On August 23, 2024, the German Federal Patent Court issued a decision that could have far-reaching implications for the protection of word marks. The case revolved around whether a word mark, when used as part of a stylized logo with a unique font, can still qualify as genuine use of the word mark itself. The outcome, which centres on the EU word mark “MONSTER,” has raised eyebrows in legal circles and might pose significant challenges for businesses seeking to safeguard their trademarks.
The conflict began when the owner of the EU trademark “MONSTER,” registered for non-alcoholic beverages in class 32, opposed the protection of IR 1 352 854 in Germany for goods in class 9. The international mark has the following font style:
The German Patent and Trademark Office (PTO) sided partially with the opponent, citing the reputation of the “MONSTER” trademark for energy drinks.
When the applicant appealed, claiming non-use of the earlier mark for non-alcoholic beverages in class 32. The trademark owner responded with extensive evidence showing the use of the word “MONSTER” on energy drink cans.
However, the Federal Patent Court concluded that the evidence fell short of proving the genuine use of the word mark. Why? The design of the logo was deemed to change the word mark’s distinctive character.
The court’s decision hinged on the distinctive design elements of the “MONSTER” mark, particularly the claw graphic and the unique font used on energy drink cans. Even though purely visual and not pronounced, the claw element was viewed as an integral part of the mark, blending with the word “MONSTER” to create what the court described as a “ghost train image.” This combination was interpreted as altering the trademark’s character, transforming it into more than just the word itself. Similarly, the “rune-like” font used for the mark—especially the letter “O,” which resembled a fantasy symbol—added so much individuality that it disrupted the recognition of “MONSTER” as a standalone word mark. While a standard font might have sufficed for genuine use, the court held that these artistic flourishes disqualified the design as the use of the registered word mark.
It will be interesting whether this court position will have any practical implications on work trademark registrations in the future. The general practice in most European countries is that word marks are protected even represented in fonts or other graphics. This is the most essential strength of that type of trademark. A potential change in the view what is the scope of protection for word marks can cause significant disturbances in the IP strategies of many trademark owners.
Source: Kluwer Trademark Blog.