JUDGMENT OF THE GENERAL COURT (Sixth Chamber)

14 July 2016 (*)

(EU trade mark — Opposition proceedings — Application for EU figurative mark representing a black square with four white lines — Earlier EU figurative mark representing three claws positioned vertically — Relative ground for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)

In Case T‑567/15,

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

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by D. Gája, 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 Fifth Board of Appeal of EUIPO of 1 July 2015 (Case R 2368/2014-5), 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 Court Registry on 25 September 2015,

having regard to the response lodged at the Court Registry on 22 October 2015,

having regard to the fact that no request for a hearing was submitted by the main parties within three weeks following 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 mark for which registration was sought is the following figurative sign:

3        The goods in respect of which registration was sought 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 the EU 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 directed at all of the goods in the application in Class 25 and was based on all of the goods covered by the earlier marks.

7        On 25 July 2014, the Opposition Division rejected the opposition in its entirety.

8        On 12 September 2014, the applicant filed a notice of appeal with EUIPO, under Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.

9        By decision of 1 July 2015 (‘the contested decision’), the Fifth 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, as the goods in Class 25 were everyday consumer items, they were intended for the general public, who, when purchasing those goods, display an average degree of attention. In the second place, concerning the earlier EU figurative mark No 6433817, the Board of Appeal held that the goods at issue were either identical (clothing and headgear) or similar (footwear). It also held that the signs were visually similar only to a very low degree, that they could not be compared phonetically and that, conceptually, either any comparison was impossible or the signs were different. As to the distinctive character of that earlier mark, the Board of Appeal held that the evidence produced by the applicant did not demonstrate that that earlier mark enjoyed an enhanced degree of distinctiveness in relation to any of the goods at issue. With regard to the global assessment of the likelihood of confusion, the Board of Appeal considered that the differences between the signs at issue clearly outweighed the very low visual similarities between them, even where the goods were identical. So far as the other earlier marks were concerned, the Board of Appeal held that the additional word elements made the marks even more different. In the third place, the Board of Appeal noted that, as regards the earlier marks No 6433817 and No 1048069, which the applicant claimed had a reputation, no relevant documents concerning sales turnover, market share, brand awareness, marketing campaigns and others in relation to clothing and headgear had been provided. Consequently, it held that one of the required conditions referred to in Article 8(5) of Regulation No 207/2009 was not met and that the opposition had also to be rejected on that ground.

 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 application;

–        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) of Regulation No 207/2009

13      The applicant argues that the Board of Appeal wrongly assessed the similarities between the mark applied for and the earlier mark No 6433817, which are figurative marks and not composite marks. It also maintains that the Board of Appeal wrongly assessed the overall impression created by those marks by stating that the mark applied for might be perceived by the relevant public as scratches, whereas the earlier mark might resemble claws, in order to conclude that there was only a low degree of visual similarity between the marks and no conceptual similarity between the signs. Lastly, the applicant criticises the Board of Appeal for finding that there was no likelihood of confusion on the basis that the differences between the signs outweighed their visual similarities. In that regard, the applicant maintains that the Board of Appeal wrongly failed to take into account the distinctiveness acquired by the earlier mark through its extensive use for energy drinks and clothing for extreme sports.

14      EUIPO disputes the applicant’s arguments.

15      As a preliminary point, it must be observed that, in the contested decision, the Board of Appeal examined the arguments put forward by the applicant under Article 8(1)(b) of Regulation No 207/2009 on the basis, first, of the earlier mark No 6433817 and then on the basis of the three other earlier marks referred to in the opposition. In the present case, however, the applicant restricts itself to contesting the result of the examination carried out by the Board of Appeal as regards the opposition based on the earlier mark No 6433817, which must be taken into account subsequently.

16      In that regard, Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the mark applied for cannot be registered if, because of its identity with, or similarity to, the earlier mark and the identity or similarity of the goods or services covered by the marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier mark is protected. The likelihood of confusion includes the likelihood of association with the earlier mark.

17      According to settled case-law, a likelihood of confusion arises when there is a risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings. 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).

18      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

19      As regards the definition of the relevant public, it is apparent from paragraphs 20 and 21 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.

20      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 goods

21      Concerning the comparison of the goods, it is apparent from paragraph 24 of the contested decision that the Board of Appeal concurred with the Opposition Division’s finding, which was not disputed by the parties, that the goods at issue in Class 25 were either identical (clothing and headgear) or similar (footwear).

