OPPOSITION No B 2 433 681

Monster Energy Company, 1 Monster Way, Corona, California 92879, United States of America (opponent), represented by Bird & Bird LLP, 15 Fetter Lane, London EC4A 1JP, United Kingdom (professional representative)

a g a i n s t

Marco Bösel, Vogteistr.33a, 29683 Bad Fallingbostel, Germany (applicant).

On 19/04/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 433 681 is rejected in its entirety.

2. The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 118 211. The opposition is based on European trade mark registrations Nos 12 705 711, 11 154 739, 9 091 001, 11 669 744 and 9 144 536. The opponent invoked Article 8(1)(b), 8(4) and 8(5) EUTMR.

SIGNS

MONSTER ENERGY (EUTM 12 705 711) (EUTM 11 154 739) (EUTM 9 091 001) MONSTER ENERGY (EUTM 11 669 744) MONSTER (EUTM 9 144 536)
Earlier trade marks	Contested sign

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods and services

The goods and services on which the opposition is based are the following:

EUTM No 12 705 711

Class 35: 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.

EUTM No 11 154 739

Class 5: Nutritional supplements in liquid form.

Class 16: Printed matter and publications; posters; stickers and decals; transfers; cards; stationery; signboards.

Class 25: Clothing, footwear, headgear.

Class 30: Ready to drink tea, iced tea and tea based beverages; ready to drink flavored 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.

Class 32: Non-alcoholic beverages.

EUTM No 9 091 001

Class 5: Nutritional supplements.

Class 32: Non-alcoholic beverages, excluding non-alcoholic beers.

EUTM No 11 669 744

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, cuff links, 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.

EUTM No 9 144 536

Class 7: Machines and machine tools, namely electrical and electro-mechanical machines and apparatuses for production, refurbishment, further processing, treatment and preparation of food and aliment; apparatuses for preparation of carbonated beverages, electrical and electro-mechanical apparatuses for preparation of beverages.

Class 8: Hand tools and implements (hand-operated); cutlery; all afore-mentioned goods exclusively for production, refurbishment, further processing, treatment and preparation of food, aliment 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 utensils and containers, as far as not included in other classes, all afore-mentioned goods exclusively for production, refurbishment, further processing, treatment, preparation and storage of food, aliment and beverages.

Following a limitation requested on 17/11/2015, the contested goods and services are the following:

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.

Contested goods in Class 2:

The contested goods in Class 2 are various types of coatings, paints and other colorants. They are products destined for decorating and refurbishing buildings and other objects. The earlier marks are protected for a variety of goods: nutritional supplements in Class 5, machines and machine tools and apparatus for the preparation of beverages in Class 7, hand tools and implements in Class 8, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating and water supply in Class 11, paper goods in Class 16, household or kitchen utensils and containers in Class 21, beverages in Classes 30 and 32, cases for electronic equipment, headphones, sunglasses and related goods in Class 9, jewellery, watches, clocks and related goods in Class 14, towels in Class 24, clothing, footwear and headgear in Class 25, belt buckles and similar goods in Class 26, and protective covers and cases in Class 28.

The contested goods have nothing in common with any of the earlier goods. They will not be produced by the same manufacturers, distributed through the same channels and they serve different purposes. Nor are they complementary to one another or in competition with one another. Therefore, the contested goods are deemed dissimilar to all the earlier goods.

The contested goods are also dissimilar to the earlier services in Class 35 which encompass the promotion of goods and services in the sports, motorsports, electronic sports, and music industries. As a starting point, there are numerous differences between goods and services. By their nature goods are generally dissimilar to services. This is because goods are articles of trade, wares, merchandise, or real estate. Their sale usually entails the transfer of title in something physical, i.e. movables or real estate. Services, on the other hand, consist in the provision of intangible activities. Fundamentally, the applicant's goods have a different purpose to the opponent's services.

Contested services in Class 37:

The contested services are types of painting, varnishing and coating services. The earlier goods in Classes 5, 7, 8, 9, 11, 14, 16, 21, 24, 25, 26, 28, 30 and 32 have been described above in the paragraph on the comparison of the contested goods in Class 2. The contested services bear no points of contact whatsoever with the earlier goods and are therefore deemed dissimilar. As stated above, by their nature goods are generally dissimilar to services. This is because goods are articles of trade, wares, merchandise, or real estate. Their sale usually entails the transfer of title in something physical, i.e. movables or real estate. Services, on the other hand, consist in the provision of intangible activities. Fundamentally, the applicant's services have a different purpose to the opponent's goods.

