EU trade mark dispute: INSOMNIA ENERGY v. MONSTER ENERGY

On 23 October, the General Court of the European Union ruled in case T-59/24 on a dispute between the EU trade mark INSOMNIA ENERGY and the earlier EU trade mark M MONSTER ENERGY.

In 2016, a company based in Bulgaria, Shoqëria Tregtare BBF Company SHPK, registered the sign INSOMNIA ENERGY as a European figurative trade mark, No. 015905045. The sign consists of a black background, the word "INSOMNIA" in white with a green outline in the centre and the word "ENERGY" in green underneath. It was registered for goods in Class 32 of the Nice Classification, such as flavoured carbonated drinks, waters, juices, energy drinks, non-medical energy drinks, caffeinated energy drinks, non-carbonated soft drinks and non-alcoholic fruit juice based soft drinks, among others. In 2020, the US company Monster Energy Co. filed an application with the EUIPO for a declaration of invalidity of the registered EU trade mark based on its earlier EU figurative mark No. 011154739, M MONSTER ENERGY, which covered, among other things, 'non-alcoholic beverages' in Class 32. The mark is characterised by its aggressive typography, which includes a recognisable bright green 'M', the word MONSTER in white and the word ENERGY in green, all on a black background.

The Cancellation Division of the EUIPO dismissed it, stating that there was no likelihood of confusion between the marks because the similarity was extremely low and the public would not make a connection between them, despite some identity of the goods and the reputation of the earlier mark. However, the Board of Appeal recognised that the MONSTER mark had a high degree of recognition among the relevant public in the field of energy drinks in Class 32, which counteracted the low degree of similarity between the signs. Thus, the Board of Appeal annulled the Cancellation Division's decision and declared the contested mark invalid in its entirety.

The Bulgarian company appealed against this decision to the General Court of the European Union, which had to determine whether there was a likelihood of confusion between the marks at issue. 

First, the Court upheld the decision of the Board of Appeal, recognising the high reputation and distinctive character of M MONSTER ENERGY in the non-alcoholic beverages sector, in particular for energy drinks, supported by evidence of its recognition on the market. This reputation was sufficient to overcome the low degree of similarity between the marks at issue. 

In addition, the Court pointed out that both marks shared the word element 'energy', which contributed to a certain degree of visual and phonetic similarity. Although the element 'energy' was found to be weakly distinctive, its presence was not overlooked because of its size and colour. Furthermore, the structure of the marks was considered to be very similar, which increased the likelihood of consumer confusion.

The General Court upheld the Board of Appeal’s assessment that the Bulgarian company was taking unfair advantage of the reputation of the MONSTER mark, on the basis that the applicant had not put forward sufficient arguments to show that its use of the disputed mark was legitimate or that it did not give rise to confusion on the part of consumers. As a result, the General Court upheld the decision of the EUIPO Board of Appeal to invalidate the registered EU trade mark INSOMNIA ENERGY.