22      Having regard to the material in the file, it is necessary to confirm that finding, which, moreover, is not disputed by the parties.

 The comparison of the signs

23      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).

24      As regards the comparison of the signs covered by the mark applied for and by the earlier mark No 6433817 which was carried out by the Board of Appeal in paragraphs 28 to 35 of the contested decision, taking due account of the fact that the marks at issue were figurative marks and not composite marks, as the applicant claims, the Board of Appeal was correct in concluding that those signs presented only a very low degree of visual similarity.

25      As was stated in paragraph 29 of the contested decision, the mark applied for depicts a black square on which four diagonal parallel white lines are placed which might be perceived by the public as ‘scratches’, white brush strokes or a purely abstract device, whereas the earlier mark shows three vertical parallel black shaky lines of different lengths whose upper part is broader and which, from the perspective of the relevant public, might resemble three ‘fingers’ or ‘claws’ or a very abstract depiction to which no specific and clear meaning can be attributed. Contrary to what is suggested by the applicant, it cannot, therefore, be considered that the only perception likely to be retained visually by the relevant public would be a scratch, as regards the mark applied for, and claws, as regards the earlier mark.

26      Therefore, the Board of Appeal was right to hold, in paragraph 30 of the contested decision, that the signs at issue were visually similar in so far as they both depicted a number of stylised lines. However, as was also rightly stated by the Board of Appeal in the same paragraph, those signs differed in other respects. As was noted, the shape, colour, number and position of those lines are different, the lines of the mark applied for resemble brush strokes and have a different shape to that of the lines of the earlier mark and those differences are reinforced by the square black background of the mark applied for.

27      Moreover, as to the argument put forward by the applicant that Mad Catz Interactive stated in its description of the mark applied for that it was made up, inter alia, of ‘four jagged scratch marks’, it should be noted, as did, moreover, the Board of Appeal in paragraph 32 of the contested decision, that such a description is, as such, irrelevant in the assessment of visual similarity. The option, provided for by Rule 3(3) of Regulation No 2868/95, for an applicant for an EU trade mark to add a description of the mark to the application provides information on the perception of the mark by the person applying for the mark, but not at all on the perception of the mark by the relevant public. The likelihood of confusion between marks must, however, be assessed in relation to the perception of those marks by the relevant public (judgment of 22 March 2011 in Ford Motor v OHIM — Alkar Automotive (CA), T‑486/07, not published, EU:T:2011:104, paragraph 58).

28      Consequently, in the light of the foregoing and contrary to what the applicant argues, the Board of Appeal was fully entitled to find that the signs at issue presented only a very low degree of visual similarity.

29      With regard to the phonetic aspect, the Board of Appeal also rightly took the view, in paragraph 33 of the contested decision, that the signs at issue were purely figurative and abstract in nature and that, consequently, no phonetic comparison was possible. That conclusion, which, moreover, is not disputed by the parties, must be upheld.

30      With regard to the conceptual aspect, the Board of Appeal also correctly observed, in paragraphs 34 and 35 of the contested decision, that a part of the relevant public will not associate the signs at issue with any meaning but will perceive them as abstract devices. Likewise, the Board of Appeal was entitled to find, in paragraph 34, that if some consumers were to identify the signs as ‘white brush strokes painted against a black rectangular background’, on the one hand, and as a ‘claw’, on the other hand, the signs would be conceptually different.

31      Nonetheless, as the applicant argues, from the moment at which the mark applied for can be perceived as a representation of ‘scratches’ and the earlier mark as a representation of ‘claws’, it also cannot be excluded that, for a part of the relevant public, the signs will present a certain degree of conceptual similarity, since those signs are liable to convey ‘the message of something aggressive and that something is being ripped open’.

32      However, it is established in the light of the representation of the mark applied for, which is reproduced in paragraph 28 of the contested decision, that for the relevant public the perception of that sign as ‘scratches’ is not the most obvious perception since those lines rather call to mind white brushstrokes on a black square, as is illustrated in particular by the various white spots which surround each of the four diagonal parallel white lines.

33      Consequently, the most likely assumption in regard to the perception of the signs at issue by the relevant public is not that suggested by the applicant but remains that defined by the Board of Appeal in the contested decision.