Nor do the contested services in Class 37 have anything in common with the earlier services in Class 35 which encompass the promotion of goods and services in the sports, motorsports, electronic sports, and music industries. It is clear that the services at issue will not be provided by the same companies, aimed at the same consumers, and nor are they complementary to one another or in competition with one another. The contested services are therefore dissimilar to the earlier services.

Contested services in Class 40:

The contested customised manufacture and production of coating preparations bear no points of contact whatsoever with the earlier goods and are therefore deemed dissimilar. As stated above, by their nature goods are generally dissimilar to services. This is because goods are articles of trade, wares, merchandise, or real estate. Their sale usually entails the transfer of title in something physical, i.e. movables or real estate. Services, on the other hand, consist in the provision of intangible activities. Fundamentally, the applicant's services have a different purpose to the opponent's goods.

Nor do the contested services in Class 40 have anything in common with the earlier services in Class 35 which encompass the promotion of goods and services in the sports, motorsports, electronic sports, and music industries. It is clear that the services at issue will not be provided by the same companies, aimed at the same consumers, and nor are they complementary to one another or in competition with one another. The contested services are therefore dissimilar to the earlier services.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected insofar as it is based on Article 8(1)(b) EUTMR.

This finding would still be valid even if the earlier trade marks were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods and services cannot be overcome by the highly distinctive character of the earlier trade mark the evidence submitted by the opponent in this respect does not alter the outcome reached above.

REPUTATION – ARTICLE 8(5) EUTMR

The opponent invoked Article 8(5) EUTMR in connection with EUTMs Nos 12 705 711 and 11 154 739 only.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, 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 contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08, & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

MONSTER ENERGY EUTM No 12 705 711 EUTM No 11 154 739
Earlier trade marks	Contested sign

Although the earlier trade marks are European Union trade marks, the opponent only claims a reputation in the United Kingdom. Therefore, the relevant territory is the United Kingdom.

Earlier EUTM No 12 705 711 is a word mark consisting of ‘MONSTER ENERGY’. Earlier EUTM No 11 154 739 is a figurative mark consisting of a black rectangular label upon which is placed a large, green, highly stylised representation of the letter ‘M’, somewhat reminiscent of three claws. Below this device element are the words ‘MONSTER ENERGY’. The word ‘MONSTER’ is written in stylised white capital letters with the word ‘ENERGY’ in smaller standard, green capitals below. The contested sign is a figurative sign consisting of the word ‘MONSTER’ in white and grey shaded gothic style capital letters. Below, the word ‘DIP’ appears in green, stylised, rounded capital letters. Above the word ‘MONSTER’, there are two green eyes. On either side of the word ‘DIP’ are two spray bottles each pointing towards an eye and emitting a green spray. All of this is placed on a black background.

Visually, the signs are similar to the extent that they coincide in the word ‘MONSTER’. These marks also coincide visually in their black background. There is also a certain similarity in that the colour green is used in all the marks. However, they differ in the word ‘ENERGY’ in the earlier marks, the stylised representation of the letter ‘M’ in the earlier figurative mark, and the word ‘DIP’ in the contested sign along with the graphic representations of eyes and spray bottles.

Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘M-O-N-S-T-E-R’ present identically in all the signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letters ‘ENERGY’ in the earlier marks, the letter ‘M’ in the earlier figurative mark should it be pronounced, and the sound of the letters ‘DIP’ in the contested sign.

Therefore, the signs are aurally similar to an average degree.

Conceptually, the public in the relevant territory will understand all of the words contained in the signs at issue. ‘MONSTER’ will be understood as referring to an imaginary creature that is typically large, ugly or frightening. It may also be understood in an adjectival sense as referring to something which is very large. ‘ENERGY’ will be understood as referring to the strength required for sustained physical or mental activity. ‘DIP’ in the contested sign will be understood as the act of plunging something briefly into a liquid, especially to wet or coat it. The letter ‘M’ may also be perceived in the earlier figurative mark. Neither ‘MONSTER ENERGY’ nor ‘MONSTER DIP’ mean anything overall. Since all the signs refer to ‘MONSTER’ they are conceptually similar in this regard. They are conceptually dissimilar as regards the remaining words.

