One interesting dispute before the General Court of the European Union has been solved recently.
The joined cases T-758/20 и T-759/20 focus our attention on an attempt by Frito Lay to revoke a European trademark ‘MONSTER’ № 009492158, owned by Monster Energy for classes 5, 29, 30, and 33, due to lack of genuine use for a period of five consecutive years.
Monster Energy’s diffensive strategy was to claim that their trademark was used for two classes 30 and 32. The reason for this was one of their products X-PRESSO MONSTER that combines coffee and energy drinks.
The General Court wasn’t impressed at all. The Court confired the general rule for classification where one finished product can be classify only in one Nice class. The only exception here could be if the product is a composite one.
Monster claimed that their product is a multi-purpose composite thing, but the Court disagreed.
A composite product can be such one that is sold as a whole but its components have separate market value and purpose.
The fact that the offered product combines coffee flavour and energy drink doesn’t mean that it is a separate cofee drink as a whole. On the contrary, by its nature this is an energy drink and the flavour cannot change this conclusion.
Consequently, as correctly pointed out by EUIPO and the intervener, coffee-based beverages and energy drinks have different natures and do not fulfil the same main function. The former are characterised by the presence of coffee, whereas the latter include and combine a number of ingredients and coffee or coffee flavouring is given only a secondary role. Consumers are aware of those differences, which are, moreover, reinforced by the applicant’s communications and promotion with regard to the ‘x-presso monster’ goods, as is illustrated by various items of evidence in the case file, including the witness statement of its director or the applicant’s annual report for the year 2020, which highlight the energy content represented by those goods.
Furthermore, as is pointed out by the intervener and as is apparent from a number of the items of evidence which the applicant provided, it is established, as regards the ‘current market conditions for energy drinks’ referred to by the Board of Appeal (see the first contested decision, paragraph 45, and the second contested decision, paragraph 30), that energy drinks flavoured with coffee are usually found on the same shelves as energy drinks with other flavours, whether they are the applicant’s or those of other manufacturers. Consumers do not perceive any difference in function or purpose between the various flavours of energy drinks, whether they are coffee flavoured, cherry flavoured, kiwi fruit flavoured, chewing-gum flavoured or mango flavoured. All of those drinks fulfil the same function, namely that of providing an energy boost.
Based on this the Court dismissed the appeal.