JUDGMENT OF THE GENERAL COURT (Sixth Chamber)

14 July 2016 (*)

(EU trade mark — Opposition proceedings — Application for EU figurative mark MAD CATZ — Relative ground for refusal — No likelihood of confusion —Article 8(1)(b) of Regulation (EC) No 207/2009)

In Case T‑429/15,

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

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by A. Schifko, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being

Mad Catz Interactive, Inc., established in San Diego, California (United States),

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 21 May 2015 (Case R 2176/2014-4), concerning opposition proceedings between Monster Energy Company and Mad Catz Interactive,

THE GENERAL COURT (Sixth Chamber),

composed of S. Frimodt Nielsen (Rapporteur), President, A.M. Collins and V. Valančius, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the General Court on 27 July 2015,

having regard to the response lodged at the Court Registry on 21 October 2015,

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 closure 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,

gives the following

Judgment

 Background to the dispute

1        On 30 November 2012, Mad Catz Interactive, Inc., lodged 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).

2        The trade mark for which registration was sought is the following figurative sign:

3        The goods in respect of which registration was applied for are in, inter alia, Class 25 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 to the following description: ‘Clothing, footwear, headgear’.

4        The EU trade mark application was published in European Union Trade Marks Bulletin No 39/2013 of 25 February 2013.

5        On 16 May 2013 the applicant, Monster Energy Company, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for on the basis of the following earlier rights:

–        EU figurative mark No 6433817, filed on 13 November 2007 and registered on 6 November 2008, inter alia for goods in Class 25:

–        EU figurative mark No 7444243, filed on 5 December 2008 and registered on 2 September 2010, inter alia for goods in Class 25:

–        EU figurative mark No 7451552, filed on 9 December 2008 and registered on 10 June 2009, inter alia for goods in Class 25:

–        The international registration designating the European Union No 1048069, registered on 28 June 2010, inter alia for goods in Class 25:

6        The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) and 8(5) of Regulation No 207/2009.The opposition was based on all of the goods covered by the earlier rights in Class 25.

7        On 23 June 2014, the Opposition Division rejected the opposition in its entirety on the ground that the signs were not similar.

8        On 21 August 2014, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.

9        By decision of 21 May 2015 (‘the contested decision’), the Fourth Board of Appeal of EUIPO confirmed the decision of the Opposition Division and dismissed the appeal in its entirety. In the first place, it stated that the goods in Class 25 were everyday consumer items intended for the general public, who, when purchasing those goods, display an average degree of attention. In the second place, concerning the earlier EU trade mark No 6433817, the Board of Appeal held that there was no visual, phonetic or conceptual similarity between the marks at issue. As regards the earlier international registration No 1048069, it essentially took the view that the additional word elements ‘monster’ and ‘energy’ made the marks even more different and that the fact that the two marks begin with the same letter ‘m’ in no way altered that conclusion. The Board of Appeal also found that the same reasoning applied to the two other earlier marks, which were, therefore, also different to the mark applied for. In the third place, the Board of Appeal stated that, in so far as all the earlier marks differed from the mark applied for, one of the preconditions referred to in Article 8(1)(b) of Regulation No 207/2009 for a likelihood of confusion was missing, and that this was irrespective of whether the earlier marks enjoyed, or did not enjoy, a reputation.

 Forms of order sought

10      The applicant claims that the Court should:

–        annul the contested decision;

–        annul the decision of the Opposition Division;

–        reject the mark applied for;

–        order EUIPO to pay the costs.

11      EUIPO claims that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

12      In support of the action, the applicant raises several pleas in law, alleging, in essence, infringement of Article 8(1)(b) and 8(5) of Regulation No 207/2009.

 Infringement of Article 8(1)(b) and 8(5) of Regulation No 207/2009

13      The applicant claims that the Board of Appeal infringed Article 8(1)(b) and 8(5) of Regulation No 207/2009. In the first place, it argues, the Board of Appeal wrongly assessed the overall impression created by the marks, stating that the stripes which appear on the mark applied for were not a stylised version of a claw device, an image which the earlier marks also represented. In the second place, the Board of Appeal wrongly concluded that there was no similarity between the marks at issue, which represented a claw or a mark made by claws, included a word element which began with the same letter ‘m’ and which matched conceptually because of the reference to ‘monster’ and to ‘mad cat’. In the third place, it submits, the Board of Appeal was also wrong to find that there was no likelihood of confusion between those marks. In the fourth place, it argues, the Board of Appeal wrongly held that Article 8(5) of Regulation No 207/2009 did not apply to the present case.

14      EUIPO disputes the applicant’s arguments.

15      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 is not to 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.

16      According to established case-law, the risk that the public might 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 that same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services in question, and taking account of all factors relevant to the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see judgment of 9 July 2003 in 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).

17      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 in Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

 The relevant public

18      As regards the definition of the relevant public, it is apparent from paragraph 12 of the contested decision that the Board of Appeal took the view that the goods at issue were everyday consumer goods intended for the average consumer in the European Union, who is deemed to be reasonably well informed and reasonably observant and circumspect.

