BACKGROUND TO THE DISPUTE

On 3 November 2010, MONSTER ENERGY CO., filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO). Registration as a mark was sought for the word sign “MONSTER”. The goods in respect of which registration was sought are in Classes 30 and 32 of the Nice Agreement:

  • Class 30: ‘Coffee based beverages and coffee based beverages containing milk´
  • Class 32: ‘Non-alcoholic beverages, namely energy drinks and energy drinks flavoured with coffee, all enhanced with vitamins, minerals, nutrients, amino acids and/or herbs´

On 5 November 2010, MONSTER ENERGY CO. filed another application for registration of an EU trade mark with EUIPO, which related to the word sign “MONSTER ENERGY”. The goods in respect of which registration was sought are in Class 30 and correspond to the following description:

  • Class 30: ‘Coffee based beverages and coffee based beverages containing milk´

on the other hand, on 25 April 2017, FRITO-LAY TRADING COMPANY GMBH, filed applications for revocation of the contested marks on the ground that those marks had not been put to genuine use within a continuous period of five years.

In response to the above, the applicant submitted evidence of use of those marks. the Cancellation Division revoked the contested marks finding that use of those marks had been proved only in connection with energy drinks which fell within Class 32.

The applicant filed two notices of appeal with EUIPO which, however, the Second Board of Appeal of EUIPO dismissed the applicant’s appeals, on the ground that the applicant had not proved genuine use in relation to goods in Class 30.

DECISION OF THE GENERAL COURT

Under Article 51(1)(a) of Regulation No 207/2009, the rights of the proprietor of an EU trade mark are to be declared to be revoked, inter alia on application to EUIPO, if, within a continuous period of five years, the trade mark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.

In proceedings for the revocation of a mark, it is, in principle, for the proprietor of the mark to establish genuine use of that mark (which is a conditio sine qua non for granting or not granting exclusive rights in his sign).

The General Court, on the alleged failure to have regard to the ‘principle that a product can be put to genuine use in more than one class in view of its composite nature’ ruled that:

  • “References made on the packaging of these drinks to the term “x-presso”, to mean “espresso”, or to the term “coffee”, are likely to be interpreted by consumers as a reference to the flavouring used in these energy drinks, and not as an indication that they are drinks prepared “based on” coffee.”
  • The English product description “espresso coffee drink with milk” does not actually appear in a prominent place on the packaging of the “x-presso monster” products, but this information is found on the back of the cans written in small characters’.
  • Finally, the reference to coffee in the list of ingredients on the packaging (‘coffee extract 1,3 %’) reinforces the idea that it is, in itself, only one of the many substances which make up that drink.
  • The claim that the applicant’s canned beverage can be understood as separate elements, ‘but on the contrary constitute a homogeneous and inseparable product’, is unfounded.

Subsequently, the General Court, analysing briefly the mode of sale and the purpose of these products, comes to the following conclusions:

  • “Coffee-flavoured energy drinks are commonly found on the same shelves as energy drinks with other flavours, whether from the applicant or from other manufacturers.”
  • Consumers do not perceive any difference in function or purpose between the various flavours of energy drinks, whether they are coffee, cherry, kiwi, bubblegum or mango flavoured. All those drinks fulfil the same function, namely to provide an energy boost’.

Finally, the General Court states: “It follows from the foregoing that the first head of claim must be rejected and, consequently, the second one “.

JUDGMENT OF THE GENERAL COURT (SIXTH CHAMBER) OF 10 NOVEMBER 2021. JOINED CASES T 758/20 AND T 759/20