Mad Catz Interactive, Inc. (a US interactive gaming products company) applied for an EUTM for the mark above left in classes 9, 25 and 28. The owners of the well-known energy drink Monster Energy (“Monster”) opposed the application based on the mark above right in relation to class 25, for clothing, footwear, and headgear only.

The opposition was based on Article 8 (1)(b) that a trade mark will not be registered where it is identical or similar to an earlier trade mark, for identical or similar goods and where there is a likelihood of confusion on the part of the public in the EU.

Monster also opposed on the basis of a claimed reputation under Article 8(5).

The Opposition Division rejected the opposition entirely. Monster appealed to the Fifth Board of Appeal who confirmed the Opposition Division’s decision. Monster then appealed to the EU General Court who held that:-

Similar/identical goods

The goods were held to be identical or similar – this was not disputed by either party.

The Earlier Mark was described as claws whereas the Applicant’s Mark was held to be perceived as scratches or paint brush marks. The Court concluded there was therefore a low degree of visual similarity and no conceptual similarity between the signs. These differences were further reinforced by the square black background of the Applicant’s Mark.

Likelihood of confusion

It was held that even for identical goods, the low visual similarity, lack of conceptual similarity and the additional word element “MAD CATZ” in the Applicant’s Mark, dispelled any likelihood of confusion.

Reputation

In relation to the reputation argument, although Monster may have had a reputation in the EU, this was not in relation to the class 25 goods at issue. Several pieces of evidence were provided, including pictures of sponsored sports teams wearing articles of clothing bearing the mark (in an altered form). The Court held from the documents submitted that Monster operated in the “non-alcoholic beverages” or “energy drinks” sector and that their marks are used on items of headgear and clothing for purposes of sponsorship or promotion.

Conclusion

The General Court confirmed the Board of Appeal’s decision to reject the opposition on the basis that there was no likelihood of confusion between the marks, Monster also failed in their reputation claim.