Author: Dr. Manuela Ferrario
With the judgment of October 23, 2024, in case T-59/24, the EU General Court confirmed the decision of the EUIPO Board of Appeal which annulled the figurative trademark “INSOMNIA ENERGY” due to the conflict existing between it and the well-known figurative trademark “MONSTER ENERGY”:
vs. 
The dispute, begun in 2020, saw the company Monster Energy Co. request the annulment of the trademark subsequently registered by the company Shoqëria Tregtare BFF Company SHPK (later transferred to the current Bulgarian company owner, BFF Company EOOD) based on Article 8, paragraph 1, letter b) EUTMR and Article 8, paragraph 5 EUTMR, relying both on the likelihood of confusion between trademarks and on the unfair advantage that the “INSOMNIA ENERGY” trademark would have taken from the reputation of “MONSTER ENERGY.”
The Cancellation Division initially rejected the action, considering that the trademarks were not sufficiently similar and therefore there was no likelihood of confusion. Consumers would not, therefore, establish any connection between the two signs, despite the fact that the claimed products were the same, namely non-alcoholic beverages in Class 32.
Monster Energy Co. then filed an appeal and obtained satisfaction: the EUIPO Board of Appeal in fact established that not only were the signs similar in structure and verbal composition (at least visually), but there was also an undeniable strong reputation of the earlier trademark in the European Union territory for non-alcoholic and energy drinks.
Consequently, the reputation of “MONSTER ENERGY” was sufficient to counterbalance the weak degree of similarity between the signs (particularly from a phonetic and conceptual point of view), and this circumstance, together with considerations relating to the unfair advantage taken precisely from the reputation, led to the declaration of invalidity of the subsequent trademark.
It should be noted that the Board of Appeal, for reasons of procedural economy, decided not to assess the existence of the likelihood of confusion (evaluated instead in the first instance), as the assessment of reputation was already sufficient for the purpose of the action. This had an inevitable impact on the proceedings before the EU General Court, which could only declare the inadmissibility of the appeal reason regarding the likelihood of confusion: in fact, this reason could not be re-examined since it was not the subject of the contested decision.
Conversely, the Court focused on the assessment of the evidence provided in support of the reputation of the “MONSTER ENERGY” trademark. It should be remembered that for the application of Article 8, paragraph 5 EUTMR, the presence of three cumulative conditions is necessary: the trademarks must be identical or similar, the earlier trademark must enjoy reputation, and there must be a risk that the use without due cause of the subsequent trademark takes unfair advantage of the distinctive character or reputation of the earlier trademark or causes harm to it.
The rationale of the cited article lies in the intrinsic economic value autonomous and distinct from that of the products and services for which the trademark is registered, where the trademark acts as a means of conveying messages regarding qualities or characteristics of the products and services, in addition to its primary function of indicating the commercial origin.
As far as the evidence provided by the party requesting annulment are concerned, the Court observed that they contained objective information, as there were invoices confirming market shares held, screenshots of internet sites, articles, and reports on media coverage of the “MONSTER ENERGY” trademark, as well as evidence of sponsorships of sporting events. The material, relating to many countries worldwide, was able to prove the wide extent of sales in each of the Member States of the European Union.
All things considered, the Court correctly concluded that the reputation of the earlier trademark for energy drinks was undeniable.
Obviously, the Court also had to carry out a comparative examination of the signs in order to assess their similarity, considering that Article 8, paragraph 5 EUTMR does not require the presence of a likelihood of confusion but only a similarity between the trademarks sufficient to lead consumers to establish a connection between signs.
In this case, the overall appearance of the trademarks was considered similar due to the use of the same colors (black, green and white), the similar structure, and the same positioning of the verbal elements.
In particular, the verbal element “ENERGY” included in both signs was considered not negligible: despite the weak distinctive character of this word concerning the products of interest (energy drinks), its size and color make it relevant within the signs.
Therefore, the differences represented by the additional elements of the conflicting trademarks were not sufficient to outweigh the undeniable, albeit not extreme, degree of visual, phonetic, and conceptual similarity.
In conclusion, the decision clearly and firmly highlights how having objective evidence of the reputation of a trademark allows for the annulment of a subsequent trademark even when the similarities between signs are not strong enough to establish a likelihood of confusion for the public.
© THINX Srl – January 2025