Monster’s brand appeal is wearing thin

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In Joined Cases T-758/20 and T-759/20, the General Court revoked the EU trade mark registrations for the trade marks MONSTER and MONSTER ENERGY after Monster Energy Co failed to demonstrate that the evidence of use of the mark on a product covered two classes of wares.

The cases concerned revocation proceedings for non-use which were filed by Frito-Lay Company GmbH against European Registration No. 9492158 for the trademark MONSTER and No. 9500448 for the trademark MONSTER ENERGY, both owned by Monster Entergy Co (“Monster”). The relevant goods for the purposes of this decision are:

  • Class 30: “Coffee-based beverages and coffee-based beverages containing milk in Class 30”;
  • Class 32: “Non-alcoholic beverages, namely energy drinks and energy drinks flavored with coffee, all enriched with vitamins, minerals, nutrients, amino acids and/or herbs falling within Class 32”.

Monster appealed to the General Court after the EU Board of Appeal for Intellectual Property Offices found that the evidence of use only related to Class 32 goods and therefore revoked the two registrations relating to the class 30. The evidence filed by Monster related to two beverages supplied in cans under the brand names ‘x-presso monster hammer’ and ‘x-presso monster midnight’.

Monster argued that the Board of Appeal failed to consider that a finished product which is a composite general-purpose article can be classified, and therefore put to genuine use, in all the classes which correspond to the any of its functions or purposes. Monster argued that a consumer could buy its ‘x-presso monster’ products either because they want a class 30 ‘coffee drink’ or because they want an ‘energy drink’ class 32. Monster relied on a number of items to support this argument, including the product description “espresso coffee drink with milk” and the inclusion of coffee in the ingredient list.

Monster’s argument was based on the Nice Classification General Remarks, which provide guidelines on how goods should be classified. These words currently read as follows:

  1. A finished product is in principle classified according to its function or destination….
  2. A finished product which is a composite object with multiple uses (eg clocks incorporating radios) may be classified in all classes which correspond to any of its intended functions or purposes. However, if a product has a main destination, it must be classified in this class. If these functions or purposes are not mentioned in any class heading, other criteria, indicated under (a), above, must be applied.

Monster argued that the Board of Appeal incorrectly applied criterion (a) relating to a finished product – according to Monster, criterion (b) should have been applied because the products were in fact a multi-purpose composite product which should have been classified both in class 30 and 32 using the second criterion above.

The Board of Appeal found that the real function or purpose of the x-presso monster products was to provide an energy boost and that the products were therefore energy drinks in class 32, although they were energy drinks flavored with coffee. The Court agreed with this assessment, dismissing Monster’s claim that consumers buy the products as coffee drinks rather than energy drinks as unsubstantiated.

Upon detailed examination, it was found that references to coffee on the packaging of monster x-presso products were more likely to be understood by consumers as a reference to the flavor of the energy drink, rather than an indication that the products have been prepared. Coffee. The Tribunal considered the guidelines associated with Classes 30 and 32 of the Nice Classification, including the fact that coffee and other non-alcoholic beverages are expressly classified in different classes and that coffee-based beverages are expressly excluded from Class 32. Ultimately, it concluded that “a drink which is merely ‘coffee flavoured’ and which is not ‘coffee-based’ therefore falls within Class 32 and not Class 30. “

The idea that Monster wares should have been classified as general-purpose composite objects was also rejected. Multipurpose composite objects are made up of a number of components that perform more than one function, each of which has an independent function and could be marketed without the other specific component with which it is sold. The example used in the Nice classification guidelines is a clock radio. Monster’s products were found to be an inseparable product performing one primary function, namely as an energy drink.

Key points to remember

While the Nice Classification is often referred to as an administrative tool, this decision demonstrates that it is more than that and the guidance contained in the Nice Classification can be important in helping IPOs and courts identify issues of non-use. However, the decision does not necessarily pave the way for competitors to start selling coffee under the MONSTER or MONSTER ENERGY brand – it is still open to Monster to argue that coffee and energy drinks are like products in a case. of offence.

The case is a useful reminder of the need to use a mark in connection with all covered goods and services. Trademark owners should be encouraged to think carefully about how their products will be classified according to their primary purpose and function, and should not assume that a product will support registration in multiple classes unless that product is clearly a multi-purpose composite product made up of independent components. that perform different functions.

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