19      Having regard to the material in the file, it is necessary to confirm that definition of the relevant public, which, moreover, is not disputed by the parties.

 The comparison of the signs

20      The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. 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 proceed to analyse its various details (see judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

21      The 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 in 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 in OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007 in Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 42). That may be the case, in particular, where that component is likely by itself to dominate the image which the relevant public retains of that mark, with the result that all the other components of the mark are negligible in the overall impression created by the mark (judgment of 20 September 2007 in Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).

22      In the present case the Board of Appeal compared the signs by comparing each of the four earlier rights with the mark applied for.

 The comparison of the signs represented by EU trade mark No 6433817 and the mark applied for

23      As regards the comparison of the signs represented by EU trade mark No 6433817 and the mark applied for, the Board of Appeal acted correctly in finding that those signs were not visually similar.

24      As set out in paragraphs 15 to 17 of the contested decision, that earlier mark consists of three jagged vertical lines which widen progressively upwards and end with a beak-like protrusion, whereas the figurative element of the mark applied for contains four diagonally positioned irregular white stripes on a square black background. Those figurative elements do not present any relevant similarity. The orientation and the number of lines are different, the lines, in themselves, are not similar and, moreover, the background of the mark applied for creates a visual difference. Furthermore, the mark applied for includes two additional verbal elements, namely ‘mad’ and ‘catz’, placed below the figurative element in black capital letters.

25      As EUIPO has observed, the applicant’s contention that, in the two marks, those lines or stripes could be considered to be the representation of claws or of a mark made by claws cannot establish a visual similarity, since such an interpretation requires an intellectual effort on the part of the relevant public which is made unlikely by the significant visual differences that exist between the signs.

26      With regard to the phonetic aspect, the Board of Appeal was also right to find, in paragraph 18 of the contested decision, that the earlier mark could not be pronounced, whereas the mark applied for would be pronounced by making reference to its word elements. Likewise, assuming that the earlier mark could be considered to be a stylised representation of the letter ‘m’, its pronunciation remains very different to that of the mark applied for. The view must indeed, therefore, be taken that the signs are phonetically different.

27      With regard to the conceptual aspect, the Board of Appeal also correctly noted, in paragraph 19 of the contested decision, that the signs were dissimilar since the earlier sign could be perceived either as three vertical lines, or as a stylised letter ‘m’, or as the claw-like features of the foot of a beast or bird with three toes armed with sharp nails, and that the sign covered by the mark applied for could be understood, at most, as a reference to one or more insane cats.

28      In this respect, the applicant argues that consumers confronted with the two marks could establish a conceptual link between the representations of claws or marks made by claws which may be seen in the earlier mark and in the mark applied for.

29      However, in order to be taken into account, such an interpretation presupposes, first of all, that the relevant public is able to take the view that the perception of the earlier mark as the representation of claw-like features of the foot of a beast or bird with three toes, armed with sharp nails outweighs the two other perceptions envisaged in the contested decision, namely, that of a representation of three vertical lines or of a stylised letter ‘m’. However, no evidence to that effect has been advanced by the applicant, which merely makes the interpretation which is most favourable to its argument and does not take into account other possible interpretations.

30      Similarly, the conceptual connection referred to by the applicant is also based on the premiss that, so far as the mark applied for is concerned, it is easy to perceive it as the representation of claws or of marks made by claws, in particular because the association of the word elements ‘mad’ and ‘catz’ makes it possible for the four white stripes positioned diagonally on a square black background to be interpreted in such a way. While the possibility cannot be ruled out that the mark applied for might be interpreted conceptually in the manner suggested by the applicant, at least by the anglophone part of the relevant public, there would then be only a very low conceptual similarity between the signs at issue, not least because the earlier mark implies nothing to link it to one or more insane cats.

31      It is apparent from the foregoing that, having regard to the two observations made in paragraphs 29 and 30 above, the conceptual interpretation of the signs at issue suggested by the applicant cannot be considered to be sufficient to call into question the observations made by the Board of Appeal in the contested decision with regard to the conceptual differences which exist between those signs and, further, to the overall impression given by the marks here at issue.

32      Consequently, the Board of Appeal was right to conclude, in paragraph 20 of the contested decision, that, as the marks were visually, phonetically and conceptually different, they were not similar in respect of the comparison of the signs.

 The comparison of the signs covered by the earlier international registration No 1048069 and the mark applied for

33      As regards the comparison of the signs covered by the international registration No 1048069 and the mark applied for, the applicant has also failed to establish that the Board of Appeal’s assessment was incorrect.

34      As was stated in paragraphs 22 and 23 of the contested decision, the international registration relied on contains not only the same figurative element as EU trade mark No 6433817, examined above, but also the word elements ‘monster’ and ‘energy’ placed below the figurative element on two lines. Thus, because of the term ‘monster’, it is likely that consumers will recognise the capital letter ‘M’ in the three jagged vertical lines widening progressively upwards which appear in the figurative element.

