EU trade mark dispute: INSOMNIA ENERGY v. MONSTER ENERGY - EU trade mark dispute: FRUITOLOGY

EU trade mark dispute: INSOMNIA ENERGY v. MONSTER ENERGY

On 23 October, the General Court of the European Union ruled in case T-59/24 on a dispute between the EU trade mark INSOMNIA ENERGY and the earlier EU trade mark M MONSTER ENERGY.

In 2016, a company based in Bulgaria, Shoqëria Tregtare BBF Company SHPK, registered the sign INSOMNIA ENERGY as a European figurative trade mark, No. 015905045. The sign consists of a black background, the word "INSOMNIA" in white with a green outline in the centre and the word "ENERGY" in green underneath. It was registered for goods in Class 32 of the Nice Classification, such as flavoured carbonated drinks, waters, juices, energy drinks, non-medical energy drinks, caffeinated energy drinks, non-carbonated soft drinks and non-alcoholic fruit juice based soft drinks, among others. In 2020, the US company Monster Energy Co. filed an application with the EUIPO for a declaration of invalidity of the registered EU trade mark based on its earlier EU figurative mark No. 011154739, M MONSTER ENERGY, which covered, among other things, 'non-alcoholic beverages' in Class 32. The mark is characterised by its aggressive typography, which includes a recognisable bright green 'M', the word MONSTER in white and the word ENERGY in green, all on a black background.

The Cancellation Division of the EUIPO dismissed it, stating that there was no likelihood of confusion between the marks because the similarity was extremely low and the public would not make a connection between them, despite some identity of the goods and the reputation of the earlier mark. However, the Board of Appeal recognised that the MONSTER mark had a high degree of recognition among the relevant public in the field of energy drinks in Class 32, which counteracted the low degree of similarity between the signs. Thus, the Board of Appeal annulled the Cancellation Division's decision and declared the contested mark invalid in its entirety.

The Bulgarian company appealed against this decision to the General Court of the European Union, which had to determine whether there was a likelihood of confusion between the marks at issue. 

First, the Court upheld the decision of the Board of Appeal, recognising the high reputation and distinctive character of M MONSTER ENERGY in the non-alcoholic beverages sector, in particular for energy drinks, supported by evidence of its recognition on the market. This reputation was sufficient to overcome the low degree of similarity between the marks at issue. 

In addition, the Court pointed out that both marks shared the word element 'energy', which contributed to a certain degree of visual and phonetic similarity. Although the element 'energy' was found to be weakly distinctive, its presence was not overlooked because of its size and colour. Furthermore, the structure of the marks was considered to be very similar, which increased the likelihood of consumer confusion.

The General Court upheld the Board of Appeal’s assessment that the Bulgarian company was taking unfair advantage of the reputation of the MONSTER mark, on the basis that the applicant had not put forward sufficient arguments to show that its use of the disputed mark was legitimate or that it did not give rise to confusion on the part of consumers. As a result, the General Court upheld the decision of the EUIPO Board of Appeal to invalidate the registered EU trade mark INSOMNIA ENERGY.

EU trade mark dispute: FRUITOLOGY

On 23 October, the General Court of the European Union ruled in case T-523/23 on a dispute between the international trade mark FRUITOLOGY and the earlier Portuguese trade mark CENTRO DE FRUTOLOGIA.

In November 2020, the French company Boiron frères filed an international trade mark application designating the European Union as one territory for protection, for the registration of the word mark FRUITOLOGY (No. 1533287), covering various services in Class 41 of the Nice Classification, such as education and entertainment in the culinary field, publication of cookbooks and recipes, organisation and holding of colloquiums, conferences, seminars and congresses in the culinary field, among other related services. However, in March 2021, the Portuguese company Sumol + Compal Marcas SA filed an opposition against the registration of the trade mark applied for, based on the earlier Portuguese trade mark CENTRO DE FRUTOLOGIA (No. 050000582893), which covers, among others, services in the field of education, teaching (academies), training, organisation of training courses in technology and innovation, organisation and holding of conferences, congresses, seminars and training workshops, and cultural activities, all falling within Class 41 of the Nice Classification.

The Opposition Division partially upheld the opposition for all the services except for the publication of cookbooks and recipes. However, the Board of Appeal overturned that decision and rejected the opposition in its entirety, finding that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, which means that, when comparing two marks, it was concluded that the relevant public would not confuse them because of significant differences in their appearance, sound or meaning. 

Sumol + Compal Marcas SA appealed against the decision of the Opposition Division to the General Court of the European Union, which had to decide whether there was a likelihood of confusion between the marks at issue.

As regards the visual similarity of the marks, the court noted that both marks have a very similar sequence of letters, in particular in the central part of the words 'frutologia' and 'fruitology'. The visual similarity focuses on the matching letters 'f', 'r', 'u', 't', 'o', 'l', 'o', 'g', which are almost identical in both marks, the only notable difference being the final letters: 'ia' in 'frutologia' and 'y' in 'fruitology'. Although the earlier mark contains the expression 'centro de', the Court considered that this expression was not sufficiently distinctive to counteract the visual similarity between the central elements of the marks, since the public might focus more on the distinctive parts of the marks, namely 'frutologia' and 'fruitology'.

From a phonetic point of view, the Court stated that the pronunciation of 'frutologia' and 'fruitology' is very similar. The only difference is the final letter, which ends in 'ia' for 'frutologia' and in 'y' for 'fruitology'. However, this difference was considered to be marginal and insufficient to avoid confusion. Although Opposition Division the argued that the first part of a mark has a greater impact on the consumer's perception, the Court held that, despite the presence of 'centro de' in the earlier mark, the phonetic similarity between 'frutologia' and 'fruitology' is so strong that it may lead consumers to confuse the marks, in particular in a context where the public's level of attention is medium.

In addition, the Court pointed out that both marks refer to the idea of study or science in relation to fruit, implying that they are conceptually linked, thus reinforcing the perception that the two marks could offer related services and increasing the likelihood of confusion. 

All in all, the General Court disagreed with EUIPO’s assessment and concluded that there was a likelihood of confusion between the marks in question, leading to the rejection of the trade mark.