34      It is apparent from the foregoing that, from the point of view of the relevant public, the Board of Appeal was right to hold, in paragraph 35 of the contested decision, that the signs at issue were visually similar to a very low degree and could not be compared phonetically. Likewise, whilst it is not wholly inconceivable that the signs at issue might each be perceived conceptually as being a ‘message of something aggressive and that something is being ripped open’, according to the expression used in that regard by the applicant, such an interpretation cannot by upheld in lieu of that defined by the Board of Appeal in paragraphs 34 and 35 of the contested decision, which remains much more likely when it comes to determining the perception of the signs at issue by the relevant public.

 The global assessment of the likelihood of confusion

35      A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998 in Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006 in Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and Others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

36      Furthermore, as is apparent from the eighth recital of Regulation No 207/2009, the assessment of the likelihood of confusion depends on numerous elements and, in particular, on the public’s recognition of the trade mark on the market in question. Since the more distinctive the earlier mark, the greater will be the likelihood of confusion, marks with a highly distinctive character, either per se or because of the public’s recognition of them, enjoy broader protection than do marks with a less distinctive character (see, by analogy, judgments of 11 November 1997 in SABEL, C‑251/95, EU:C:1997:528, paragraph 24, of 29 September 1998 in Canon, C‑39/97, EU:C:1998:442, paragraph 18, and of 22 June 1999 in Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20).

37      In that regard, the applicant criticises the Board of Appeal on the ground that it failed to consider appropriately the relevance of the distinctiveness acquired by the earlier mark through its extensive use in respect of energy drinks and clothing for extreme sports. It argues that, despite extensive evidence of the use of the earlier mark for goods in Class 25 produced during the proceedings, and despite the fact that the Board of Appeal accepted, in this regard, that the applicant had invested considerable amounts of money in marketing and promoting that mark, the Board of Appeal wrongly concluded that that mark did not enjoy an enhanced distinctive character in respect of all the goods at issue.

38      In the present case, it should be noted that the applicant relied on the following evidence in the opposition proceedings:

–        an affidavit signed by the applicant’s chairman and chief executive officer, and dated 4 October 2013, stating that the applicant is active in the business of non-alcoholic beverages. There is a passage in the affidavit where it is stated that the applicant has, since 2002, used the earlier marks for merchandising purposes on clothing and headgear available to consumers throughout the European Union;

–        copies of photographs showing cans of energy drinks bearing the earlier mark No 6433817 and the mark under international registration No 1048069 in different colours;

–        a copy of a presentation entitled ‘Investor Presentation’ prepared by the applicant containing market share information relating to sales of its energy drinks in the European Union and South Africa during 2011 and 2012;

–        copies of summary reports prepared by an independent organisation containing statistics relating to the energy drinks market for the years 2012 and 2013;

–        copies of extracts from a presentation by the applicant from 2013 concerning energy drinks;

–        copies of a selection of web extracts, articles and reports dated between 2009 and 2013 and referring to the territories of France, Germany, Benelux and Spain. The vast majority of those excerpts refer to energy drinks. There are a few pictures showing the earlier mark No 6433817 in different colours on clothing in connection with the applicant’s motorsports sponsorship;

–        copies of articles from various online sources (mostly gathered by LexisNexis) referring to Monster Energy drink and the earlier mark No 6433817 in different colours in relation to energy drinks, their sales and territories, dated from 2008 to 2012;

–        copies of photographs of athletes and sport teams from across the European Union. The earlier mark No 6433817, in an altered form, is depicted in the top right-hand corner of each photo-collage;

–        copies of photographs showing displays of energy drinks bearing international registration No 1048069 in different colours;

–        copies of photographs of sports events sponsored by the applicant showing the mark under international registration No 1048069, in an altered form, on banners, safety barriers, vans, tents and racing cars;

–        copies of photographs showing how the sponsored teams use the earlier marks. The earlier mark No 6433817 and international registration No 1048069 are shown in an altered form on certain articles of clothing and helmets;

–        copies of articles from various online sources referring mainly to motor-car and motor-bike racing and also to water sports contests. The earlier marks are shown, in an altered form, mainly on banners and safety barriers but also on cars, helmets, items of clothing and headgear;

–        copy of a 2009 Apparel Kawaski catalogue showing the mark under international registration No 1048069 in different colours on articles of clothing, headgear and backpacks always placed above the word ‘kawasaki’;

–        copy of a ONE Industries catalogue from 2011 showing the earlier mark No 6433817 in different colours on articles of clothing, headgear, a helmet and an umbrella. On each item there is a figurative sign in various forms referring to ONE Industries;

–        copies of excerpts from Facebook pages referring to the word ‘monster’ in relation to music, athletes and others, and where the earlier mark No 6433817 appears in an altered form either independently or on bicycles, cars and clothing;

–        copies of Monster Energy catalogues from 2010 to 2012 including a few pictures of articles of clothing and headgear bearing the earlier mark No 6433817 and the mark under international registration No 1048069 in different colours;

–        copies of media coverage about the applicant’s awards in relation to energy drinks and other beverages between 1999 and 2012.

