Case Details
- Citation: [2018] SGIPOS 9
- Court: Intellectual Property Office of Singapore
- Date: 2018-06-12
- Judges: Ong Sheng Li, Gabriel, Assistant Registrar of Trade Marks
- Plaintiff/Applicant: Tencent Holdings Limited
- Defendant/Opponent: Monster Energy Company
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: The Trade Marks Act
- Cases Cited: [2001] SGIPOS 4, [2016] SGIPOS 1, [2017] SGIPOS 12, [2017] SGIPOS 17, [2018] SGIPOS 1, [2018] SGIPOS 2, [2018] SGIPOS 7
- Judgment Length: 32 pages, 16,673 words
Summary
This case involves an opposition by Monster Energy Company against Tencent Holdings Limited's application to register the trade mark " " in Singapore. Monster Energy Company, the opponent, relied on its earlier "MONSTER ENERGY" trade mark registrations to argue that Tencent's applied-for mark was similar and should not be registered. However, the Intellectual Property Office of Singapore (IPOS) found that the marks were more dissimilar than similar, and allowed Tencent's application to proceed to registration.
What Were the Facts of This Case?
Tencent Holdings Limited is a publicly-owned holding company based in Shenzhen, China. It has many subsidiaries and provides a wide range of internet, mobile, and gaming services. In 2015, Tencent applied to register the trade mark " " in Singapore, covering goods and services in Classes 9, 41, and 42.
Monster Energy Company, the opponent, is a company that produces and sells energy drinks. It has numerous registered trade marks containing the word "MONSTER", including "MONSTER ENERGY", which it relied on in these proceedings.
This was the fourth case where Monster Energy Company had opposed a trade mark application containing the word "MONSTER". In the previous three cases - Mixi, Chun-Hua Lo, and Glamco - Monster Energy Company's oppositions were unsuccessful, with the tribunals finding that the competing marks were more dissimilar than similar.
What Were the Key Legal Issues?
The key legal issue in this case was whether Tencent's applied-for mark " " was similar to Monster Energy Company's earlier "MONSTER ENERGY" trade mark, such that it should be refused registration under Section 8(2)(b) of the Trade Marks Act.
Monster Energy Company also raised other grounds of opposition under Sections 8(4)(b)(i), 8(4)(b)(ii)(A), 8(4)(b)(ii)(B), and 8(7)(a) of the Trade Marks Act. However, these grounds were all contingent on a finding that the marks were similar.
How Did the Court Analyse the Issues?
The hearing officer, Assistant Registrar Ong Sheng Li, Gabriel, noted that this was the fourth case where Monster Energy Company had opposed a trade mark containing the word "MONSTER". In the previous three cases, the oppositions had been unsuccessful, with the tribunals finding that the competing marks were more dissimilar than similar.
The hearing officer stated that he saw no reason to depart from the approach taken in the previous cases. He held that the word "ENERGY" in Monster Energy Company's "MONSTER ENERGY" mark could not be simply ignored, and that the stylization and the word "CASTLE" in Tencent's applied-for mark were also important considerations.
The hearing officer concluded that Tencent's applied-for mark was, if anything, even more dissimilar to "MONSTER ENERGY" than the "MONSTER STRIKE" mark that was at issue in the earlier Mixi case. Since all of Monster Energy Company's grounds of opposition were contingent on a finding of marks-similarity, and the hearing officer was not persuaded that the marks were similar, the opposition failed at the first threshold.
What Was the Outcome?
The hearing officer allowed Tencent's application to register the trade mark " " to proceed to registration. He found that the mark was not similar to Monster Energy Company's earlier "MONSTER ENERGY" trade mark, and therefore the opposition failed.
Why Does This Case Matter?
This case is significant for a few reasons:
Firstly, it is the fourth case where Monster Energy Company has unsuccessfully opposed a trade mark containing the word "MONSTER". This suggests that the hearing officers and courts in Singapore are taking a consistent approach in finding that the word "MONSTER" alone is not sufficient to establish similarity between marks, and that other elements of the marks must be considered.
Secondly, the hearing officer's reasoning in this case, which closely followed the approach taken in the previous Mixi case, provides useful guidance on how trade mark similarity should be assessed. The hearing officer emphasized that the distinctive and dominant components of the marks must be considered, and that descriptive or non-distinctive elements should not be disregarded.
Finally, this case highlights the importance of carefully drafting trade mark applications and oppositions. Monster Energy Company's repeated failures in these types of cases suggest that it may need to re-evaluate its trade mark strategy and the grounds on which it chooses to oppose other marks.
Legislation Referenced
- The Trade Marks Act (Cap. 332, Rev Ed. 2005)
Cases Cited
- [2017] SGIPOS 12 (Monster Energy Company v Mixi, Inc.)
- [2017] SGIPOS 17 (Monster Energy Company v Chun-Hua Lo)
- [2018] SGIPOS 7 (Monster Energy Company v Glamco Co., Ltd.)
Source Documents
This article analyses [2018] SGIPOS 9 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.