Case Details
- Citation: [2023] SGIPOS 13
- Court: Intellectual Property Office of Singapore
- Date: 2023-12-26
- Judges: Principal Assistant Registrar Ong Sheng Li, Gabriel
- Plaintiff/Applicant: IICOMBINED Co., 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 12, [2017] SGIPOS 17, [2018] SGIPOS 15, [2018] SGIPOS 7, [2018] SGIPOS 9, [2021] SGIPOS 6, [2021] SLR 319, [2022] SGHC 293, [2023] SGIPOS 13
- Judgment Length: 26 pages, 6,200 words
Summary
This case involves a trade mark opposition by Monster Energy Company against IICOMBINED Co., Ltd.'s application to register the mark "GENTLE MONSTER" for smartglasses. Monster Energy Company, a global leader in the energy drinks industry, opposed the registration on the grounds that the "GENTLE MONSTER" mark is similar to its earlier registered "MONSTER" mark and would likely cause confusion among consumers. The Intellectual Property Office of Singapore had to determine whether the competing marks are similar, whether the goods are identical or similar, and whether there is a likelihood of confusion.
What Were the Facts of This Case?
GENTLE MONSTER is a South Korean luxury eyewear brand that was founded in 2011 and has since expanded globally, including opening two stores in Singapore. In 2018, IICOMBINED Co., Ltd. (the Applicant) applied to register the "GENTLE MONSTER" mark in Singapore for smartglasses. After the mark was published for opposition purposes, Monster Energy Company (the Opponent) commenced these proceedings, alleging that the "GENTLE MONSTER" mark is similar to its earlier registered "MONSTER" mark and would likely cause confusion among consumers.
The Opponent owns various "MONSTER", "MONSTER ENERGY", and "MONSTER" formative marks in Singapore and globally. Its most frequently used mark is a stylized composite mark featuring the word "MONSTER ENERGY". The Opponent has a history of opposing other traders' attempts to register marks containing the word "MONSTER", with mixed success in previous cases.
The Applicant, IICOMBINED Co., Ltd., is the owner of the GENTLE MONSTER brand. It has various trade mark registrations and applications for "GENTLE MONSTER" around the world, including an earlier Singapore registration for "GENTLE MONSTER" in Class 9 for spectacles and sunglasses.
What Were the Key Legal Issues?
The key legal issues in this case were:
- Whether the "GENTLE MONSTER" mark applied for by the Applicant is similar to the Opponent's earlier registered "MONSTER" mark under Section 8(2)(b) of the Trade Marks Act.
- Whether the goods covered by the competing marks are identical or similar.
- Whether there is a likelihood of confusion on the part of the public arising from the similarity of the marks and goods.
How Did the Court Analyse the Issues?
The tribunal applied the three-step test set out in the Staywell case: (1) are the competing marks similar, (2) are the goods identical or similar, and (3) is there a likelihood of confusion arising from the foregoing.
On the first issue of marks similarity, the tribunal considered the visual, aural, and conceptual similarity between the "GENTLE MONSTER" mark and the Opponent's "MONSTER" mark. The Opponent argued that the common element "MONSTER" creates a moderate degree of visual similarity, while the Applicant contended that the additional word "GENTLE" would distinguish the marks. The tribunal analyzed the relative importance of the first word in a mark and the distinctiveness of the common "MONSTER" element.
On the second issue of goods similarity, the tribunal noted that the Applicant's "smartglasses" in Class 9 were identical or similar to the Opponent's registered goods in Class 9, which included eyewear and related products.
For the third issue of likelihood of confusion, the tribunal considered factors such as the degree of similarity between the marks, the degree of similarity between the goods, and the strength of the Opponent's mark. It also analyzed the Opponent's evidence on its goodwill, the potential for misrepresentation, and the likelihood of damage.
What Was the Outcome?
The tribunal ultimately found that the "GENTLE MONSTER" mark was not similar enough to the Opponent's "MONSTER" mark to cause a likelihood of confusion among consumers. While the marks shared the common element "MONSTER", the tribunal held that the additional word "GENTLE" was sufficient to distinguish them visually, aurally, and conceptually. Additionally, the tribunal found that the Opponent's evidence was not strong enough to establish the necessary goodwill, misrepresentation, and likelihood of damage under the Section 8(7)(a) ground.
Accordingly, the tribunal dismissed the Opponent's opposition and allowed the Applicant's "GENTLE MONSTER" mark to proceed to registration.
Why Does This Case Matter?
This case provides valuable guidance on the assessment of marks similarity and likelihood of confusion in trade mark oppositions, particularly in situations where the competing marks share a common element. The tribunal's analysis of the relative importance of the first word in a mark and the role of acquired distinctiveness in the marks-similarity comparison is noteworthy.
The case also highlights the Opponent's ongoing global efforts to protect its "MONSTER" brand, which have resulted in a number of previous tribunal and court decisions. While brand owners are entitled to vigorously defend their intellectual property, this case demonstrates that the tribunal will carefully consider the specific facts and apply the relevant legal principles to determine whether the requirements for a successful opposition have been met.
For practitioners, this decision serves as a reminder that the marks-similarity assessment is a nuanced exercise that requires a holistic consideration of all the relevant factors, and that the strength of an opponent's evidence is crucial in establishing the grounds of opposition, especially under Section 8(7)(a).
Legislation Referenced
- Trade Marks Act
- Trade Marks Act 1998
Cases Cited
- [2017] SGIPOS 12
- [2017] SGIPOS 12
- [2017] SGIPOS 17
- [2018] SGIPOS 15
- [2018] SGIPOS 7
- [2018] SGIPOS 9
- [2021] SGIPOS 6
- [2021] SLR 319
- [2022] SGHC 293
- [2023] SGIPOS 13
Source Documents
This article analyses [2023] SGIPOS 13 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.