Case T‑274/17

(publication by extracts)

Monster Energy Company

v

European Union Intellectual Property Office

(EU trade mark — Opposition proceedings — Application for EU figurative mark MONSTER DIP — Earlier EU word and figurative marks and unregistered sign used in the course of trade, all including the word element ‘monster’ — Relative grounds for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) — No likelihood of misleading association — Article 8(4) of Regulation No 207/2009 (now Article 8(4) of Regulation 2017/1001) — No likelihood of dilution of the reputation of the earlier mark — Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001))

Summary — Judgment of the General Court (Ninth Chamber), 13 December 2018

EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Figurative marks MONSTER DIP and MONSTER ENERGY — Establishment of the link between the marks — Account taken only of the goods concerned by the reputation

(Council Regulation No 207/2009, Art. 8(5))

The finding that there is no connection between MONSTER DIP, the figurative mark applied for, and the earlier figurative mark MONSTER ENERGY in the mind of the relevant public cannot be called into question by the applicant’s argument that the Board of Appeal should also have taken into account the goods for which the earlier EU figurative mark MONSTER ENERGY was not reputed, such as the goods ‘stickers’, ‘decals’ and ‘transfers’ in Class 16 covered by that earlier mark. Indeed, the absence of reputation implies that one condition for the application of Article 8(5) of Regulation No 207/2009 is not satisfied, and thus, there can be no detriment to the earlier mark in question. In other words, since the reputation of the earlier mark is a prerequisite for the existence of any of the infringements referred to in Article 8(5) of that regulation, including the detriment to the distinctive character of the earlier mark known as trade mark dilution, it follows that none of the infringements referred to in that provision can be found as regards the goods and services in relation to which the condition relating to the reputation of the earlier mark is not satisfied. Thus, it is appropriate to reject the applicant’s argument seeking to show that the Board of Appeal erred in taking into account, in order to establish the link between the marks at issue, only the goods in respect of which a reputation of the earlier mark had been demonstrated.

(see para. 82)