Monster Energy Company v Glamco Co, Ltd [2018] SGHC 238

Case Details

• Citation: [2018] SGHC 238
• Title: Monster Energy Company v Glamco Co, Ltd
• Court: High Court of the Republic of Singapore
• Date of Decision: 05 November 2018
• Judge: Chan Seng Onn J
• Case Number: Tribunal Appeal No 5 of 2018
• Coram: Chan Seng Onn J
• Plaintiff/Applicant: Monster Energy Company
• Defendant/Respondent: Glamco Co, Ltd
• Legal Area: Trade Marks and Trade Names — Registration criteria; conflicts with earlier marks
• Primary Statute Referenced: Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”)
• Key Provisions Invoked (at first instance and on appeal): s 8(2)(b), s 8(4)(b)(i), s 8(4)(b)(ii)(A) and (B), s 8(7)(a)
• Application Mark: “SWEET MONSTER” (plain word mark)
• Application Number: 40201515702X
• Class / Goods for Application: Class 30 (ICGS) — popcorn; food products containing (principally) cereals; confectionary; gum sweets; biscuits; bread; sweetmeats (candy); iced cakes; ice cream; non-medicated confectionary in jelly form; chocolate; cookies; rice cakes; chemical seasonings (cooking); sauces; tea; coffee; cocoa products; non-medicated tea based beverages; chocolate based products
• Earlier Marks Relied Upon: “MONSTER” and various “MONSTER” composite marks (prefix/suffix) and device marks (grouped by similarity)
• Earlier “MONSTER” Marks (examples shown in extract):
  • MONSTER (T0605639H) — Class 32: beverages; fruit juices; aerated fruit juices; soda water; vitamin enriched non-alcoholic beverages; isotonic beverages and drinks; energy drinks
  • MONSTER (T1111969F) — Class 5: nutritional supplements in liquid form; Class 32: non-alcoholic beverages
• Earlier “MONSTER” Prefix Marks (examples shown in extract):
  • MONSTER REHABITUATE (T1210719E) — Class 5 and Classes 30/32 (ready-to-drink tea/iced tea/tea-based beverages; energy drinks enhanced with vitamins/minerals/nutrients etc.)
  • MONSTER REHAB (T1107597D) — Class 5 and Classes 30/32 (nutritional supplements and ready-to-drink tea/energy drinks enhanced with vitamins/minerals etc.)
  • MONSTER DETOX (T1206503D) — Class 5 and Classes 30/32 (nutritional supplements; ready-to-drink tea/iced tea; energy drinks and flavoured non-alcoholic drinks enhanced with vitamins/minerals etc.)
• Earlier “MONSTER” and Device Marks (examples shown in extract): T0609605E (Class 32); T0813672J (Classes 9/16/18/25); T1402721J (Classes 16/25)
• Earlier “MONSTER ENERGY” Marks (examples shown in extract):
  • MONSTER ENERGY (T0603081Z) — Class 32: mineral and aerated waters and other non-alcoholic drinks; energy drinks; isotonic beverages; fruit drinks; fruit juices and syrups for preparing beverages
  • MONSTER ENERGY (T0813668B) — Class 9/16/18/25 (protective clothing/footwear/headwear/eyewear; printed matter; bags; clothing)
  • MONSTER ENERGY (40201501193T) — Class 35/41 (promoting goods/services; entertainment services; multimedia content)
  • MONSTER ENERGY (40201401724W) — Class 9/16/18/25 (protective sports items; printed matter; bags; clothing)
• Earlier “MONSTER” Suffix Marks (examples shown in extract):
  • JAVA MONSTER (T0611182H) — Class 32 (soft drinks, carbonated/non-carbonated energy drinks and sports drinks, fruit juice drinks, enhanced with vitamins/minerals/nutrients/amino acids/herbs; flavoured waters; concentrates/syrups/powders)
  • JAVA MONSTER (T1402722I) — Class 32 (non-alcoholic beverages)
  • X-PRESSO MONSTER (T1009880F) — Class 5 (nutritional supplements); Class 32 (energy drinks flavoured with coffee)
• Appellant’s Predominant Reliance: The “MONSTER” earlier marks, as the most similar to “SWEET MONSTER”
• First Instance Decision: Opposition dismissed by the Principal Assistant Registrar of Trade Marks (Monster Energy Company v Glamco Co., Ltd [2018] SGIPO7S 7)
• Outcome on Appeal: Appeal dismissed; Respondent’s “SWEET MONSTER” application allowed to proceed to registration
• Judgment Length: 28 pages; 12,774 words
• Counsel: Just Wang and Penelope Ng (Bird & Bird ATMD LLP) for the Appellant; Tan Zhishu Gillian (Infinitus Law Corporation) for the Respondent

Summary

Monster Energy Company v Glamco Co, Ltd [2018] SGHC 238 concerned an opposition to the registration of the word mark “SWEET MONSTER” for goods in Class 30. The Appellant, Monster Energy Company, relied on a portfolio of earlier “MONSTER” marks registered in Singapore, including plain word marks and composite marks such as “MONSTER REHAB”, “MONSTER DETOX”, “JAVA MONSTER” and “X-PRESSO MONSTER”. The central dispute was whether “SWEET MONSTER” was sufficiently similar to the earlier marks, and whether the statutory grounds for refusing registration under the Trade Marks Act were made out.

