Case Details
- Citation: [2021] SGIPOS 14
- Court: Intellectual Property Office of Singapore
- Date: 2021-11-18
- Judges: Ong Sheng Li, Gabriel (Principal Assistant Registrar of Trade Marks)
- Plaintiff/Applicant: Monster Energy Company
- Defendant/Respondent: Health and Happiness (H&H) Hong Kong Limited
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Trade Marks Act, Trade Marks Act (Cap. 332)
- Cases Cited: [2017] SGIPOS 12, [2017] SGIPOS 17, [2018] SGIPOS 18, [2018] SGHC 238, [2018] SGIPOS 1, [2018] SGIPOS 16, [2018] SGIPOS 7, [2018] SGIPOS 9, [2021] SGIPOS 6, [2021] SGHC 165
- Judgment Length: 12 pages, 5,402 words
Summary
This case involves a trade mark opposition filed by Monster Energy Company (the "Opponent") against a trade mark application filed by Health and Happiness (H&H) Hong Kong Limited (the "Applicant"). The Opponent opposed the registration of the Applicant's trade mark on the basis that it is similar to the Opponent's earlier registered trade marks containing the word "BEAST". The Hearing Officer had to determine whether the competing marks are similar, whether the goods/services are identical or similar, and whether there is a likelihood of confusion on the part of the public.
What Were the Facts of This Case?
On 31 May 2018, the Applicant filed to register the trade mark "Noisy Beast" in Class 35 for various services including sales promotion, advertising, and marketing. The Opponent, a global leader in the beverage industry known for its "MONSTER ENERGY" brand, opposed the registration of the Applicant's mark on the basis of its earlier registered trade marks "UNLEASH THE BEAST!" and "REHAB THE BEAST!".
The Opponent's earlier marks were registered in various classes, including Class 5 for nutritional supplements, Class 30 for tea and coffee-based beverages, and Class 32 for non-alcoholic beverages such as energy drinks and fruit juices. The Applicant's company, Noisy Beast, is a full-service communications agency providing services such as sales promotion, marketing, and advertising.
Both parties filed evidence in the form of statutory declarations, but the Applicant did not file any written submissions. The case was decided on the basis of the pleadings and evidence without an oral hearing.
What Were the Key Legal Issues?
The key legal issue in this case was whether the Opponent had established the three-step test under Section 8(2)(b) of the Trade Marks Act: (1) similarity of the competing marks, (2) identity or similarity of the goods/services, and (3) likelihood of confusion on the part of the public.
The Hearing Officer noted that if any one of these steps could not be established, the opposition under this ground would fail. Therefore, the Hearing Officer decided to deal with the second step (similarity of goods/services) first, as it would be determinative of the outcome.
How Did the Court Analyse the Issues?
In assessing the similarity of the goods and services, the Hearing Officer referred to the factors set out in the British Sugar case, which have been applied in local court decisions such as Staywell. These factors include the respective uses and users of the goods/services, the physical nature of the goods/acts of service, the trade channels through which they reach the market, the location of the goods in supermarkets, and the extent to which the goods/services are competitive.
The Hearing Officer noted that the Applicant's trade mark application was for services in Class 35, such as sales promotion, advertising, and marketing, while the Opponent's earlier marks were registered for goods in Classes 5, 30, and 32, such as nutritional supplements, tea, coffee, and various non-alcoholic beverages. The Hearing Officer found that the services covered by the Applicant's mark were "totally and completely dissimilar" to the Opponent's goods.
Given the clear dissimilarity between the goods and services, the Hearing Officer concluded that the second step of the test under Section 8(2)(b) could not be established. As a result, the opposition failed, and the Hearing Officer did not need to consider the other two steps of the test (similarity of marks and likelihood of confusion).
What Was the Outcome?
The Hearing Officer dismissed the Opponent's opposition, allowing the Applicant's trade mark application to proceed to registration. The Hearing Officer found that the services covered by the Applicant's mark were "totally and completely dissimilar" to the Opponent's registered goods, and therefore the second step of the test under Section 8(2)(b) could not be established.
Why Does This Case Matter?
This case is significant for a few reasons:
First, it highlights the importance of the three-step test under Section 8(2)(b) of the Trade Marks Act, and the need to establish all three elements (similarity of marks, similarity of goods/services, and likelihood of confusion) for an opposition to succeed. The Hearing Officer's decision to focus on the second step, as it was determinative, demonstrates a pragmatic approach to resolving trade mark disputes.
Second, the case provides guidance on the assessment of goods and services similarity, with the Hearing Officer applying the well-established British Sugar factors. The finding that the Applicant's services were "totally and completely dissimilar" to the Opponent's goods is a clear-cut example of where the second step of the test cannot be satisfied.
Finally, the case is noteworthy in the context of Monster Energy Company's extensive trade mark opposition history in Singapore. The Hearing Officer's brief reference to the Opponent's past opposition actions, many of which were successful by default, underscores the significance of this particular loss on the merits.
Legislation Referenced
Cases Cited
- [2017] SGIPOS 12 - Monster Energy Company v Mixi, Inc
- [2017] SGIPOS 17 - Monster Energy Company v Chun-Hua Lo
- [2018] SGIPOS 18
- [2018] SGHC 238 - Monster Energy Company v Glamco Co., Ltd.
- [2018] SGIPOS 1
- [2018] SGIPOS 16 - Monster Energy Company v NBA Properties, Inc.
- [2018] SGIPOS 7 - Monster Energy Company v Glamco Co., Ltd.
- [2018] SGIPOS 9 - Monster Energy Company v Tencent Holdings Limited
- [2021] SGIPOS 6
- [2021] SGHC 165
- Staywell Hospitality Group v Starwood Hotels & Resorts Worldwide [2014] 1 SLR 911
- British Sugar plc v James Robertsons & Sons Ltd [1996] RPC 281
Source Documents
This article analyses [2021] SGIPOS 14 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.