Monster Energy v EUIPO - Hot-Can Intellectual Property (HotoGo self-heating can technology) (Judgment) [2016] EUECJ T-407/15 (20 October 2016)

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(EU trade mark — Opposition proceedings — Application for an EU figurative mark HotoGo self-heating can technology — Earlier EU figurative marks representing claws — Relative grounds for refusal — No similarity of the signs — No likelihood of confusion — No connection between the signs — Article 8(1)(b) and (5) of Regulation (EC) No 207/2009)

Monster Energy Company, established in Corona, California (United States), represented by P. Brownlow, Solicitor,

European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral and P. Ivanov, acting as Agents,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 4 May 2015 (Case R 1028/2014-5), relating to opposition proceedings between Monster Energy Company and Hot-Can Intellectual Property,

composed, at the time of deliberation, of G. Berardis, President, D. Spielmann (Rapporteur) and P.G. Xuereb, Judges,

having regard to the fact that no request for a hearing was submitted by the main parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

1 On 12 December 2012, Hot-Can Intellectual Property Sdn Bhd filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

3 The goods in respect of which registration was sought are in Classes 29, 30 and 33 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond for each of those classes to the following description:

– Class 29: ‘Soups; prepared meals and food predominantly of meat, fish, game, vegetables and/or fruits; milk drinks; flavoured milk drinks; milk-based drinks and malted milk drinks’;

– Class 30: ‘Ready-made drinks comprising coffee, tea, cocoa, artificial coffee, chocolate, herbal tisanes, honey, honey substitute and/or treacle; coffee-based latte drinks; mocha drinks; sweet sauces comprising cocoa, chocolate and/or syrup; sauces of meat, fish, and game, vegetables and/or fruits; flavoured lattes; tea-based drinks with steamed milk’;

– Class 33: ‘Alcoholic beverages (except beers); wines; spirits (beverages); ciders; mulled wine; spiced cider; alcoholic punches; eggnog (alcoholic); pre-mixed alcoholic cocktails; coffee-based drinks with added spirits, including whisky and brandy’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 31/2013 of 13 February 2013.

5 On 13 May 2013, the applicant, Monster Energy Company, filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above, pursuant to Article 41 of Regulation No 207/2009.

7 It was based, first, on the following EU trade mark No 3531639, registered for ‘Medicinal drinks; dietetic substances adapted for medical use’ in Class 5 and ‘Drinks, including soft drinks, carbonated soft drinks and drinks enhanced with vitamins, minerals, nutrients, amino acids and/or herbs’ in Class 32:

8 The opposition was based, secondly, on the following EU trade mark No 9491093, registered for ‘Dairy-based beverages and milk based beverages containing coffee’ in Class 29, ‘Coffee based beverages and coffee based beverages containing milk’ in Class 30 and ‘Alcoholic energy drinks; alcoholic coffee-based beverages and alcoholic beverages (except beers)’ in Class 33:

9 The opposition was based, thirdly, on the following EU trade mark No 7451552, registered for ‘Nutritional supplements’ in Class 5, ‘Clothing, footwear, headgear’ in Class 25 and ‘Non-alcoholic beverages’ in Class 32:

10 The opposition was based, fourthly, on the following EU trade mark No 8214462, registered for ‘Nutritional supplements’ in Class 5 and ‘Non-alcoholic beverages’ in Class 32:

11 The opposition was based, fifthly, on the following EU trade mark No 8463879, registered for ‘Nutritional supplements’ in Class 5 and ‘Non-alcoholic beverages’ in Class 32:

12 The opposition was based, sixthly, on the following EU trade mark No 8527947, registered for ‘Nutritional supplements’ in Class 5 and ‘Beverages, namely, carbonated soft drinks, carbonated drinks enhanced with vitamins, minerals, nutrients, amino acids and/or herbs, carbonated and noncarbonated energy or sports drinks’ in Class 32:

