monster’ would be understood by a significant part of the relevant public and would be meaningless to the other part and it added that similar reasoning applied to the words ‘energy’ and ‘dip’ for at least the English-speaking part of the public. It found, in paragraph 85 of the contested decision, that the figurative element of the earlier EU figurative mark MONSTER ENERGY would probably be perceived as a stylised letter ‘m’. In paragraph 86 of the contested decision, it concluded, first, that, for the part of the public capable of understanding the meaning of the element ‘monster’, the signs at issue were conceptually similar, second, that, for the part of the public which does not understand any of the elements, any conceptual comparison was impossible and, third, that, for that part of the public which understands only the terms ‘energy’, ‘dip’ or all the other elements of the marks at issue, the signs were at least partially conceptually different.

72 It follows from the foregoing, on the one hand, that, contrary to the applicant's submissions, the Board of Appeal took into account all the elements of the signs at issue and that it was only after determining correctly their distinctive and dominant elements that it proceeded to compare them visually, phonetically and conceptually. Thus, the applicant’s argument that the Board of Appeal carried out an assessment of the conceptual similarity without taking into account all the elements of the marks at issue must be rejected as unfounded.

73 On the other hand, with regard to the applicant’s argument that the Board of Appeal wrongly held that the earlier EU figurative mark MONSTER ENERGY and the mark applied for were conceptually different and thus was wrong to rule out those marks being similar to a ‘higher’ degree, it is clear that the applicant is misreading the contested decision. Indeed, the Board of Appeal did not take the view that the earlier EU figurative mark MONSTER ENERGY and the mark applied for were conceptually different. On the contrary, the Board of Appeal rightly held that those marks were similar to that part of the public which would understand the meaning of the word common to both signs, ‘monster’. Furthermore, it did not commit any error in observing that, to that part of the public which would understand only the word ‘energy’, the word ‘dip’ or all the elements of the marks at issue, the signs were at least partially conceptually different. In this connection, the applicant’s argument that, for the part of the public that associates the word ‘dip something to lower levels, including energy, ‘monster’ and ‘monster dip are conceptually similar, on the assumption that it is correct, is not such as to call into question the Board of Appeal’s finding that the earlier EU figurative mark MONSTER ENERGY and the mark applied for are conceptually similar, the finding that those marks are globally similar only to some extent. That finding is the result of the balancing of the assessments of the similarity of those marks on the various levels, visual, phonetical and conceptual.

74 Thus, since none of the arguments raised by the applicant in the context of the second plea, alleging that the Board of Appeal erred in its assessment of both the conceptual similarity of the marks at issue and the degree of overall similarity between them, has succeeded, that plea must be rejected in its entirety.

75 Similarly, it is appropriate to reject the argument raised by the applicant in the context of the third plea, alleging that the Board of Appeal erred as regards the assessment of the similarity of the marks at issue.

76 In the context of the third plea, the applicant submits that, in so far as the Board of Appeal was wrong to rule out the existence of any similarity between the goods and services covered by the marks at issue and incorrectly assessed the degree of similarity of those marks, it wrongly found that the relevant public would not establish a link between those marks. The applicant complains that the Board of Appeal focused its analysis mainly on the difference between the goods and services, while, according to the case-law, the existence of a link between the signs at issue must be assessed globally, taking into account all factors relevant to the circumstances of the case, including the nature of the goods or services for which the earlier mark is registered. Finally, according to the applicant, the case-law shows that it is sufficient that the use of the mark applied for evokes in the mind of the relevant public the earlier EU figurative mark MONSTER ENERGY for the view to be taken that the condition relating to the existence of a link within the meaning of Article 8(5) of Regulation No 207/2009, is satisfied.In the context of the fourth plea, the applicant submits that, in so far as the relevant public will establish a link between the earlier EU figurative mark MONSTER ENERGY and the mark applied for, the use of the latter will be detrimental to the distinctive character of the earlier EU figurative mark MONSTER ENERGY for all the goods and services which it covers and, in particular, for the goods ‘stickers’, ‘decals’ and ‘transfers’ in Class 16 covered by that mark.