35      Therefore, in the light of that observation and having regard to what has already been set out above in respect of the comparison of the signs covered by EU trade mark No 6433817 and the mark applied for, the Board of Appeal was entitled to find that the signs were dissimilar overall.

36      With regard to the visual aspect, the Board of Appeal was correct in finding that the difference which existed between the word elements reinforced the difference which existed between the figurative elements. Contrary to what the applicant argues, and as has already been observed by the Board of Appeal in the contested decision, the fact that the two word elements begin with the letter ‘m’ does not suffice to make them similar. With regard to the phonetic aspect, it is also not disputed that the pronunciation of the earlier sign is totally different to that of the sign applied for. The syllables do not correspond, no more than do the sound and rhythm of the pronunciation. Lastly, with regard to the conceptual aspect, it cannot be considered that the Board of Appeal erred in rejecting the applicant’s argument that a monster and a cat are similar, especially if the latter is mad. As the Board of Appeal was entitled to observe, a monster is not necessarily a cat, or indeed even an animal. A monster is, in principle, an imaginary or legendary creature, a creature which has a strange or frightening appearance or the appearance of an animal, plant or of something which is very large. Such a description does not apply to a cat, even one that is insane.

37      Consequently, the Board of Appeal was right to find, in paragraph 23 of the contested decision, that, since the marks were visually, phonetically and conceptually different, they were not similar in respect of the comparison of the signs.

 The comparison of the signs covered by the EU trade marks No 7451552 and No 7444243 and the mark applied for

38      In respect of the comparison of the signs covered by the EU trade marks No 7451552 and No 7444243 and the mark applied for, the Board of Appeal was also correct to find that the signs were not visually similar.

39      As is apparent, in essence, from paragraph 25 of the contested decision, where the Board of Appeal refers to the observations made concerning the other rights relied on by the applicant, it is evident that those two earlier marks include additional figurative and verbal elements in relation to the first two marks which were the subject of the comparison of the signs with the mark applied for.

40      Those additional elements, which are not included in the mark applied for, further increase the differences which exist between the signs covered by EU trade marks No 7451552 and No 7444243 and the mark applied for. It must also be noted that the applicant does not refer to any evidence regarding either of those earlier marks in its arguments.

41      Consequently, the Board of Appeal was right to find essentially, in paragraph 25 of the contested decision, that, as the marks were visually, phonetically and conceptually different, they were not similar in respect of the comparison of the signs.

 The likelihood of confusion

42      Under Article 8(1)(b) of Regulation No 207/2009, the trade mark applied for may not be registered if, because of its identity with or similarity to the 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 relevant public.

43      However, one of the necessary conditions, namely the similarity of the signs at issue, is not satisfied in the present case. Thus, in line with the Board of Appeal’s conclusion in the contested decision, it must be held that there is no likelihood of confusion, in accordance with the case-law cited in paragraph 17 above, without there being any need to examine the similarity of the goods and services at issue.

 The application of Article 8(5) of Regulation No 207/2009

44      Pursuant to Article 8(5) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2), the trade mark applied for may not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are 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 and, 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.

45      It should be noted that the existence of a similarity between the earlier marks and the mark applied for is a precondition for the application of both Article 8(1)(b) and Article 8(5) of Regulation No 207/2009. That condition of similarity between the mark and the sign requires, in the context of both Article 8(1)(b) and Article 8(5) of Regulation No 207/2009, the existence, in particular, of elements of visual, phonetic or conceptual similarity (see, to that effect, judgment of 24 March 2011 in Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraphs 51 and 52 and the case-law cited).

46      In the present case, as was held by the Board of Appeal in paragraph 30 of the contested decision, the signs at issue are not similar and consequently Article 8(5) of Regulation No 207/2009 cannot form the basis for a refusal to register the mark applied for.

47      In conclusion, as none of the applicant’s heads of claim alleging infringement of Article 8(1)(b) and Article 8(5) of Regulation No 207/2009 is well founded, it follows that the claims seeking annulment of the contested decision and, consequently, annulment of the Opposition Division’s decision must be rejected, as must also be, without there being any need to adjudicate on the admissibility of such an application, the head of claim seeking rejection of the mark applied for.

48      The action must therefore be dismissed in its entirety.

 Costs

49      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

On those grounds,

THE GENERAL COURT (Sixth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Monster Energy Company to pay the costs.

Frimodt Nielsen

Collins

Valančius

Delivered in open court in Luxembourg on 14 July 2016.

[Signatures]

Table of contents

Background to the dispute

Forms of order sought

Law

Infringement of Article 8(1)(b) and 8(5) of Regulation No 207/2009

The relevant public

The comparison of the signs

The comparison of the signs represented by EU trade mark No 6433817 and the mark applied for

The comparison of the signs covered by the earlier international registration No 1048069 and the mark applied for

The comparison of the signs covered by the EU trade marks No 7451552 and No 7444243 and the mark applied for

The likelihood of confusion

The application of Article 8(5) of Regulation No 207/2009

Costs