BPatG decision on the cancellation of the energy drink trademark "MONSTER" as a warning example of rights-preserving use

The recent decision of the Federal Patent Court (BPatG) of August 23, 2024 (case no. 30 W (pat) 78/21) impressively shows how crucial the consistent and uniform use of a registered trademark is. In the case of the well-known energy drink trademark "MONSTER", it became clear that even small graphic deviations - such as the use of an unusual font and an additional claw logo - can significantly impair the scope of protection of the trademark. In the following, I will explain the case in detail, shed light on the legal background and provide practical recommendations for companies in order to ensure sustainable protection of their trademarks. Brand protection to ensure that

1. introduction: Why uniform brand presentation is so important

Brands are more than just names - they are identity-creating symbols that ensure the recognition value of a company. The Brand protection is based on the registration of the trademark in a specific, standardized form. If this form is not adhered to exactly in practice, this can not only damage the Awareness protection but, in the worst case, can even lead to the trademark being canceled. The "MONSTER" case shows that a uniform representation is essential, especially for well-known trademarks that already have a high market value, in order to stand up to opposition proceedings before the offices and courts.

2. background to the case: the energy drink brand "MONSTER"

2.1 Initial situation and brands concerned

The Monster Energy Company from California has long been established with its "MONSTER" brand in the energy drinks sector (product group class 32). Due to its high level of recognition and successful marketing, the trademark enjoys extended protection.

At the same time, a more recent application was filed in class 9 - specifically for products such as notebooks, computer mice, laptop bags, mouse pads and other technical devices. In this application, however, the exact registered word mark was not used, but there were significant graphic deviations. In addition to the original lettering, a striking Claw logo integrated and an unusual, rune-like appearance Font type used.

2.2 Objection procedure and legal basis

Monster Energy Company filed two oppositions against the more recent application:

Opposition based on the EU trade mark "MONSTER" (Class 32)
Opposition based on the EU trade mark "MONSTER ENERGY" (classes 14 and 24)

The contradictions were based on both a potential Risk of confusion as well as on the Special protection of the well-known brand. For well-known trademarks, the extended protection under Section 9 (1) No. 3 MarkenG applies if the public establishes a mental link between the signs. However, the decisive factor here is the Proof of use that preserves rights of the registered trademark - a point on which the opposing party ultimately struggled.

3. detailed analysis of the BPatG decision

3.1 Lack of proof of right-preserving use

The Federal Patent Court came to the conclusion that the representations of the mark used on the energy drink cans do not correspond to the registered word mark "MONSTER". Specifically, the following aspects led to this assessment:

Graphical deviations:
In addition to the classic lettering, the actual presentation featured the familiar "claw logo". In addition, a font was used that cannot be assigned to any common standard font. This rune-like font gave the sign an independent character that deviated from the original, registered sign.
Modification of individual characters:
One particularly critical detail was the design of the letter "O". This was modified in such a way that the letter is no longer immediately recognizable as such - instead it appears to the viewer as a fantasy character. Such changes mean that the recognition value and the distinctive character of the brand could be significantly diluted.

3.2 Effects on the likelihood of confusion and protection of reputation

Although the word "MONSTER" remained phonetically unchanged, the court was able to determine that the Overall impression of the sign used has been altered by the graphic design in such a way that the public no longer perceives the representation as identical to the registered word mark. This has two main consequences:

No risk of confusion:
Due to the different representation in the two trademark areas (energy drinks vs. technical devices) and the unconventional graphic design, a likelihood of confusion was denied. The consumer does not associate the different representation with the well-known trademark.
Elimination of the protection of reputation:
The extended protection for well-known trademarks requires that the public establishes a clear association with the well-known trademark. However, if the trademark is used in a different form, this protection mechanism does not apply - even for a trademark that is otherwise well known.

4 Legal assessment: What does the case teach us?

4.1 The central importance of rights-preserving use

The case underlines that the right-preserving use encompasses far more than just the simple use of the brand name. It is essential that the representation of the trademark in all means of communication - from product packaging to advertising materials - corresponds exactly to the form registered in the trademark register. Even minor deviations can be seen as evidence of use that does not preserve the rights and jeopardize the protection of the trademark.

4.2 Graphic design and its influence on trademark protection

The decision shows how critical the graphic design of a trademark is. In particular:

Unusual fonts:
The use of a font that is not recognized as a standard font can significantly change the recognition value.
Additional graphic elements:
Although elements such as a claw logo can strengthen the image of a trademark, they must always be consistent with the registered representation. If these elements are used in a way that changes the overall impression of the trademark, this can lead to a devaluation of the trademark protection.

4.3 Practical consequences for the brand strategy

Companies must be aware that a consistent brand representation is essential - not only to maintain legal protection, but also to strengthen the brand image. Any deviation from the registered form can not only lead to legal disputes, but can also have a lasting negative impact on the brand's recognition value and identity.

5. impact on companies and their brand strategy

5.1 Risks of inconsistent brand use

The BPatG's decision shows that there are numerous risks for companies if they do not use their trademarks in the registered form:

Legal disputes and deletion proceedings:
If deviations are found, competitors or the trademark owners themselves can initiate cancellation proceedings.
Loss of protection of reputation:
Even well-known trademarks only enjoy their extended protection if the registered representation is consistently observed.
Loss of image:
Inconsistent brand presentation can lead to consumers no longer being able to clearly identify the brand - which reduces brand value in the long term.

5.2 Recommendations for action to secure trademark protection

To protect themselves against such risks, companies should integrate the following measures into their brand strategy:

Exact compliance with the registered form:
- Only use the trademark as documented in the trademark register.
- Avoid independent graphic modifications, even if they may appear to be creative improvements.
Extension of the scope of protection:
- Check whether related product groups or merchandising articles should also be included in the trademark protection.
- If necessary, use additional applications to cover the entire scope of your trademark.
Documentation of brand usage:
- Provide complete evidence of the consistent use of the trademark (e.g. through photos, sales documents, websites).
- In the event of a dispute, this documentation is essential in order to make the right-preserving use credible.
Regular internal training and monitoring:
- Train your marketing and communication departments on the importance of a uniform brand presentation.
- Establish internal control mechanisms to ensure that all representations of the brand comply with legal requirements.
Early legal advice:
- Regularly consult a specialist lawyer for industrial property protection to legally safeguard your brand strategy and identify potential risks at an early stage.
- Preventive advice can help to avoid expensive legal disputes and the loss of trademark protection.

6 Conclusion: A lesson in consistent brand management

The decision of the Federal Patent Court in the case of the energy drink trademark "MONSTER" is an impressive warning signal for all companies that rely on the success of their trademark. It shows that:

Consistency and accuracy are essential in trademark use in order to enjoy full legal protection.
Graphical deviationsEven if they may appear to be creative variations at first glance, they can significantly jeopardize the recognition value and legal stability of a brand.
Early and continuous legal advice and comprehensive monitoring of brand usage are key components of a successful brand strategy.

Companies should use these findings to optimize their brand management and secure their market value in the long term. A uniform, legally compliant brand presentation is the key - not only to avoid legal disputes, but also to strengthen the brand image and achieve a sustainable competitive position.

If you have any questions about Trademark law, to the rights-preserving use or to Opposition proceedings I will be happy to advise you as an experienced lawyer and specialist lawyer for intellectual property rights. Benefit from tailor-made advice and ensure the long-term success of your brand.