13 The opposition was based, seventhly, on the following EU trade mark No 10346757, registered for ‘Nutritional supplements in liquid form’ in Class 5, ‘Ready to drink tea, iced tea and tea based beverages; ready to drink flavoured tea, iced tea and tea based beverages’ in Class 30 and ‘Non-alcoholic beverages, namely energy drinks, energy drinks flavoured with tea, energy drinks flavoured with juice, sports drinks, and fruit juice drinks having a content of 50% or less by volume; all of the foregoing enhanced with vitamins, minerals, nutrients, amino acids and/or herbs’ in Class 32:

14 The opposition was based, eighthly, on the following EU trade mark No 10346724, registered for ‘Nutritional supplements in liquid form’ in Class 5, ‘Ready to drink tea, iced tea and tea based beverages; ready to drink flavoured tea, iced tea and tea based beverages’ in Class 30 and ‘Non-alcoholic beverages, namely energy drinks, energy drinks flavoured with tea, energy drinks flavoured with juice, sports drinks, and fruit juice drinks having a content of 50% or less by volume; all of the foregoing enhanced with vitamins, minerals, nutrients, amino acids and/or herbs’ in Class 32:

15 The opposition was based, ninthly, on the following EU trade mark No 10346741, registered for ‘Nutritional supplements in liquid form’ in Class 5, ‘Ready to drink tea, iced tea and tea based beverages; ready to drink flavoured tea, iced tea and tea based beverages’ in Class 30 and ‘Non-alcoholic beverages, namely energy drinks, energy drinks flavoured with tea, energy drinks flavoured with juice, sports drinks, and fruit juice drinks having a content of 50% or less by volume; all of the foregoing enhanced with vitamins, minerals, nutrients, amino acids and/or herbs’ in Class 32:

16 The opposition was based, tenthly, on the following EU trade mark No 11154739, registered for ‘Nutritional supplements in liquid form’ in Class 5, ‘Printed matter and publications; posters; stickers and decals; transfers; cards; stationery; signboards’ in Class 16, ‘Clothing, footwear, headgear’ in Class 25, ‘Ready to drink tea, iced tea and tea based beverages; ready to drink flavoured 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’ in Class 30 and ‘Non-alcoholic beverages’ in Class 32:

17 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (5) of Regulation No 207/2009.

18 On 21 February 2014, the Opposition Division found that the marks were dissimilar and rejected the opposition.

19 On 11 April 2014, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division, pursuant to Articles 58 to 64 of Regulation No 207/2009.

20 By decision of 4 May 2015 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. It found that the goods concerned were identical or similar, that the relevant public was the average consumer of the European Union having a relatively low level of attention and that the marks at issue were visually, conceptually and phonetically dissimilar. It concluded from this that, regardless of the degree of similarity or even an identity of the goods at issue or the reputation or enhanced distinctiveness of the earlier marks, there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009. Lastly, the Board of Appeal also found that since the signs were dissimilar overall, the plea in law alleging infringement of Article 8(5) of Regulation No 207/2009 also had to be rejected.

23 In support of its action, the applicant relies, essentially, on a first plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, and a second plea in law, alleging infringement of Article 8(5) of that regulation.

The first plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009

24 Article 8(1)(b) of Regulation No 207/2009 provides that upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

25 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

26 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

27 The Board of Appeal’s assessment relating to the absence of a likelihood of confusion between the signs at issue must be examined in the light of the foregoing considerations.

28 In the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).

29 In the present case, as the Board of Appeal found, which the applicant has not disputed, the signs at issue are EU trade marks covering the totality of the European Union and the goods at issue are everyday foodstuffs, of low value and high frequency of purchase. Consequently, the Board of Appeal rightly found, in essence, that the relevant public was the general public in the European Union having a relatively low level of attention.

30 According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and case-law cited).

31 In the present case, as is apparent from paragraph 3 and paragraphs 6 to 16 above, the goods covered by the mark applied for are foodstuffs, essentially beverages, and the goods covered by the earlier marks are, in particular, beverages. Accordingly, as the Board of Appeal stated, a number of the goods covered by the mark applied for are identical or similar to the goods covered by the earlier marks, which is not indeed disputed by the applicant.

32 It is to be noted that the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

33 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).

