Case Details
- Citation: Monster Energy Company v Glamco Co, Ltd [2018] SGIPOS 7
- Court: Intellectual Property Office of Singapore
- Date: 2018-04-20
- Judges: Ms Sandy Widjaja, Principal Assistant Registrar of Trade Marks
- Plaintiff/Applicant: Monster Energy Company
- Defendant/Respondent: Glamco Co, Ltd
- Legal Areas: Trade marks and trade names — Opposition to registration
- Statutes Referenced: Trade Marks Act
- Cases Cited: [2005] SGHC 175, [2014] SGIPOS 11, [2014] SGIPOS 3, [2017] SGIPOS 12, [2017] SGIPOS 17, [2018] SGIPOS 07
- Judgment Length: 47 pages, 18,343 words
Summary
This case involves a trade mark opposition brought by the well-known energy drink company Monster Energy Company against the registration of the trade mark " " by Glamco Co, Ltd. Monster Energy Company opposed the registration on the grounds of likelihood of confusion under Section 8(2)(b), reputation under Section 8(4), and passing off under Section 8(7)(a) of the Singapore Trade Marks Act. The Intellectual Property Office of Singapore ultimately ruled in favor of Monster Energy Company, finding that the application mark was confusingly similar to Monster Energy's earlier registered marks and that allowing its registration would take unfair advantage of Monster Energy's reputation.
What Were the Facts of This Case?
Monster Energy Company is a leading energy drink company that sells its popular MONSTER-branded energy drinks worldwide, including in Singapore. The company has registered numerous trade marks containing the MONSTER word and device elements in various classes covering energy drinks, nutritional supplements, and related goods and services.
Glamco Co, Ltd, the applicant, sought to register the trade mark " " in Class 30 for a variety of food and confectionery products. Monster Energy Company opposed the registration, arguing that the applied-for mark was confusingly similar to its earlier registered MONSTER marks and would take unfair advantage of its reputation.
The opposition proceedings were contentious, with Monster Energy Company having brought several other recent opposition actions against other parties seeking to register marks containing the MONSTER element. The parties filed extensive evidence and written submissions, and the matter was ultimately heard by the Principal Assistant Registrar of Trade Marks.
What Were the Key Legal Issues?
The key legal issues in this case were:
- Whether the application mark was confusingly similar to Monster Energy's earlier registered MONSTER marks under Section 8(2)(b) of the Trade Marks Act.
- Whether use of the application mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of Monster Energy's earlier registered marks under Section 8(4) of the Act.
- Whether use of the application mark would amount to passing off under Section 8(7)(a) of the Act.
How Did the Court Analyse the Issues?
On the issue of likelihood of confusion under Section 8(2)(b), the Registrar conducted the step-by-step analysis required by this provision. She compared the visual, aural, and conceptual similarity of the application mark and Monster Energy's earlier marks, and considered the degree of similarity between the goods covered by the respective marks.
The Registrar found that the application mark was visually and aurally similar to Monster Energy's MONSTER marks, with the dominant and distinctive "MONSTER" element being identical. Conceptually, the marks also conveyed a similar meaning of a fierce, powerful creature. Given the high degree of similarity between the marks, and the fact that the goods covered overlapped to some extent (both covering certain food and beverage products), the Registrar concluded that there was a likelihood of confusion under Section 8(2)(b).
On the issue of reputation under Section 8(4), the Registrar accepted the evidence demonstrating Monster Energy's substantial reputation and goodwill in its MONSTER marks, built up through extensive sales, marketing, and brand recognition worldwide and in Singapore. She found that use of the similar application mark would take unfair advantage of, and be detrimental to, the distinctive character and repute of Monster Energy's marks.
Finally, on the issue of passing off under Section 8(7)(a), the Registrar found that Monster Energy had established the necessary goodwill in its MONSTER marks, and that use of the similar application mark would amount to a misrepresentation likely to damage that goodwill.
What Was the Outcome?
Based on the above analysis, the Registrar ultimately upheld Monster Energy Company's opposition. She refused the registration of Glamco Co, Ltd's application mark " " on the grounds of likelihood of confusion under Section 8(2)(b), unfair advantage/detriment to reputation under Section 8(4), and passing off under Section 8(7)(a).
The practical effect of this decision is that Glamco Co, Ltd will not be able to register or use the opposed mark in Singapore, as this would infringe Monster Energy's prior rights. Monster Energy's dominant position in the energy drink market, and the reputation and distinctiveness of its MONSTER brand, have been reinforced by this successful opposition.
Why Does This Case Matter?
This case is significant for several reasons. Firstly, it demonstrates the strength of Monster Energy's MONSTER brand and the company's willingness to vigorously defend its trade mark rights. The Registrar's finding that the application mark was confusingly similar and took unfair advantage of Monster Energy's reputation highlights the substantial goodwill and distinctiveness that the MONSTER brand has acquired.
Secondly, the case provides useful guidance on the application of the relevant trade mark opposition grounds under Sections 8(2)(b), 8(4), and 8(7)(a) of the Singapore Trade Marks Act. The Registrar's detailed analysis of the legal tests and her application of the facts to the law will be valuable precedent for future trade mark disputes.
Finally, the case serves as a cautionary tale for traders seeking to register marks that are similar to well-known brands. Even in unrelated product fields, the reputation of a famous mark can be enough to block registration and prevent use under Singapore's trade mark laws. Brand owners will likely view this decision as a positive reinforcement of their ability to police their intellectual property rights.
Legislation Referenced
- Trade Marks Act (Cap 332, 2005 Rev Ed)
Cases Cited
- [2005] SGHC 175
- [2014] SGIPOS 11
- [2014] SGIPOS 3
- [2017] SGIPOS 12
- [2017] SGIPOS 17
- [2018] SGIPOS 07
Source Documents
This article analyses [2018] SGIPOS 7 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.