{"id":12506,"date":"2024-11-12T08:46:27","date_gmt":"2024-11-12T07:46:27","guid":{"rendered":"https:\/\/blogip.garrigues.com\/?p=12506"},"modified":"2024-11-12T08:50:45","modified_gmt":"2024-11-12T07:50:45","slug":"rejection-of-the-trademark-registration-insomnia-energy-following-the-application-for-a-declaration-of-invalidity-filed-by-monster-energy-co","status":"publish","type":"post","link":"https:\/\/blogip.garrigues.com\/en\/trademarks\/rejection-of-the-trademark-registration-insomnia-energy-following-the-application-for-a-declaration-of-invalidity-filed-by-monster-energy-co","title":{"rendered":"Rejection of the trademark registration \u201cInsomnia Energy\u201d following the application for a declaration of invalidity filed by Monster Energy Co."},"content":{"rendered":"

Last October 23, the General Court of the European Union refused the figurative trademark registration \u201cInsomnia Energy\u201d on the grounds that the proprietor – BBF Company EOOD – was taking unfair advantage of the reputation of the mark \u201cMonster Energy\u201d, owned by Monster Energy Co.<\/strong><\/p>\n

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The conflict arose in December 2020 when Monster Energy Co. filed an application for a declaration of invalidity at the European Union Intellectual Property Office\u00a0(EUIPO) against the sign \u201cInsomnia Energy\u201d as a figurative European trademark<\/strong>. That mark had been registered on October 9, 2016 by BBF Company EOOD for goods in class 32 (principally fruit-based soft drinks, energy drinks and non-alcoholic beverages).\"\"<\/p>\n

Monster Energy Co. argued that its earlier figurative trademark – with the same name as that of the company and registered on January 9, 2013 – also covered, among other goods, \u00abnon-alcoholic beverages\u00bb in the same class.<\/p>\n

The invalidity application filed by Monster Energy Co. was based on article 8.5 of the EU Trademark Regulation<\/a> (EUTMR) and essentially held that BBF\u2019s registration took unfair advantage of its trademark for energy drinks, which occurs when the registered trademark<\/strong>:<\/p>\n

\u201cis identical with, or similar to, an earlier trademark, and the goods or services for which it is filed are not similar to those for which the earlier [EU] trademark is registered, where, in the case of an earlier [EU] trademark, it has a reputation in the [EU]; and in the case of an earlier national trademark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the trademark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.\u201d<\/p>\n

In December 2022, EUIPO\u2019s Cancellation Division dismissed the invalidity application filed two years earlier by Monster Energy Co. in its entirety, on the grounds that there was no likelihood of confusion between the marks.<\/p>\n

However, in December 2023 EUIPO\u2019s Board of Appeal annulled that decision, finding that such risk did exist and declared the contested mark invalid in its entirety. When comparing the marks, the Fourth Board of Appeal found that in light of the reputation of Monster\u2019s trademark, the differences between the marks were insufficient to rule out a likelihood of confusion or that unfair advantage was being taken of the reputation of the earlier mark. In particular, the Chamber attached particular importance to the similarities between the marks in the exact reproduction of the word element \u201cEnergy\u201d (also in terms of its font, color, size and position), as well as the use of the same colors (black, green and white) and the similar stylisation of the word elements \u201cMonster\u201d and \u201cInsomnia\u201d, despite the fact that they were totally different words.<\/p>\n

In February 2024, BBF appealed the decision by the EUIPO at the General Court of the European Union (GCEU) on the grounds that (i) the reputation of the earlier mark had not been assessed correctly; (ii) nor the likelihood of confusion, since it had not been borne in mind that the dominant elements of the conflicting marks were \u201ctotally different\u201d, with a difference between the signs at issue from a visual, phonetic and conceptual standpoint.<\/p>\n

Finally, in its \u00a0judgment<\/a> of October 23, the General Court analyzed whether the contested mark came under the prohibition on registration set forth in article 8.5 EUTMR, i.e., whether the trademark \u201cMonster Energy\u201d was well-known and if by using the registered trademark without due cause BBF sought to take unfair advantage of the reputation of the well-known energy drinks mark. In relation to the comparison between both signs the GCEU has held as follows:<\/p>\n