On December 10, 2020, the applicant, Monster Energy Co. (hereinafter, “Monster”), filed an invalidity action before the EUIPO against the trademark “Insomnia Energy,” which was registered in Class 32, covering energy drinks.

Monster argued that the invalidity request was based on the unfair exploitation of the fame of its mark. However, the Cancellation Division rejected the request, concluding that there was no likelihood of confusionbetween the conflicting marks and that the degree of similarity between the signs was extremely low. Therefore, the Cancellation Division found no link between them, despite the significant renown of the earlier MONSTER mark.

Subsequently, Monster appealed the decision to the EUIPO, which annulled the Cancellation Division’s decision and declared the “Insomnia Energy” mark entirely invalid. The EUIPO’s decision was based on Monster’s strong reputation in Europe and the similarity in structure between both trademarks, particularly the common verbal element “Energy.” Therefore, the EUIPO considered that the renown and high distinctiveness of Monster’s mark could offset the low degree of similarity between the two marks and declared “Insomnia Energy” invalid.

Finally, “Insomnia Energy” appealed the EUIPO’s decision, requesting that the Court annul the decision and impose costs on the opposing party. In turn, Monster and the EUIPO requested the dismissal of the appeal and that the applicant be ordered to pay the costs.

The appeal raised the issue of whether the requested mark infringed Article 8(5) of the EUTMR. In this regard, the greater the reputation of the earlier mark, the greater the protection it deserves against unfair exploitation by third parties. To assess whether this article had been violated, the Court considered whether the following requirements were met:

  1. Renown of the earlier mark: The earlier mark must be shown to have significant recognition.
  2. Similarity or identity between the marks: The marks must exhibit some degree of similarity.
  3. Risk of unfair exploitation: There is a risk that the use of the contested mark without justification exploits the distinctive character or reputation of the earlier mark.

Regarding similarity, the Court acknowledged that, while the marks did not share considerable similarity, the verbal element “Energy” was not insignificant. Moreover, the marks shared a color scheme (black, green, and white), which reinforced their structural and positional similarity.

Regarding the reputation of the earlier mark, the Court confirmed the notoriety of the EU mark Monster. This notoriety was well-documented, as the mark is widely recognized in the energy drinks sector. Furthermore, the appeal did not succeed in overturning the reasoning of the Board of Appeal.

Therefore, the Court concluded that there was a risk of unfair exploitation and dismissed the appeal filed by Insomnia Energy, upholding the EUIPO’s decision.

 

JUDGMENT OF THE GENERAL COURT (First Chamber), of October 23, 2024, in Case T 59/24.