The High Court (Chan Seng Onn J) dismissed the appeal. The court agreed with the Principal Assistant Registrar of Trade Marks that the marks were more dissimilar than similar, and that the Appellant failed to establish the required likelihood of confusion or misrepresentation under s 8(2)(b) and s 8(4)(b)(i). The court also found that the Appellant did not prove that its earlier marks were “well-known in Singapore” or “well-known to the public at large” for the purposes of s 8(4)(b)(i) and s 8(4)(b)(ii). Finally, the court held that there was no likelihood of misrepresentation or economic linkage under s 8(7)(a), given the dissimilarity between the marks.

What Were the Facts of This Case?

The Respondent, Glamco Co, Ltd, applied to register the plain word mark “SWEET MONSTER” in Singapore in Class 30. The application covered a wide range of confectionery and food items, including popcorn, biscuits, bread, iced cakes, ice cream, chocolate, cookies, rice cakes, sauces, and beverages such as tea and coffee (as well as cocoa products and non-medicated tea-based beverages). The breadth of the Class 30 specification was important because it required the tribunal to assess not only the similarity of the marks, but also the similarity of the goods and the overall likelihood of confusion.

The Appellant opposed the application. It is a Delaware company in the energy drinks and related beverage sector, and it asserted that its “MONSTER” brand is widely recognised. In Singapore, it had registered multiple trade marks incorporating the word “MONSTER”, including plain word marks for beverages and nutritional supplements, as well as composite marks with “MONSTER” as a dominant element (for example, “MONSTER REHAB”, “MONSTER DETOX”, and “JAVA MONSTER”). The Appellant’s opposition was built on the premise that “MONSTER” is distinctive and that consumers would associate “SWEET MONSTER” with the Appellant’s brand.

At the hearing before the Principal Assistant Registrar, the Appellant relied on several statutory grounds under the Trade Marks Act, namely s 8(2)(b), s 8(4)(b)(i), s 8(4)(b)(ii)(A) and (B), and s 8(7)(a). The PAR dismissed the opposition on all grounds. In particular, the PAR concluded that the Application Mark and the earlier “MONSTER” marks were more dissimilar than similar, and that this dissimilarity undermined the Appellant’s case on confusion and misrepresentation. The PAR also found that the Appellant had not established the level of reputation required to invoke the “well-known mark” protections under s 8(4)(b)(i) and s 8(4)(b)(ii).

On appeal, the Appellant again canvassed all the grounds it had relied on below. However, the High Court noted that the Appellant’s submissions focused predominantly on the earlier “MONSTER” marks, because those were considered the most similar to “SWEET MONSTER”. This framing narrowed the inquiry: if the Appellant could not show similarity between “SWEET MONSTER” and the earlier “MONSTER” marks, it would be difficult to show similarity between “SWEET MONSTER” and the other composite marks that include additional elements beyond “MONSTER”.

What Were the Key Legal Issues?

The first key issue was whether the registration of “SWEET MONSTER” would be contrary to s 8(2)(b) of the Trade Marks Act. This provision addresses the refusal of registration where the mark is identical or similar to an earlier trade mark and there exists a likelihood of confusion on the part of the public. The court therefore had to assess (i) the similarity of the marks, (ii) the similarity of the goods, and (iii) whether, in light of those factors, confusion was likely.

A second issue concerned s 8(4)(b)(i) and s 8(4)(b)(ii)(A) and (B), which provide enhanced protection for earlier marks that are “well-known” in Singapore or “well-known to the public at large”. These provisions are designed to prevent dilution and unfair advantage, even where confusion may not be the primary concern. The Appellant had to show not only that the marks were sufficiently connected in the relevant sense, but also that its earlier marks met the statutory threshold of being well-known.

Finally, the court had to consider s 8(7)(a), which relates to misrepresentation and economic linkage. Under this ground, the Appellant needed to show that the Application Mark would likely cause consumers to believe that the goods originate from the Appellant or that there is some economic connection between the parties. This issue again turned heavily on the similarity (or dissimilarity) of the marks.

How Did the Court Analyse the Issues?

The court’s analysis began with the comparison between the Application Mark “SWEET MONSTER” and the Appellant’s earlier “MONSTER” marks. The High Court accepted the PAR’s approach that if the earlier “MONSTER” marks were dissimilar to the Application Mark, then the Appellant’s broader portfolio of marks would also likely fail the similarity inquiry. This was a pragmatic step: the Appellant itself acknowledged that the earlier plain “MONSTER” marks were the most similar to the Application Mark.