77 In the present case, in paragraphs 93 and 94 of the contested decision, the Board of Appeal held, as did the Opposition Division, that, even if there could be some grouping of the consumers of the goods and services covered by the marks at issue to a certain extent, those goods and services were so dissimilar that the mark applied for does not evoke the earlier EU figurative mark MONSTER ENERGY in the mind of those consumers. In particular, on the one hand, the Board of Appeal found, in paragraph 96 of the contested decision, that the relevant public of each mark was clearly different, on the ground that the goods and services covered by the mark applied for were, in essence, aimed at a professional public in a specific specialised sector in the field of services of painting and coating and surface coating goods, while ‘non-alcoholic beverages’ and, in particular, ‘energy drinks’ in Class 32, covered by the earlier EU figurative mark MONSTER ENERGY, were aimed at the general public. On the other, in paragraphs 97 to 100 of the contested decision, it held, as did the Opposition Division, that the huge distance separating the goods in Class 32 covered by the earlier EU figurative mark MONSTER ENERGY from the goods and services covered by the mark applied for precluded, notwithstanding the reputation of the earlier EU figurative mark MONSTER ENERGY, that the consumer of the goods covered by that mark, faced with the goods and services covered by the mark applied for, from establishing a link between the two marks at issue.

78 As a preliminary point, it is apparent from the case-law referred to in paragraph 58 above that, among the factors to be taken into account when assessing the existence of a link between the signs at issue in the mind of the relevant public are, in particular, first, the nature and the degree of closeness or dissimilarity of the goods or services in question, second, the degree of similarity between the marks at issue; third, the strength of the earlier mark’s reputation, fourth, the degree of distinctive character, inherent or acquired through use, of the earlier mark or, where appropriate, fifth, the existence of a likelihood of confusion on the part of the relevant public and sixth, the level of attention of the relevant public. In addition, it is further apparent from that case-law that the existence of a link between the signs at issue in the mind of the public is a condition which must be satisfied in order that one of the infringements referred to in Article 8(5) of Regulation No 207/2009, may be established.

79 Next, it is appropriate to note that, as EUIPO rightly points out, the applicant links the third plea in law to the first and second pleas. It states that, since the Board of Appeal, on the one hand, was wrong to take the view that the goods and services covered by the mark applied for and by the earlier EU figurative mark MONSTER ENERGY were different and, on the other, did not correctly assess the degree of similarity between those signs, the Board of Appeal erred in finding that the relevant public would not establish a link between the marks at issue.

80 In that regard, it must be recalled that, as is apparent from the analysis in paragraphs 33 to 46 above, the Board of Appeal, without committing an error, took the view that all the goods and services covered by the earlier marks, including the goods ‘non-alcoholic beverages’ in Class 32, covered by the earlier EU figurative mark MONSTER ENERGY, were dissimilar to the goods and services covered by the mark applied for. Furthermore, as is apparent from paragraphs 61 and 75 above, the Board of Appeal’s findings that, on the one hand, the earlier mark’s reputation had been proven as regards the earlier EU figurative mark MONSTER ENERGY and, on the other, that mark and the mark applied for had to be regarded as similar to a certain degree, have been held to be correct. Finally, as stated in paragraph 51 above, the Board of Appeal was correct to rule out the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

81 It is on that basis that the arguments raised by the applicant in the context of the first and third pleas, seeking to invalidate the findings of the Board of Appeal as regards the lack of similarity between the goods and services covered by the marks at issue were rejected (see paragraph 47 above). Similarly, the arguments put forward by the applicant in the context of the second and third pleas to challenge the findings of the Board of Appeal that the marks at issue were similar to a certain degree, have been rejected (see paragraphs 74 and 75 above). Furthermore, with regard to the latter argument, raised by the applicant in the context of the third plea, seeking to show that the Board of Appeal ought not to have focussed its analysis on the degree of dissimilarity between the goods and services covered by the mark at issue, it is appropriate to note that it has previously been held in the case-law that, even if the consumers targeted by the goods or services for which the signs at issue are respectively registered are the same or overlap to some extent, those goods or services may be so dissimilar that the mark applied for will be unlikely to evoke the earlier mark in the mind of the relevant public (see, to that effect, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 49). The applicant does not, therefore, put forward any argument, in the context of its third plea, to invalidate the Board of Appeal’s finding that the relevant public will not establish any link between the marks at issue.

