Case Details
- Citation: [2024] SGIPOS 8
- Court: Intellectual Property Office of Singapore
- Date: 2024-10-04
- Judges: IP Adjudicator Vince Gui
- Plaintiff/Applicant: Artisan Boulangerie Compagnie Pte Ltd
- Defendant/Opponent: Monster Energy Company
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Trade Marks Act, Trade Marks Act 1998
- Cases Cited: [2017] SGIPOS 12, [2017] SGIPOS 17, [2023] SGIPOS 14, [2024] SGIPOS 8
- Judgment Length: 27 pages, 5,490 words
Summary
This case involves a trade mark dispute between Monster Energy Company and Artisan Boulangerie Compagnie Pte Ltd. Monster Energy Company, the owner of several registered "Monster" trade marks, opposed Artisan Boulangerie's applications to register two "GMS" trade marks containing the word "Monster". The key issues were whether the GMS marks were similar to Monster Energy's earlier marks, and whether there was a likelihood of confusion between the marks. The Intellectual Property Office of Singapore ultimately found that the marks were similar and there was a likelihood of confusion, and therefore upheld Monster Energy's opposition.
What Were the Facts of This Case?
Artisan Boulangerie Compagnie Pte Ltd ("the Applicant") applied to register two trade marks, referred to as the "GMS Marks", which contained the word "Monster". The GMS Marks were applied for in Class 43 and covered a range of food and beverage services including restaurant, catering, café, and bakery services.
Monster Energy Company ("the Opponent") opposed the registration of the GMS Marks. The Opponent relied on several of its own registered trade marks containing the word "Monster", referred to as the "Monster Energy Marks". The Monster Energy Marks were registered in various classes including Class 32 for non-alcoholic beverages and energy drinks.
The Opponent argued that the GMS Marks were similar to its earlier Monster Energy Marks, and that there was a likelihood of confusion between the marks given the similarity of the goods and services covered.
What Were the Key Legal Issues?
The key legal issues in this case were:
- Whether the GMS Marks were similar to the earlier Monster Energy Marks, taking into account visual, aural, and conceptual similarity.
- Whether the goods and services covered by the GMS Marks were similar or identical to those covered by the Monster Energy Marks.
- Whether there was a likelihood of confusion on the part of the public between the GMS Marks and the Monster Energy Marks.
How Did the Court Analyse the Issues?
The IP Adjudicator applied the step-by-step approach set out in the Staywell case, which requires an assessment of (a) similarity of marks, (b) similarity of goods/services, and (c) likelihood of confusion.
On the issue of mark similarity, the Adjudicator considered the visual, aural, and conceptual similarity of the marks. While acknowledging that the device component of the GMS Marks was likely to be perceived as decorative, the Adjudicator found that the textual component containing the word "Monster" was the dominant and distinctive element that would stand out in the consumer's imperfect recollection. The Adjudicator also found some conceptual similarity between the marks, as both evoked the idea of something large or monstrous.
On the issue of goods/services similarity, the Adjudicator accepted the Opponent's argument that it was common for restaurants and salad bars to sell non-alcoholic beverages, including energy drinks. The Adjudicator also noted that the Opponent had previously opened a restaurant at its headquarters, further blurring the lines between the respective goods and services.
In assessing the likelihood of confusion, the Adjudicator rejected the Applicant's arguments that the device component of the GMS Marks would be the dominant feature, and that the Applicant's marketing efforts had focused on healthy salads rather than energy drinks. The Adjudicator found that the relevant public would not exercise a high degree of attention when purchasing food and beverages, and that the similarities between the marks and goods/services would likely lead to confusion.
What Was the Outcome?
The IP Adjudicator upheld Monster Energy Company's opposition and refused the registration of Artisan Boulangerie's GMS Marks. The Adjudicator concluded that the GMS Marks were similar to the earlier Monster Energy Marks, the goods and services were similar, and there was a likelihood of confusion on the part of the public.
Why Does This Case Matter?
This case provides a useful illustration of the legal principles and analysis applied in trade mark opposition proceedings under Section 8(2)(b) of the Singapore Trade Marks Act. It demonstrates the importance of considering visual, aural, and conceptual similarity of marks, as well as the similarity of the respective goods and services, in assessing the likelihood of consumer confusion.
The case also highlights the challenges faced by a later applicant seeking to register a mark containing a term that is already the subject of earlier registered trade marks. Even where the later mark has additional distinctive elements, the presence of the common term can still result in a finding of similarity and likelihood of confusion.
For legal practitioners, this case serves as a precedent on the application of the step-by-step approach to trade mark opposition proceedings, and the factors that will be considered by the Intellectual Property Office of Singapore in assessing mark and goods/services similarity, as well as likelihood of confusion.
Legislation Referenced
Cases Cited
- [2017] SGIPOS 12
- [2017] SGIPOS 17
- [2023] SGIPOS 14
- [2024] SGIPOS 8
- Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc [2014] 1 SLR 911
Source Documents
This article analyses [2024] SGIPOS 8 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.