13 December 2018 (*1)

(EU trade mark — Opposition proceedings — Application for EU figurative mark MONSTER DIP — Earlier EU word and figurative marks and unregistered sign used in the course of trade, all including the word element ‘monster’ — Relative grounds for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) — No likelihood of misleading association — Article 8(4) of Regulation No 207/2009 (now Article 8(4) of Regulation 2017/1001) — No likelihood of dilution of the reputation of the earlier mark — Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001))

In Case T‑274/17,

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

applicant,

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:

Marco Bösel, residing in Bad Fallingbostel (Germany),

ACTION brought against the decision of the Second Board of Appeal of OHIM of 13 December 2016 (Case R 1062/2016-2), relating to opposition proceedings between Monster Energy Company and Marco Bösel,

THE GENERAL COURT (Ninth Chamber),

composed of S. Gervasoni, President, L. Madise (Rapporteur) and R. da Silva Passos, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 10 May 2017,

having regard to the response of EUIPO lodged at the Court Registry on 5 July 2017,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close 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

Background to the dispute

…

Forms of order sought

Law

The alleged infringement of Article 8(1)(b) of Regulation No 207/2009

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

The condition relating to the existence of a link between the signs at issue

… The finding that there is no connection between the marks at issue in the mind of the relevant public cannot be called into question by the applicant’s argument that the Board of Appeal should also have taken into account the goods for which the earlier EU figurative mark MONSTER ENERGY was not reputed, such as the goods ‘stickers’, ‘decals’ and ‘transfers’ in Class 16 covered by that earlier mark. Indeed, the absence of reputation implies that one condition for the application of Article 8(5) of Regulation No 207/2009 is not satisfied, and thus, there can be no detriment to the earlier mark in question. In other words, since the reputation of the earlier mark is a prerequisite for the existence of any of the infringements referred to in Article 8(5) of that regulation, including the detriment to the distinctive character of the earlier mark known as trade mark dilution, it follows that none of the infringements referred to in that provision can be found as regards the goods and services in relation to which the condition relating to the reputation of the earlier mark is not satisfied. Thus, it is appropriate to reject the applicant’s argument in the context of its fourth plea seeking to show that the Board of Appeal erred in taking into account, in order to establish the link between the marks at issue, only the goods in respect of which a reputation of the earlier mark had been demonstrated.

The alleged infringement of Article 8(4) of Regulation No 207/2009

Costs

On those grounds,

hereby:

1.Dismisses the action;

2.Orders Monster Energy Company to pay the costs.

Gervasoni

Madise

da Silva Passos

Delivered in open court in Luxembourg on 13 December 2018.

Registrar

President

ECLI:EU:C:2018:1000

15

(*1) Language of the case: English.

(*1) Only the paragraphs of the present judgment which the Court considers it appropriate to publish are reproduced here.