34 The Board of Appeal found that, in the mark applied for, the three vertical wavy lines present were not dominant and that there were no negligible elements in the sign. In the earlier marks, it found that the representation of claws was the dominant component visually, like the stylised word ‘monster’ where it appears.

35 The applicant challenges the contested decision on the basis of four complaints, relating, first, to the assessment of the distinctive and dominant elements, secondly, the assessment of the overall impression given by the marks, thirdly, the assessment of the likelihood of confusion and, fourthly, the failure to take into account the earlier marks’ reputation.

36 The applicant submits that the Board of Appeal’s assessment is incorrect as regards the dominant elements of the mark applied for. In the applicant’s view, the three vertical wavy lines in the centre of the mark constitute the distinctive and dominant element and the other figurative and word elements, descriptive of the goods at issue, are negligible.

38 It is to be noted that as regards the assessment of the dominant character of one or more given components of a complex trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the complex mark (judgment of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraphs 33 to 35). Similarly, the notion of the distinctive character which an element of a complex mark possesses is concerned with its ability to dominate the overall impression created by the mark (order of 27 April 2006, L’Oréal v OHIM, C‑235/05 P, not published, EU:C:2006:271, paragraph 43, and judgment of 9 April 2014, MHCS v OHIM — Ambra (DORATO), T‑249/13, not published, EU:T:2014:193, paragraph 47).

39 In the present case, the mark applied for includes the word element ‘hotogo self-heating can technology’ in slightly stylised letters the colour of which varies from light grey to dark grey. There is a graphic representation above those words of the top of a drinks can, from the opening of which three wavy lines emerge. All those elements are set against a black background and the three lines protrude slightly above the top of the sign.

40 It must be found that, visually, the three wavy lines cannot be considered dominant.

41 Indeed, the word element ‘hotogo’ is at least as visually important as the three wavy lines, which do not, therefore, dominate the sign as a whole. In addition, as EUIPO states, the perception in particular of the word element ‘hot’ enables the meaning of the three wavy lines to be understood as implying a source of heat emanating, in this case, from the top of the can.

42 In addition, as EUIPO states, the three wavy lines are depicted in the respective corresponding shade of grey in which the word elements ‘ho’ (light grey), ‘to’ (grey) and ‘Go’ (dark grey) are represented. Those wavy lines are, therefore, integrated in the mark as a whole and, as to colour, associated with the word element ‘hotogo’ which is at least as visually important as the wavy lines.

43 In addition, it is true that the word element ‘self-heating can technology’ is written in fairly small characters and that the figurative element in the form of the top of a can is in the background. It is also true that, as the Board of Appeal itself accepted, the word element ‘self-heating can technology’, referring to a self-heating can, is descriptive of the goods at issue, at least for English speakers. However, contrary to the applicant’s claims, those elements are not negligible within the meaning of the case-law applicable (see paragraph 33 above). The word element ‘self-heating can technology’ is easily legible and is not descriptive for the non-English-speaking public. In addition, the can, which is in the top part of the sign, stands out clearly from the black background. It is given prominence by the fact that the wavy lines symbolising the heat emerge from it and it is, therefore, the source of that heat. Consequently, those elements will not be overlooked by the relevant public.

44 Lastly, where a mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter, since the average consumer will more easily refer to the goods in question by citing the name rather than describing the figurative element of the mark (see judgment of 26 May 2016, Sfera Joven v EUIPO — Las banderas del Mediterráneo (NOOSFERA), T‑99/15, not published, EU:T:2016:321, paragraph 36 and the case-law cited). The figurative element consisting in three wavy lines cannot, therefore, be considered a distinctive and dominant element in the mark applied for.

45 The figurative and word elements constitute, therefore, a whole and none of those elements can be considered negligible in the overall perception of the mark applied for.

46 The Board of Appeal rightly, therefore, found that the three wavy lines did not constitute the dominant element in the mark applied for.

47 It follows that the comparison of the mark applied for with the earlier marks cannot be carried out solely on the basis of that single figurative element composed of three wavy lines, but must take into account all the elements of the mark applied for, none of which is negligible.