On the visual and conceptual comparison, the court agreed that the marks were more dissimilar than similar. While both marks shared the word “MONSTER”, the Application Mark contained an additional prominent element, “SWEET”, which altered the overall impression conveyed to consumers. The court’s reasoning reflected a consistent trade mark principle: similarity is assessed holistically, not by isolating a single component and ignoring the effect of the other elements. The presence of “SWEET” was not treated as a negligible modifier; rather, it contributed to a different commercial impression, particularly given the nature of the goods in Class 30 (confectionery and sweet foods).

That dissimilarity had knock-on effects for the confusion analysis under s 8(2)(b). Even if there were some overlap in the general beverage/food market context, the court placed decisive weight on the marks’ overall impression. The High Court endorsed the PAR’s conclusion that the likelihood of confusion was not established because consumers would not likely perceive “SWEET MONSTER” as indicating the Appellant’s trade origin. In trade mark opposition cases, this is often where the case turns: where the marks are not sufficiently similar, the remaining factors (including goods similarity) may not be enough to establish confusion.

For the “well-known mark” grounds under s 8(4)(b)(i) and s 8(4)(b)(ii), the court focused on the evidential burden. The PAR had found that the Appellant’s earlier marks were neither well-known in Singapore nor well-known to the public at large. On appeal, the High Court did not disturb those findings. The court’s approach underscores that reputation is not presumed from international registrations or global sales claims; it must be supported by evidence relevant to Singapore and to the statutory threshold. The judgment therefore illustrates the importance of presenting concrete evidence of local recognition, such as market penetration, advertising reach, sales figures in Singapore, and consumer perception evidence.

Lastly, the court addressed s 8(7)(a) by considering whether there was a likelihood of misrepresentation that the applicant and respondent were the same entity or economically linked. Again, the court’s reasoning was anchored in the dissimilarity of the marks. Where the overall impression does not point consumers towards the earlier mark proprietor, the inference of misrepresentation or economic linkage becomes difficult to sustain. The court therefore agreed with the PAR that no such likelihood was established.

What Was the Outcome?

The High Court dismissed Monster Energy Company’s appeal. The practical effect was that the Respondent’s trade mark application for “SWEET MONSTER” in Class 30 (application No 40201515702X) was allowed to proceed to registration.

In other words, the Appellant’s opposition failed across all pleaded statutory grounds. The court’s decision confirms that, even where an opponent has a strong brand portfolio, registration will not be blocked unless the statutory requirements—particularly mark similarity and, where relevant, the well-known reputation threshold—are satisfied on the evidence.

Why Does This Case Matter?

This case is instructive for practitioners because it demonstrates how the similarity analysis can be decisive. The High Court’s endorsement of the PAR’s conclusion that “SWEET MONSTER” was more dissimilar than similar to the earlier “MONSTER” marks shows that shared elements do not automatically establish trade mark similarity. The overall impression created by the full mark, including additional words that shift the commercial meaning, remains central.

It is also a useful reminder on the evidential requirements for invoking “well-known mark” protections. The Appellant’s reliance on international success and global recognition was not enough to meet the statutory standard without persuasive evidence of local reputation in Singapore. For opponents seeking relief under s 8(4)(b), this case highlights the need for Singapore-specific evidence and careful alignment between the evidence adduced and the legal threshold of “well-known in Singapore” or “well-known to the public at large”.

Finally, the decision provides guidance on s 8(7)(a) misrepresentation/economic linkage claims. Where the marks are found to be dissimilar, tribunals may be reluctant to infer consumer confusion or linkage. For applicants, the case supports the argument that adding a distinctive element to a famous word may be sufficient to avoid the statutory grounds—provided the overall impression is genuinely different. For opponents, it emphasises that brand strength must be translated into legally relevant proof, and that the mark comparison must be approached holistically.

Legislation Referenced

• Trade Marks Act (Cap 332, 2005 Rev Ed) — s 8(2)(b)
• Trade Marks Act (Cap 332, 2005 Rev Ed) — s 8(4)(b)(i)
• Trade Marks Act (Cap 332, 2005 Rev Ed) — s 8(4)(b)(ii)(A) and (B)
• Trade Marks Act (Cap 332, 2005 Rev Ed) — s 8(7)(a)

Cases Cited

• [2007] SGIPOS 9
• [2014] SGIPOS 3
• [2017] SGIPOS 15
• [2018] SGHC 238
• [2018] SGIPO7S 7

Source Documents

• Original Judgment (PDF) — Singapore Law Watch
• Archived Copy (PDF) — Litt Law CDN

This article analyses [2018] SGHC 238 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.