The BOIP rejected the opposition against Unilever's application for UNLEASH THE BEAST in relation to which Monster Energy Company invoked multiple RELEASE THE BEAST trademark registrations. The reason for this was that the BOIP deemed the application, which (inter alia) was filed in relation to ice cream, was dissimilar to the goods for which Monster held registrations (non-alcoholic beverages, among other things). The Court of Appeal of The Hague has now set aside the BOIP's decision.
Monster advocated that the application by Unilever concerned an identical or similar trademark filed for the same or similar goods or services, where there is a likelihood of confusion on the part of the public.
It is standard case law that, in assessing the similarity of goods, all the relevant factors relating to those goods themselves should be taken into account. Those factors include, inter alia, their nature, intended purpose, their method of use, distribution channels and whether they are in competition with each other or are complementary.
The comparison had to be made between the following goods:
| Opposition based on various registrations |
Opposition directed against |
| Cl 5 Nutritional supplements in liquid form in Class 5. |
|
Cl 30 Nutritional supplements, not for medical use,
as far as not included in other classes. |
|
Cl 30 Ready to drink tea, iced tea and tea-based
beverages; ready to drink flavoured tea, iced tea
and tea-based beverages in Class 30. |
Cl 30 Ice cream; water ices;
frozen yoghurt; frozen confectionery. |
| Cl 32 Non-alcoholic beverages. |
|
| Cl 32 Beverages |
|
Cl 32 Beverages, namely, carbonated soft drinks;
non-alcoholic carbonated and non-carbonated drinks
enhanced with vitamins, minerals, nutrients, proteins,
amino acids and/or herbs; energy or sports drinks; fruit |
|
Where the BOIP found that the goods were dissimilar the Court of Appeal when arriving at the comparison with Non-alcoholic beverages - concluded that there is a low degree of similarity with Ice cream, water ices and frozen yoghurt.
In this regard the Court of Appeal deemed the following to be important:
- Non-alcoholic beverages will include cooled soft-drinks and milk shakes, Non-alcholic beverages and Ice cream both function as refreshments. The difference in the nature of the goods as deemed important by the BOIP is of no relevance in this regard (Beverages quenching thirst, Ice cream food as a treat or dessert);
- The goods do to some degree compete with each other: a consumer looking for refreshment will either purchase a (cool) beverage or an ice cream;
- The goods often have the same distribution channels: snack bars, petrol stations, supermarkets, where the goods are often offered/displayed in each other's vicinity;
- There is a trend among beverage producers to also launch ice cream products with the same flavour and appearance as their beverages (brand extension).
As to the application for frozen confectionery the Court of appeal remarked that they are dissimilar. The reason for this is that, by virtue of their solid and non-frozen-state, they are primarily intended to function as food and to satisfy hunger and therefore are not in competition with - but are complementary to beverages.
The BOIP did not address the question of whether there is a likelihood of confusion on the part of the public, since this would not be the case if the goods are dissimilar. The Court of Appeal in this regard - not surprisingly - deemed that there is likelihood of confusion given i.a. the high degree of similarity between the sign RELEASE THE BEAST and the trademark UNLEASH THE BEAST from a visual, aural and conceptual point of view.
As a result Unilever only obtained the Benelux trademark registration RELEASE THE BEAST for 'frozen confectionery'.
The BOIP rejected the opposition against Unilever's application for UNLEASH THE BEAST in relation to which Monster Energy Company invoked multiple RELEASE THE BEAST trademark registrations. The reason for this was that the BOIP deemed the application, which (inter alia) was filed in relation to ice cream, was dissimilar to the goods for which Monster held registrations (non-alcoholic beverages, among other things). The Court of Appeal of The Hague has now set aside the BOIP's decision.
Monster advocated that the application by Unilever concerned an identical or similar trademark filed for the same or similar goods or services, where there is a likelihood of confusion on the part of the public.
It is standard case law that, in assessing the similarity of goods, all the relevant factors relating to those goods themselves should be taken into account. Those factors include, inter alia, their nature, intended purpose, their method of use, distribution channels and whether they are in competition with each other or are complementary.
The comparison had to be made between the following goods:
| Opposition based on various registrations |
Opposition directed against |
| Cl 5 Nutritional supplements in liquid form in Class 5. |
|
Cl 30 Nutritional supplements, not for medical use,
as far as not included in other classes. |
|
Cl 30 Ready to drink tea, iced tea and tea-based
beverages; ready to drink flavoured tea, iced tea
and tea-based beverages in Class 30. |
Cl 30 Ice cream; water ices;
frozen yoghurt; frozen confectionery. |
| Cl 32 Non-alcoholic beverages. |
|
| Cl 32 Beverages |
|
Cl 32 Beverages, namely, carbonated soft drinks;
non-alcoholic carbonated and non-carbonated drinks
enhanced with vitamins, minerals, nutrients, proteins,
amino acids and/or herbs; energy or sports drinks; fruit |
|
Where the BOIP found that the goods were dissimilar the Court of Appeal when arriving at the comparison with Non-alcoholic beverages - concluded that there is a low degree of similarity with Ice cream, water ices and frozen yoghurt.
In this regard the Court of Appeal deemed the following to be important:
- Non-alcoholic beverages will include cooled soft-drinks and milk shakes, Non-alcholic beverages and Ice cream both function as refreshments. The difference in the nature of the goods as deemed important by the BOIP is of no relevance in this regard (Beverages quenching thirst, Ice cream food as a treat or dessert);
- The goods do to some degree compete with each other: a consumer looking for refreshment will either purchase a (cool) beverage or an ice cream;
- The goods often have the same distribution channels: snack bars, petrol stations, supermarkets, where the goods are often offered/displayed in each other's vicinity;
- There is a trend among beverage producers to also launch ice cream products with the same flavour and appearance as their beverages (brand extension).
As to the application for frozen confectionery the Court of appeal remarked that they are dissimilar. The reason for this is that, by virtue of their solid and non-frozen-state, they are primarily intended to function as food and to satisfy hunger and therefore are not in competition with - but are complementary to beverages.
The BOIP did not address the question of whether there is a likelihood of confusion on the part of the public, since this would not be the case if the goods are dissimilar. The Court of Appeal in this regard - not surprisingly - deemed that there is likelihood of confusion given i.a. the high degree of similarity between the sign RELEASE THE BEAST and the trademark UNLEASH THE BEAST from a visual, aural and conceptual point of view.
As a result Unilever only obtained the Benelux trademark registration RELEASE THE BEAST for 'frozen confectionery'.