39      In this respect, first, it should be noted that the existence of an unusually high level of distinctiveness as a result of the public’s recognition of a mark on the market necessarily presupposes that at least a significant part of the relevant public is familiar with that mark (see judgment of 12 July 2006 in Vitakraft-Werke Wührmann v OHIM — Johnson’s Veterinary Products (VITACOAT), T‑277/04, EU:T:2006:202, paragraph 34 and the case-law cited). In the present case, it has been established that the relevant public is that of European Union consumers.

40      In order to assess whether a mark has a highly distinctive character as a result of the public’s recognition of it, all the relevant facts of the case must be taken into consideration, that is, in particular, the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see judgment of 12 July 2006 in VITACOAT, T‑277/04, EU:T:2006:202, paragraph 35 and the case-law cited).

41      Therefore, the Board of Appeal was right to find, in paragraphs 38 to 41 of the contested decision, that, taken as a whole, the documents submitted by the applicant did not show any use establishing enhanced distinctiveness of the earlier mark in respect of items of clothing or headgear.

42      It is apparent from those documents that the applicant operates in the ‘non-alcoholic beverages’ or ‘energy drinks’ sector and that it is essentially for the purposes of sponsorship or promotion that the earlier marks are used on items of clothing and headgear.

43      In particular, the Board of Appeal did not err in finding that, even though certain evidence shows licence agreements with clothing manufacturers, those agreements authorise those manufacturers to make and sell clothing on which the early marks appear in order to promote the umbrella brand of those manufacturers. Thus, as regards the ONE Industries catalogue from 2011, it transpires that the earlier mark is represented in different colours on articles of clothing and headgear together with a figurative sign in various shapes referring to ONE Industries.

44      Similarly, whilst the Board of Appeal stated that it was clear from the documents submitted by the applicant that it ‘has invested considerable amounts of money in advertising, marketing and promoting its brand mainly by means of extreme sports’, it also correctly maintained that it was ‘impossible to infer anything about the volume and turnover of clothing articles sold in the relevant period of time on the relevant territories’ and that ‘the reference to pictures and catalogues of clothing and headgear [such as copies of Monster Energy catalogues from 2010 to 2012] is insufficient to conclude on any finding of enhanced distinctiveness of the earlier mark, let alone reputation’.

45      The applicant, moreover, does not put forward any argument or refer to any evidence whatsoever which the Board of Appeal allegedly failed to take into account and which might have made it possible to reach a different conclusion.

46      Furthermore, the Board of Appeal was also right to find that, in the assessment of the likelihood of confusion under Article 8(1)(b) of Regulation No 207/2009, the fact that the earlier mark enjoyed a reputation for drinks had no relevance, in so far as the opposition was not based on drinks as regards the earlier mark No 6433817 and drinks were clearly not similar to the goods at issue (clothing, footwear and headgear).

47      Lastly, it must also be pointed out that the various documents submitted by the applicant do not make it possible to establish what is the market share held by the mark in respect of the goods which form the basis for the opposition concerning the earlier mark No 6433817 or what proportion of the relevant section of the public, because of the earlier mark, identifies the goods or services as originating from a particular undertaking, even though such evidence is to be taken into consideration in determining the distinctive character of the earlier mark (see paragraph 40 above).

48      Consequently, the Board of Appeal was fully entitled to conclude, in paragraphs 41 to 43 of the contested decision, that the evidence submitted by the applicant did not prove that the earlier mark No 6433817 enjoyed an enhanced distinctive character in relation to the goods on which the opposition was based and that the assessment of the likelihood of confusion had, therefore, to rest on the average inherent distinctive character of that mark.

49      The applicant also criticises the Board of Appeal’s finding that there was no likelihood of confusion in circumstances where the goods are nonetheless identical and there is a visual and conceptual similarity, which should, on the basis of an overall assessment, lead to the opposite conclusion.