The earlier figurative mark may also be perceived as conveying the concept of a ‘claw’, and the contested sign as portraying a pair of eyes and two spray bottles emitting a spray. These are conceptual differences.

Therefore, the signs are conceptually similar to an average degree.

Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are similar.

2. Reputation of the earlier trade mark

According to the opponent, the earlier trade marks have a reputation in the United Kingdom.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 28/07/2014. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the United Kingdom prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:

EUTM No 12 705 711

Class 35: 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.

EUTM No 11 154 739

Class 25: Clothing, footwear, headgear.

Class 32: Non-alcoholic beverages.

In order to determine the marks’ level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 15/06/2015 and 16/06/2015 the opponent submitted the following evidence:

• Witness Statement by Rodney Cyril Sacks, Chairman and Chief Executive of Monster Beverage Corporation and its subsidiaries, dated 09/04/2015. The following is stated:

• Since its launch in 2002, the ‘MONSTER ENERGY’ beverage line has sold more than 954 million cans of MONSTER energy drinks in the European Union (EU). The company’s energy drinks are sold in over 275 000 retail stores and outlets in the EU.

• Sales of MONSTER energy drinks in the EU were EUR 229 million for 2013, EUR 192 million for 2012, EUR 129 million for 2011, EUR 75 million for 2010 and EUR 40 million for 2009.

• The opponent allocates a large proportion of its marketing, advertising and promotional budget to athlete endorsements and sponsoring athletic competitions and other events.

• The opponent sponsors professional athletes and provides them with T-shirts, hats or caps bearing the MONSTER trade marks.

• Exhibit RCS-1: photographs showing cans of MONSTER energy drinks.

• Exhibit RCS-2/3: slides of presentations showing market share information for the EU. In particular, the United Kingdom is shown as having a market share of 6.6% in 2011, 8.8% in 2012, 10.4-10.9% for 2013, 12.3% for 2014.

• Exhibit RCS-4: reports from the market statistics provider Nielsen showing market share in 2012 and 2013.

• Exhibit RCS-5: Extract from a Monster EMEA 2012 results presentation.

• Exhibits RCS-6-10: web clippings, articles and reports dated between 2008 and 2013 showing the reputation and market share of MONSTER products in the EU.

• Exhibit RCS-14-39: photographs and promotional material showing use of the MONSTER marks by Monster sponsored teams and events.

• Exhibits RCS-46-47: photographs of sports personalities wearing MONSTER clothing.

• Exhibits RCS-48-69: further pictures of professional and amateur athletes wearing MONSTER branded clothing.

• Exhibits RCS-70-71: Extracts from MONSTER websites within the EU.

• Exhibits RCS-72-79: Examples of MONSTER on social media.

• Exhibits RCS-86-88: Awards received by the opponent, acknowledged as a leader in the beverage industry, including ‘Beverage Company of the Year’(2004 and 2006) and ‘Liquid Refreshment Company of the Year’ (2012).

The evidence filed shows the mark as follows:

On the basis of the above the Opposition Division concludes that the earlier figurative trade mark EUTM No 11 154 739 has a reputation for non-alcoholic beverages, specifically energy drinks, in the United Kingdom.

It is clear from the evidence that the earlier trade mark has been subject to long-standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources. The sales figures, marketing expenditure and market share shown by the evidence and the various references in the press to its success all unequivocally show that the mark enjoys a high degree of recognition among the relevant public.

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods and services on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to non-alcoholic beverages, specifically energy drinks, whereas there is no or little reference to the remaining goods and services. Although it is true that the opponent has demonstrated that it produces some merchandising articles such as caps and hats bearing the MONSTER trade mark, it has failed to prove that it actually produces clothing, footwear or headgear on a large enough scale to have acquired any kind of reputation.

The same may be said for the services in Class 35 for which the opponent also claims a reputation. These services, to recall, are:

Class 35: 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.

While it is true that the opponent promotes its own goods at sporting events, it has not provided any evidence whatsoever that it does this for third parties. Consequently, no evidence of reputation for earlier word mark EUTM No 12 705 711 has been provided.

