Recent case law from the General Court: Pollini case and Monster Energy case.

POLLINI – COLLINI (case T‑69/21)

The present case refers to the request of registration for the figurative mark “Collini” for products in classes 18 and 25. 

The dispute arose when an opposition was filed by the Italian company Pollini SpA., pursuant to article 8.1.b) of the European Union Trade Mark Regulation and based on the following earlier trade marks: 

- National Italian word mark “Pollini”, for classes 18 (amongst others, bags, handbags, leather goods) and 25 (shoes, boots, sandals, clothing). 

- EUTM word mark “Studio Pollini”, for classes 18 and 25. 

Pollini SpA was requested by Collini’s applicant to submit proof of use, necessary for the assessment of genuine use of its national trade mark. However, the opposition division didn’t examine it, since they didn’t appreciate similarity between both marks. 

As a consequence, the opposition was rejected in its entirely and the decision appealed by Pollini SpA. The Boards of Appeal (BoA) annulled this decision, as they considered that both marks were similar and therefore, the proof of use of the national TM “Pollini” - submitted by Pollini SpA -, should have been examined by the opposition division. 

The owner of “Collini” decided to raise an appeal against BoA’s decision before the General Court.

The Court shared the same opinion as the BoA, with regard to the similarity assessment, which is necessary to determine the existence of likelihood of confusion This is essentially, that medium visual similarity exists between the figurative mark “Collini” and the national word mark “Pollini”. 

Furthermore, from a phonetical perspective, the fact that in both signs the same letters are present in the same order («o», «l», «l», «i», «n», «i»), except for the first one, made the Court conclude that there is a medium, or even high, level of similarity. 

As first stated by the BoA and now by the Court, there was an obligation for the opposition division to consider the proof of use of the earlier Italian trade mark, since there was similarity at a visual and phonetical level, which was sufficient to find a likelihood of confusion between both signs.

The appeal was dismissed by the Court, since the applicant’s arguments were rejected and the decision issued by the BoA was corrected. To summarise, the Court found likelihood of confusion, in accordance to article 8.1.b) EUTMR, which should have been appreciated by the opposition division, due to the level of similarity between the sought EUTM and the earlier Italian mark “Pollini”. Consequently, the proof of use should have been examined. 

MONSTER ENERGY 

In 2010, the company Monster Energy Co. sought for registration at the EUIPO of 2 word marks, concretely “MONSTER ENERGY”, for goods in Class 30 (Coffee based beverages and coffee based beverages containing milk), and “MONSTER” for goods in class 30 and 32 (Non-alcoholic beverages, namely energy drinks and energy drinks flavoured with coffee, all enhanced with vitamins, minerals, nutrients, amino acids and/or herbs). 

Afterwards, the company Frito-Lay Trading Company GmbH applied to revoke the above-mentioned marks, on the basis that they “had not been put to genuine use within a continuous period of five years”. As a result, the Cancellation Division revoked the marks in relation to the goods concerned in class 30 since, from the evidences submitted by Monster Energy, the use was not proved for all products, only for energy drinks. Monster submitted “x-presso monster hammer” and “x-presso monster midnight” (from now on, the “x-presso monster” goods). 

Consequently, Monster Energy lodged an appeal against the revocation decisions. First the Boards of Appeal and then the General Court, dismissed Monster’s claims. 

First, it would be necessary to distinguish “coffee-based beverages” in class 30 and “energy drinks” in class 32.

Monster Energy Co. argued that some consumers would buy “x-presso monster” drinks as coffee-based beverages in class 30, and not as energy drinks with coffee flavour. 

The Court rejected this argument and considered that the indications “x-presso”, like the Italian term espresso, present on the packing of “x-presso monster”, were for consumers indicators of the coffee flavour of the energy drink, rather than referring to coffee-based drinks.   

To support its reasoning, the Court highlighted that the presence on the packaging of the terms “energy” and “coffee” means that consumers will associate “x-presso monster” products to energy beverages.

In that context, the term “expresso coffee drink with milk” was not in a prominent position, but in the pack of the packaging. In addition to this, it was followed by a list of ingredients (such as taurine, L-carnitine, ginseng and B vitamins) which were more likely to be found in energy drinks rather than in coffee-base beverages. 

Therefore, despite being coffee-flavoured, the purpose of those beverages was the same that of an energy drink.

The General Court concluded that the assessment of the genuine use couldn’t be proved by Monster, for products in class 30, since the beverages commercialised under “x-presso monster” were not coffee-based products, but coffee-flavoured energy drinks. The purpose was to serve as energy drinks, even if coffee-flavoured.  The function is the same and therefore consumers will associate those beverages as an energy boost. Consequently, Monster’s trade marks remained revoked in relation to coffee-based products.