A trademark is subject to a use obligation. In relation to EU trademarks registered in the EUIPO, a rule has been adopted according to which the use of a trademark should commence no later than 5 years from the date of registration. A similar regulation applies in the Polish Industrial Property Law. Failure to fulfil this obligation carries the risk of losing the trademark registration (so-called declaration of revocation of the trademark). The right of protection for a trademark expires as a result of failure to use the registered trademark in a genuine manner for goods covered by the right of protection for an uninterrupted period of five years after the date of issue of the decision on granting the right of protection, unless there are important reasons for its non-use.

When applying for a trademark, it is worth remembering the above regulation and indicating in the application the goods and services for which the trademark will actually be used (especially when a period of 5 years has elapsed since the decision on granting the protection right was issued).

In an application for a protection right, many goods and services can be indicated, which often overlap. Entrepreneurs, when analysing their own, finished products, often face the dilemma of choosing the right class. The so-called Nice Classification, created for the purposes of trademark applications, comes to the rescue here, indicating the functions or purpose of the finished product, and if the function or purpose is not listed in any classification item, the finished product is classified by analogy to other comparable finished products. The number of classes also affects the amount of official fees for filing a trademark and its protection.

The Monster Energy Company from the USA, owner of the “MONSTER” and “MONSTER ENERGY” brands (hereinafter referred to as the “MOSNTER” marks) for energy drinks, had to deal with the above problem. On November 3, 2010, Monster Energy Co. filed an application with the European Union Intellectual Property Office (EUIPO) for registration of the EU trademark “MONSTER” for, among others, the following goods:

– “coffee-based beverages and coffee-based beverages containing milk in class 30 of the Nice Classification”;

– “non-alcoholic beverages, namely energy drinks and coffee-flavoured energy drinks, all enriched with vitamins, minerals, nutrients, amino acids or herbs in class 32 of the Nice Classification.”

On 25 April 2017, i.e. after 5 years from the registration of the “MONSTER” marks, Frito-Lay Trading Company GmbH filed applications for a declaration of revocation of the rights to the contested trademarks for the above-mentioned goods in class 30, on the ground that those marks had not been genuinely used for an uninterrupted period of five years, in accordance with Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001).

In response to the applications for revocation, Monster Energy Company submitted evidence of use of its trade marks. Nevertheless, by decisions of 22 and 23 October 2019, the Cancellation Division of the EUIPO invalidated the contested trade marks in respect of goods in Class 30 (coffee-based beverages), finding that use of those marks had been established only in respect of energy drinks, or alternatively various lines of energy drinks with different flavours, in Class 32. That decision was upheld by the Board of Appeal of the EUIPO, and the General Court dismissed Monster Energy Company’s action.

The authorities adjudicating the case considered that, in order to prove use of the contested marks in relation to the goods at issue, the American company had relied on its goods, which were canned beverages bearing the words “espresso coffee drink with milk”. The authorities then examined those goods. The Board of Appeal of EUIPO found that it was necessary to distinguish between “coffee-based beverages” in Class 30, whether or not they contain milk, on the one hand, and “energy drinks” in Class 32, on the other. The Board of Appeal provided the definition of the concept of “energy drink” contained in the Encyclopædia Britannica, according to which it is “any beverage which contains a high level of a stimulant, usually caffeine, as well as sugar and often supplements such as vitamins or carnitine, and which is promoted as a product capable of increasing mental alertness and physical performance. Energy drinks are different from sports drinks, which are used to replace water and electrolytes during or after physical exercise, and from coffee and tea, which are brewed, contain fewer ingredients and may be decaffeinated. Energy drinks are also different from soft drinks, which either do not contain caffeine or contain relatively small amounts of it.’ The Board pointed out that the illustration of the list of ingredients of the goods submitted by the American entity in the proceedings showed that they contained L-carnitine, B vitamins, ginseng and taurine, ingredients that were not commonly used in ‘coffee drinks with milk’ in Class 30, but were usually found in energy drinks. According to the Board of Appeal, the presence of such ingredients was an essential aspect of those goods. Monster Energy Company sought to show that caffeine-flavoured energy drinks containing coffee extract could be classified as drinks in Class 30 and thus sought to maintain its mark. In relation to those claims, the Board of Appeal noted, first of all, that it had not been clarified whether the goods in question had been brewed or not. It found that, although the goods in question could have a coffee or espresso flavour, their ingredients also included a wide range of ingredients that were not commonly found in ‘coffee-based beverages’ and that the labelling of those goods clearly indicated that they had a ‘high caffeine content’. The Board of Appeal ultimately found that the goods of Monster Energy Company had the same characteristics as those of ‘energy drinks’. It emphasised in that regard that the actual function or purpose of those goods was to serve as ‘energy drinks’, albeit variants with a coffee with milk flavour.

The General Court of the EU, in considering the complaint of Monster Energy Company (Judgment of the General Court of the EU of 10 November 2021, Joined Cases T‑758/20 and T‑759/20), confirmed the correctness of the EUIPO’s decision and indicated that coffee-based beverages and energy drinks are of a different nature and do not fulfil the same main function. The former are characterised by the presence of coffee, while the latter contain and combine many ingredients, and coffee or its aroma play only a secondary role. Consumers are aware of these differences, which are further reinforced by the complainant’s communication and promotion in relation to the disputed goods. The Court also rejected the complainant’s argument that the disputed goods are a so-called multi-purpose product.

The above decision should be assessed as correct. The decisions of the EUIPO and the judgment of the General Court of the EU can make it easier for applicants to choose the appropriate class for the trademark they are applying for. The decision presents criteria and guidelines that make such a choice easier, referring to the nature and function of the product. A given product that is not a complex (multi-purpose) product should generally be assigned to one product class according to the Nice Classification. The outcome of the case may change the policy of entities applying for their trademarks in a very broad way (for many goods and services), thus creating a free space for the registration of trademarks by other entities, which will enable the coexistence of a greater number of rights protected by different entities.

Judgment of the General Court of the EU of 10 November 2021, Joined Cases T‑758/20 and T‑759/20