3. The ‘link’ between the signs

As seen above, the earlier figurative mark is reputed and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

While the relevant section of the public for the goods or services covered by the conflicting marks overlaps to a minimal extent, those goods or services are so different that the later mark is unlikely to bring the earlier figurative mark to the mind of the relevant public. The earlier mark has a strong reputation for non-alcoholic beverages, and specifically ‘energy drinks’. The contested goods, on the other hand, are various types of coatings, paints and other colorants and additives for paints and coatings, such as thinners and preservatives. They are products destined for decorating and refurbishing buildings and other objects which will be bought by painters, decorators and general refurbishment companies. They will be sold in specialised retail outlets. The contested services in Class 37 are painting and varnishing services, whilst the Class 40 services encompass the actual production of coating preparations. The earlier mark has a reputation for beverages. The contested goods and services belong specifically to the field of paints and coatings in general. These markets are set far apart and the goods and services at issue are highly unlikely to ever be distributed in close proximity to one another. They serve entirely different purposes, the quenching of thirst on the one hand, and redecorating and painting services on the other. Consequently, the vast distance between the goods and services at issue means that it is unlikely that the contested mark will bring to mind the earlier mark for the relevant consumers in the painting and decorating field.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

The opposition is also based on earlier United Kingdom non-registered trade mark ‘MONSTER ENERGY’.

According to Article 8(4) EUTMR, 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 European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

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

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

The right under the applicable law

The opposition is based on a non‑registered trade mark used in the United Kingdom. The opponent claims to have the right to prohibit the use of the contested trade mark under the tort of passing off.

A successful claim for passing off must satisfy three cumulative conditions. Failure to satisfy any one of them means that the claim cannot succeed. The conditions are:

Firstly, the opponent must prove that it enjoys goodwill or is known for specific goods and services under its mark. The evidence must show that the opponent’s mark is recognised by the public as distinctive for the opponent’s goods and services. For the purposes of opposition proceedings, goodwill must be proven to have existed before the filing date of the contested trade mark.

Secondly, the opponent must demonstrate that the applicant’s mark would be likely to lead the public to believe that the applicant’s goods and services originate from the opponent. In other words, the public would be likely to believe that goods and services put on the market under the contested trade mark are actually those of the opponent.

Thirdly, the opponent must show that it is likely to suffer damage as a result of the applicant’s use of the contested trade mark.

As seen above, among other requirements, such as the existence of goodwill in the earlier sign, a passing off action necessarily implies a misrepresentation by the defendant to the public, leading, or likely to lead, the public to believe that the goods or services offered by it are the goods or services of the plaintiff, and the plaintiff has suffered or is likely to suffer damage as a result of the erroneous belief engendered by the defendant’s misrepresentation. Therefore, it is necessary to examine whether, on a balance of probabilities, it is likely that a substantial part of the relevant public would be misled into purchasing the applicant’s goods in the belief that they are the opponent’s.

The opponent claims to use its non-registered trade mark in the course of trade for beverages and sponsorship of events, including sports events. The Opposition Division has already argued extensively under the sections on Article 8(1)(b) and 8(5) as to why non-alcoholic beverages are considered to be highly dissimilar to all the contested goods and services. The same reasoning may be applied here by analogy. As regards the earlier sponsorship of events, including sports events, these services have nothing in common with the contested goods and services which belong to the field of painting, decorating and refurbishing. They are different in nature, purpose, and are not in competition with one another or complementary. Finally they will not be provided by the same companies or distributed through the same channels.

The Opposition Division concludes that the use of the contested sign for goods in Class 2 and services in Classes 37 and 40 does not constitute misrepresentation which might lead consumers to believe that the goods and services offered by the applicant are in fact those of the opponent, even assuming that the opponent has goodwill in its earlier unregistered trade mark.

As a consequence, since one of the conditions to sustain a passing-off claim is not established, and all three conditions to sustain a passing-off claim must be met in order for it to be successful, the Opposition Division finds that the claim for passing off cannot succeed in so far as it is based on the non-registered trade mark ‘MONSTER ENERGY’.

Considering all the above, the Opposition Division finds that the opposition is not well founded pursuant to Article 8(4) EUTMR. Therefore the opposition must be rejected.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Simona MACKOVÁ

Lucinda Jane CARNEY

Sigrid DICKMANNS

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal shall be filed in writing at the Office within two months of the date of notification of this decision. It shall be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal shall be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.