82 In addition, it is appropriate to note that the finding that there is no connection between the marks at issue in the mind of the relevant public cannot be called into question by the applicant’s argument that the Board of Appeal should also have taken into account the goods for which the earlier EU figurative mark MONSTER ENERGY was not reputed, such as the goods ‘stickers’, ‘decals’ and ‘transfers’ in Class 16 covered by that earlier mark. Indeed, the absence of reputation implies that one condition for the application of Article 8(5) of Regulation No 207/2009 is not satisfied, and thus, there can be no detriment to the earlier mark in question. In other words, since the reputation of the earlier mark is a prerequisite for the existence of any of the infringements referred to in Article 8(5) of that regulation, including the detriment to the distinctive character of the earlier mark known as trade mark dilution, it follows that none of the infringements referred to in that provision can be found as regards the goods and services in relation to which the condition relating to the reputation of the earlier mark is not satisfied. Thus, it is appropriate to reject the applicant’s argument in the context of its fourth plea seeking to show that the Board of Appeal erred in taking into account, in order to establish the link between the marks at issue, only the goods in respect of which a reputation of the earlier mark had been demonstrated.

83 In any event, it must be held that, in so far as the Board of Appeal took the view that the degree of similarity between the marks at issue was not high, that the goods in respect of which the earlier EU figurative mark MONSTER ENERGY had a reputation and the goods and services covered by the mark applied for were in totally different sectors and aimed at completely different consumers and that the applicant had not adduced any evidence to the contrary, it did not err in finding that, despite the strong reputation of the earlier mark in respect of non-alcoholic drinks, the relevant public would not establish any link between the earlier EU figurative mark MONSTER ENERGY and the mark applied for.

84 Finally, given that the Board of Appeal correctly found, as did the Opposition Division, that the condition relating to the existence of a link between the marks at issue in the mind of the relevant public was not satisfied in the present case, it was correct in holding that the applicant had failed to show that use of the mark applied for would be detrimental to the distinctive character of the earlier EU figurative mark MONSTER ENERGY, within the meaning of Article 8(5) of Regulation No 207/2009.

85 Since none of the arguments raised in connection with the second, third and fourth pleas in law have been successful, the action must be dismissed in so far as it seeks to establish that there is a risk that the use of the mark applied for would be detrimental to the distinctiveness of the earlier EU figurative mark MONSTER ENERGY, within the meaning of Article 8(5) of Regulation No 207/2009.

86 In the context of the fifth plea in law, the applicant submits that, in so far as the Board of Appeal was wrong to base its analysis on the fact that the goods and services at issue were dissimilar and that the relevant public would not establish a link between the marks at issue, it also erred in failing to analyse the ground of opposition based on Article 8(4) of Regulation No 207/2009.

88 In paragraph 111 of the contested decision, the Board of Appeal concluded that, in so far as all the goods and services at issue had been regarded as different under Article 8(1)(b) of Regulation No 207/2009 and that the applicant had not established a link between the mark applied for and the earlier marks under Article 8(5) of that regulation, it was not necessary further to examine the ground of opposition based on Article 8(4) of that regulation, because it would not affect the outcome of the opposition proceedings.

‘Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the Community trade mark, or the date of the priority claimed for the application for registration of the Community trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark. ’

90 In accordance with the case-law, under Article 8(4)(c) of Regulation No 207/2009, the proprietor of a sign other than a registered mark can oppose registration of an EU trade mark if that sign satisfies four cumulative conditions: the sign must be used in the course of trade; it must be of more than mere local significance; the right to that sign must have been acquired in accordance with EU law or the law of the Member State in which the sign was used prior to the date of application for registration of the EU trade mark; finally, that sign must confer on its proprietor the right to prohibit the use of a subsequent trade mark. Those conditions are cumulative, so that where a mark does not satisfy one of those conditions, the opposition based on the existence of a non-registered trade mark or of other signs used in the course of trade, within the meaning of Article 8(4) of Regulation No 207/2009 cannot succeed (see judgment of 12 October 2017, Moravia Consulting v EUIPO — Citizen Systems Europe (SDC‑554S), T‑316/16, EU:T:2017:717, paragraph 38 and the case-law cited).

91 The first two conditions, namely those relating to the use of the sign relied on and its significance, which must be more than merely local, are apparent from the very wording of Article 8(4) of Regulation No 207/2009 and must therefore be interpreted in the light of EU law. Regulation No 207/2009 thus sets out uniform standards relating to the use of signs and their significance, which are consistent with the principles underlying the system established by that regulation (see judgment of 29 June 2016, Universal Protein Supplements v EUIPO — H Young Holdings (animal), T‑727/14 and T‑728/14, not published, EU:T:2016:372, paragraph 23 and the case-law cited).

