Monster is brought before the German Federal Patent Court – Challenging days for the genuine use of word marks

By resolution of August 23, 2024 (registered as case 30 W (pat) 78/21), the Federal Patent Court has made a surprising decision regarding the genuine use of the word mark “MONSTER”. The graphical design of the sign as used goes beyond a mere embellishment and takes up a distinctive and characterizing role in shaping the overall impression of the sign. Due to the independent figurative element, the public no longer perceives the used sign or its overall impression as the registered opposing mark “MONSTER”.

Facts of the case

International trademark No. 1 352 854 with the word element “monster” was filed claiming protection in Germany for goods in class 9.

The renowned energy drink producer Monster Beverage filed an opposition against this trademark based, inter alia, on their Union word mark “MONSTER” (registered for non-alcoholic beverages in class 32) claiming protection based on reputation.

The German Patent and Trademark Office granted the opposition partially on the grounds that the trademark “MONSTER” has acquired reputation in relation to energy drinks. The owner of the opposed trademark filed an appeal against this decision.

Decision of the Federal Patent Court (“Bundespatentgericht”)

Following the complainant’s objection of non-use, the Federal Patent Court concluded that not only the protection based on reputation does not apply in this case but that the word mark “MONSTER” has not even been genuinely used.

In this context, the Federal Patent Court maintained that the use of the word element Monster in combination with a figurative element – in this case, the figurative element consists of a scratch mark of a (monster) claw – would be perceived by the public as a uniform mark since the word element and figurative element are clearly geared to each other in terms of style. According to the Federal Patent Court, this assumption influences the distinctive character of the word mark “MONSTER” massively.

Even when leaving the scratch logo out of consideration, the Federal Patent Court cannot ascertain a genuine use of the word mark “Monster” when written in such a rune-like form since it does not reflect a standard font. This argumentation applies particularly to the letter “O” which is not immediately recognizable as a letter but is rather perceived by the reader as an imaginative sign. A reader would also face the difficulty of determining whether this imaginative sign is supposed to be an “O” or, for instance, a “Ü”.

Thus, the graphical design of the standard writing “MONSTER” goes beyond a mere embellishment of the word and takes up a distinctive and characterizing role in shaping the overall impression of the sign thereby causing the public to no longer perceive the used sign as the registered opposing sign “MONSTER”. For the reasons mentioned, the Federal Patent Court does not consider the word mark “MONSTER” as having been genuinely used in the relevant period of time.  

The legal remedy of appeal was (unfortunately) not approved.

Consequences for practitioners

The decision of the Federal Patent Court comes as a surprise. The distinctive character of word marks is not limited to a certain type of graphical design, e.g. standard fonts, as expected by the Federal Patent Court in the present case. This would entail a massive limitation of the scope of protection of word marks which would be determined by non-definable, variable font types that may change over time.

Furthermore, this decision contradicts the market reality where trademarks are usually neither in standard fonts nor applied to products packages in an isolated form. In many business areas, it is custom to apply trademarks in combination with graphic embellishments and fonts that catch the customer’s eye. 

If it is enforced as a general principle that use of a word mark in combination with a figurative element and with a particular font does not constitute genuine use of a word mark, it is recommendable to file graphically designed signs not only as word marks but as combined word/figurative marks as well. At the same time, we have to evaluate if the priority of earlier trademarks only registered as word marks can still be maintained in cases where the currently or previously used graphical form is not considered genuine use of the word mark in question. Trademark owners have a legitimate interest in obtaining trademark protection in the form of word marks as the word element is usually the only pronounceable element of a trademark. The decision of the Federal Patent Court penalizes owners of creative trademarks who are deprived of the opportunity to effectively protect a word mark. We can therefore only hope that the decision of the Federal Patent Court is limited to this special case.

Image source: www.monsterenergy.com
Decision: Federal Court of Justice, decision of August 23, 2024

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