50      That argument also cannot be accepted.

51      In respect of the assessment of the overall likelihood of confusion, the Board of Appeal was entitled to find that the goods covered by the mark applied for and by the earlier mark No 6433817 were similar or identical. It also acted correctly in concluding that the signs were visually similar only to a very low degree and that they were not phonetically comparable (see paragraphs 21 to 29 above).

52      It is also apparent from the foregoing that, even if, conceptually, it cannot be entirely ruled out that the signs at issue might be perceived as a ‘message of something aggressive and of something being ripped open’, such an interpretation cannot be upheld in place of that set out by the Board of Appeal in paragraphs 34 and 35 of the contested decision, which remains much more probable when it is a question of the perception of those signs by the relevant public (see paragraphs 30 to 34 above).

53      Furthermore, contrary to what the applicant claims, the Board of Appeal was right to find that the earlier mark No 6433817 did not enjoy an enhanced distinctive character for the goods at issue (see paragraphs 41 to 48 above).

54      Consequently, the Board of Appeal was right to hold, in respect of the overall assessment of the likelihood of confusion, that the differences between the signs in the present case prevailed over their similarities and that, therefore, having regard to all the relevant factors, there was no likelihood of confusion on the part of the relevant public, even if the goods were identical (see paragraphs 46 and 47 of the contested decision).

55      Consequently, the arguments presented by the applicant concerning infringement of Article 8(1)(b) of Regulation No 207/2009 must be rejected.

 Application of Article 8(5) of Regulation No 207/2009

56      The applicant submits that, in the light of the extensive evidence filed in that regard, the Board of Appeal was wrong to conclude that Article 8(5) of Regulation No 207/2009 was not applicable in the present case. It asserts that it would therefore be wrong to take the view that, without relevant documentation on turnover or market share, it is not possible to establish that the earlier mark enjoys a high degree of recognition among the relevant public.

57      As set out in 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 mark.

58      The broader protection afforded to the earlier mark under Article 8(5) of Regulation No 207/2009 presupposes, therefore, that a number of conditions have been satisfied. First, the earlier mark which is claimed to have a reputation must be registered. Secondly, that mark and the mark applied for must be identical or similar. Thirdly, in the case of an earlier EU trade mark, it must have a reputation in the European Union. Fourthly, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. Since those conditions are cumulative, the failure to satisfy one of them is sufficient to render that provision inapplicable (judgment of 11 July 2007 in Mülhens v OHIM — Minoronzoni (TOSCA BLU), T‑150/04, EU:T:2007:214, paragraphs 54 and 55).

59      In the present case, it must first be noted that the Board of Appeal was right to find, in paragraph 53 of the contested decision, that reputation was claimed by the applicant in respect of the earlier mark No 6433817 only for goods in Class 25 and that consequently the question whether or not that mark enjoys a reputation for goods other than articles of clothing and headgear is irrelevant.

60      Likewise, the Board of Appeal also acted correctly in finding, in that same paragraph of the decision, that, for the same reasons as those in respect of the applicant’s failure to demonstrate the enhanced distinctiveness of the earlier mark in relation to the goods concerned, namely clothing and headgear in general, the applicant was not in a position to establish reputation under Article 8(5) of Regulation No 207/2009. In that context, the Board of Appeal was fully entitled to find, contrary to what the applicant claimed, that no relevant document relating to turnover, market share, brand awareness, marketing campaigns and others in respect of clothing and headgear had been submitted to it.

61      Consequently, as one of the conditions for the application of Article 8(5) of Regulation No 207/2009 had not been met, the Board of Appeal was entitled to reject the opposition on that basis.

62      Lastly, it must be stated that the applicant does not set out in its application any argument or refer to any evidence whatsoever that the Board of Appeal allegedly failed to take into account and which might have made it possible to reach a different conclusion.

63      Consequently, the applicant’s arguments concerning infringement of Article 8(5) of Regulation No 207/2009 must be rejected.

64      In conclusion, as none of the pleas in law raised by the applicant alleging infringement of Article 8(1)(b) and 8(5) of Regulation No 207/2009 is well founded, the heads of claim seeking annulment of the contested decision and consequently the 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.

 Costs

65      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) of Regulation No 207/2009

The relevant public

The comparison of the goods

The comparison of the signs

The global assessment of the likelihood of confusion

Application of Article 8(5) of Regulation No 207/2009

Costs