92 By contrast, it is apparent from the phrase ‘where and to the extent that, pursuant to ... the law of the Member State governing that sign’ that the two other conditions, set out in Article 8(4)(a) and (b) of Regulation No 207/2009, are conditions laid down by that regulation which, unlike the conditions above, must be assessed in the light of the criteria set by the law governing the sign relied on. That reference to the law governing the sign relied on is entirely justified, given that Regulation No 207/2009 allows signs which fall outside of the EU trade mark system to be relied on against an EU trade mark. Therefore, only the law which governs the sign relied on can determine whether that predates the EU trade mark and whether it can justify a prohibition of the use of a subsequent trade mark. In accordance with Article 76(1) of Regulation No 207/2009 (now Article 95(1) of Regulation 2017/1001), the burden of proving that such condition is met lies with the opponent before EUIPO (see judgment of 12 October 2017, SDC‑554S, T‑316/16, EU:T:2017:717, paragraph 40 and the case-law cited).

93 With regard to the application of the provisions of Article 8(4)(b) of Regulation No 207/2009, regard must be had, in particular, to the national rules relied on and to the judicial decisions delivered in the relevant Member State. On that basis, the opponent must establish that the sign in question falls within the scope of the law of the Member State relied on and that it allows use of a subsequent mark to be prohibited (see judgment of 12 October 2017, SDC‑554S, T‑316/16, EU:T:2017:717, paragraph 41 and the case-law cited).

94 In that regard, as is apparent from paragraphs 5 and 6 of the contested decision, the applicant based its opposition under Article 8(4) of Regulation No 207/2009 on the unregistered United Kingdom trade mark MONSTER ENERGY, covering ‘drinks’ and ‘sponsorship of events, in particular sporting events’. It is also apparent from paragraph 6 of the contested decision, on the one hand, that the applicant claimed the right to prohibit the use of the mark applied for by virtue of the action for passing off under the law of the United Kingdom and, on the other, that the Opposition Division found that, since one of the conditions for such an action for passing off, namely the misleading association of the goods and services covered by the mark applied for with the applicant’s undertaking, was not satisfied, the ground of opposition based on Article 8(4) of Regulation No 207/2009 had to be rejected as unfounded.

95 In that regard, firstly, it must be noted that it is in the context of the examination of the application of Article 8(1)(b) of Regulation No 207/2009 that the Board of Appeal, in paragraphs 27 to 30, 40, 43 and 45 to 47 of the contested decision, rejected any similarity or a link between the goods and services covered by the mark applied for and the services in Class 35 covered by the earlier EU word mark MONSTER ENERGY, namely a trade mark identical to the United Kingdom unregistered mark covering services identical to those covered by that mark. Secondly, it is in the context of the examination of the application of Article 8(5) of that regulation that the Board of Appeal found, in paragraphs 90, 91 and 97 of the contested decision, that the goods ‘non-alcoholic drinks’, identical to those covered by the unregistered United Kingdom mark MONSTER ENERGY, and the goods and services covered by the mark applied for were so dissimilar that the relevant public would not establish any link with the world of ‘alcoholic drinks’ of the applicant, which drinks, it is appropriate to recall, are covered by both the reputed earlier EU figurative mark MONSTER ENERGY and by the unregistered United Kingdom mark MONSTER ENERGY.

96 In the light of the foregoing, it is clear that the reasoning of the Board of Appeal, as EUIPO correctly states, also covers the fact that one of the conditions laid down in the law of the United Kingdom regarding the action for passing off is not fulfilled in the present case. Thus, it is without committing any error that the Board of Appeal rejected the ground of opposition based on infringement of Article 8(4) of Regulation No 207/2009.

97 Accordingly, the fifth plea in law must be rejected, and the action in its entirety, in so far as it seeks the annulment of the contested decision, must be dismissed. The forms of order sought referred to in the second and third indents of paragraph 13 above, which seek, in essence, an order that the Court exercise its power to amend in order to annul the decision of the Opposition Division and uphold the opposition to registration of the mark applied for in respect of all the goods and services which it covers, must, consequently, also be rejected.

98 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Monster Energy v EUIPO - Bosel (MONSTER DIP) (EU trade mark - Judgment) [2018] EUECJ T-274/17 (13 December 2018) URL: http://www.bailii.org/eu/cases/EUECJ/2018/T27417.html Cite as: ECLI:EU:T:2018:928, [2018] EUECJ T-274/17, EU:T:2018:928

Court of Justice of the European Communities (including Court of First Instance Decisions)