48 The applicant submits that since the three wavy lines are the distinctive and dominant element of the mark applied for, there is a strong visual similarity and also a strong conceptual similarity with the three parallel non-straight lines of the earlier marks, which had been incorrectly described as the letter ‘m’. It further submits that the phonetic comparison is neutral, since the distinctive part of the signs at issue is figurative and they cannot, therefore, be pronounced.

50 First of all, as has been held (paragraphs 40 to 46 above), the applicant’s assertion that the three wavy lines in the mark applied for constitute the distinctive and dominant element is incorrect.

51 Next, as regards the visual comparison of the marks at issue, the argument that the Board of Appeal incorrectly presented the figurative element of the earlier marks as representing the letter ‘m’ must be rejected. Visually, the Board of Appeal identified that figurative element as a ‘claw device’. If the figurative element of the three wavy lines in the mark applied for is alone compared with the ‘claw device’ of the earlier marks, it must be found that there are considerable differences. The ‘claw device’ may be described as three vertical slashes that claws might make, ripping from top to bottom. As the Board of Appeal stated, those lines, roughly drawn, are reminiscent of prongs or scratches, with the middle line longer than the other two. In the mark applied for, by contrast, the three wavy lines are identical to each other (but for shading), smooth, curvy and altogether softer. Visually, the earlier marks’ device gives the impression of a vigorous ‘slash’ downwards, while the lines in the mark applied for give the impression of vapour (steam) gently rising upwards. Those figurative elements display, therefore, considerable differences. Moreover, and above all, if all the elements — figurative and word — in the mark applied for are taken into consideration, the marks at issue are very different visually. The mere fact that the marks include three parallel, non-straight lines does not invalidate that finding, since there is no element in the earlier marks which resembles the word elements in the mark applied for.

52 The Board of Appeal was, therefore, correct to find that there was no visual similarity.

53 In addition, the applicant states that there is a strong conceptual similarity between the marks at issue. However, that argument, which is in no way substantiated, must be rejected. If the overall impression given by the marks at issue is taken into account, the expressions ‘hotogo’ and ‘self-heating can technology’ refer, for the English-speaking public, to the concept of heat. Furthermore, even for a non-English-speaking public, the concept of heat or steam will be perceived as a result of the wavy lines emanating from the top of the can. By contrast, that concept of heat or steam is clearly absent from the earlier marks. As the Board of Appeal stated, in those marks the ‘claw device’ refers to the letter ‘m’, at least when the word ‘monster’ is present in the earlier mark, and to the concept of monster, in the sense of ‘large’ or ‘excessive’, and to energy when those words appear in the mark. The conceptual content of the marks at issue is, therefore, different.

54 The Board of Appeal did not, therefore, err in finding that the marks at issue were conceptually dissimilar.

55 Lastly, as regards the phonetic comparison, it is to be noted that where a purely figurative mark represents a shape which the relevant public is easily able to recognise and associate with a specific, concrete word, they will use that word to refer to the mark, whereas if a figurative mark also includes a word element, in general it will be through the use of that word element that the relevant public will refer to the mark (judgment of 7 May 2015, Cosmowell v OHIM — Haw Par (GELENKGOLD), T‑599/13, EU:T:2015:262, paragraph 53).

56 In the present case, the phonetic comparison must be carried out between, first, the mark applied for, namely, a figurative mark which also includes word elements and, secondly, the earlier marks, some of which are purely figurative and others figurative and word marks. First, as regards the earlier marks without word elements, it must be stated that they are composed of figurative elements which cannot be immediately associated with a specific, concrete word. Consequently, it is impossible to carry out a phonetic comparison with the mark applied for. Secondly, as regards the earlier marks with word elements, it must be found that they include neither the expression ‘hotogo’ nor the words ‘self-heating can technology’, present in the mark applied for.

57 In the light of those factors, the Board of Appeal’s conclusion that there is no phonetic similarity between the marks at issue must be endorsed.

58 It follows from all the foregoing that the marks at issue are dissimilar overall.

59 Since, in accordance with the case-law referred to in paragraph 26 above, one of the cumulative conditions necessary for finding that there is a likelihood of confusion has not been fulfilled, the Board of Appeal was fully entitled to conclude that there was no such likelihood of confusion in the present case, regardless of the degree of similarity or even the identical nature of the goods at issue or the reputation or enhanced distinctiveness of the earlier marks.

The second plea in law, regarding the reputation of the earlier marks and alleging infringement of Article 8(5) of Regulation No 207/2009

61 Article 8(5) of Regulation No 207/2009 provides that upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2), the trade mark applied for is not to 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 EU trade mark, the trade mark has a reputation in the European 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 trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

62 The Board of Appeal found in essence in the present case that since the signs were dissimilar overall, there was no likelihood that consumers would make a connection between the signs as provided for in Article 8(5) of Regulation No 207/2009, notwithstanding, first, the identity or similarity of the goods at issue and, secondly, the earlier marks’ alleged high level of distinctiveness.

63 The applicant submits that the Board of Appeal acknowledged that the earlier mark enjoyed a significant reputation and concluded, therefore, wrongly, that there was no likelihood of confusion.

65 For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation No 207/2009, a number of conditions must be satisfied. First, the earlier trade mark which is claimed to have a reputation must be registered. Secondly, that mark and the mark applied for must be identical or similar. Thirdly, it must have a reputation in the European Union, in the case of an earlier EU trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Fourthly, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. As those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (judgments of 22 March 2007, Sigla v OHIM — Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraphs 34 and 35, and 11 July 2007, Mülhens v OHIM–Minoronzoni (TOSCA BLU), T‑150/04, EU:T:2007:214, paragraphs 54 and 55). Lastly, it must be pointed out that the condition that the signs at issue must be identical or similar is common to Article 8(1)(b) and Article 8(5) of that regulation (judgment of 10 December 2015, El Corte Inglés v OHIM, C‑603/14 P, EU:C:2015:807, paragraph 38).

66 Given that it is not apparent either from the wording of paragraphs 1(b) and 5 of Article 8 of Regulation No 207/2009 or from the case-law of the Court of Justice and the General Court that the concept of similarity has a different meaning in each of those paragraphs, it follows, inter alia, that, if, in examining the conditions for the application of Article 8(1)(b) of that regulation, the General Court concludes that there is no similarity between the signs at issue, paragraph 5 of Article 8 also necessarily does not apply to the case in point (judgment of 10 December 2015, El Corte Inglés v OHIM, C‑603/14 P, EU:C:2015:807, paragraph 39).

67 In the present case, it must be found, as EUIPO contends, that the existence of a possible reputation of the earlier marks was not examined by the Board of Appeal. The latter indeed found that one of the cumulative conditions for applying Article 8(5) of Regulation No 207/2009, namely, the existence of a connection between the sign applied for and the earlier mark, was not satisfied on the ground that the signs were dissimilar overall. Consequently, the applicant’s assertion that the Board of Appeal acknowledged that the earlier mark enjoyed a significant reputation is incorrect.

68 In addition, the Board of Appeal’s conclusion that there is no likelihood that the relevant public will make a connection between the signs at issue must be endorsed. It is apparent from the examination of the comparison of the signs that they cannot be perceived as being similar (paragraphs 38 to 58 above).

69 Consequently, in accordance with the case-law referred to in paragraphs 65 and 66 above, one of the cumulative conditions for applying Article 8(5) of Regulation No 207/2009 has not been satisfied and the applicant’s argument in that regard must be rejected.

70 It follows that the second plea in law, alleging infringement of Article 8(5) of Regulation No 207/2009, must also be rejected.

71 Accordingly, the present action must be dismissed in its entirety and there is no need to adjudicate on the admissibility of the second and third heads of claim, seeking the annulment of the Opposition Division’s decision and to have the application to register the mark applied for refused.

72 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

73 Since the applicant has been unsuccessful, it must be ordered to pay the costs in accordance with the form of order sought by EUIPO.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Monster Energy v EUIPO - Hot-Can Intellectual Property (HotoGo self-heating can technology) (Judgment) [2016] EUECJ T-407/15 (20 October 2016) URL: http://www.bailii.org/eu/cases/EUECJ/2016/T40715.html Cite as: EU:T:2016:624, ECLI:EU:T:2016:624, [2016] EUECJ T-407/15

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