Trade marks: the limits to a MONSTER’s reach in Singapore

One of the most challenging issues that confronts trademark practitioners is how to treat a word that is arguably the dominant portion of a mark. This is especially so when that word is the subject of a registration by another party. The most recent decision involving the "Monster" mark in Singapore is an excellent example. Kat friend Samuel Wee from Yusarn Audrey provides a helpful discussion about this case.

Just how big is the "Monster"? When it comes to trade marks, it does not go as far as "Monster Energy," in the view of the High Court of Singapore.

In the case of Monster Energy Company v Glamco Co, Ltd [2018] SGHC 238, the High Court was faced with the primary question of whether Glamco’s trade mark “SWEET MONSTER” in Class 30 was registrable in Singapore even though Monster Energy had earlier trade mark registrations for the word “MONSTER” (and variations thereof) in several classes in Singapore (section 8(2)(b) of the Trade Marks Act). Monster Energy asserted as well that “MONSTER” was a well-known trade mark belonging to it (under sections 8(4)(b)(i) and 8(4)(b(ii)(A) of the Trade Marks Act) and that there was passing off (under section 8(7)(a) of the Trade Marks Act).

Monster Energy took the position that Glamco’s trade mark “SWEET MONSTER” should not be registered due to its similarity to Monster Energy’s trade mark “MONSTER”. Monster Energy argued that its trade mark “MONSTER” had a high level of inherent distinctiveness; that it should have protection vis-à-vis the family of trade marks for “MONSTER” (due to its use of its trade mark “MONSTER” with other words, such as “JAVA MONSTER”, “X-PRESSO MONSTER”, “MONSTER DETOX”, “MONSTER REHABITUATE” and “MONSTER ENERGY”); and that the word “SWEET” in Glamco’s trade mark “SWEET MONSTER” should be ignored as it is descriptive of goods in Class 30 (resulting in “MONSTER” being the dominant element in Glamco’s trade mark “SWEET MONSTER”).

The High Court was, however, not persuaded by Monster Energy’s arguments. It was determined that Monster Energy’s trade mark “MONSTER” did not possess a high level of technical distinctiveness (this is elaborated on below). First, “MONSTER” was a common word in the English language; second, “MONSTER” has an allusive and laudatory meaning in relation to Monster Energy’s goods in Class 30 (i.e., it suggests that consuming the said goods would provide energy and strength like a ferocious monster); and third, Monster Energy did not provide sufficient evidence to show that it had acquired distinctiveness in the trade mark “MONSTER” through its use (due to a lack of evidence).

This in turn meant that there was no higher threshold to be crossed for Glamco’s trade mark “SWEET MONSTER” to be found dissimilar to Monster Energy’s trade mark “MONSTER”, which would have been the case if “MONSTER” possessed a high level of technical distinctiveness. Since the Singapore Court of Appeal’s decision in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc [2014] 1 SLR 911, the comparison of trade marks in Singapore has invariably involved the question of technical distinctiveness.

Technical distinctivness refers to the capacity of a trade mark to operate as a badge of origin. For instance, trade marks comprised of an invented word would be considered to have a higher level of technical distinctiveness. A trade mark that has greater technical distinctiveness enjoys a high threshold before a competing sign will be considered dissimilar to it (i.e. more differentiating factors would have to be present); conversely, a trade mark that has a lower technical distinctiveness would have a lower threshold before a competing sign will be considered dissimilar to it.

The High Court was also not persuaded that Monster Energy should have protection vis-à-vis the family of trade marks for “MONSTER” due to a lack of evidence. In particular, the High Court questioned Monster Energy’s lack of use of the word mark “MONSTER” simpliciter, as the evidence Monster Energy produced generally showed use of “MONSTER” in a stylised form (i.e.).

As a result, the High Court found that Glamco’s trade mark “SWEET MONSTER” was dissimilar from Monster Energy’s trade mark “MONSTER”. Glamco’s trade mark “SWEET MONSTER” had to be viewed as a whole (rather than considering “MONSTER” as its dominant element), and the addition of the word “SWEET” in Glamco’s trade mark “SWEET MONSTER” was sufficient to distinguish it visually, aurally and conceptually, from Monster Energy’s trade mark “MONSTER”.

Commentary:

Monster Energy has been taking active steps to try to prevent the other parties from obtaining registration of trade marks bearing the word “MONSTER” in Singapore. For instance, Monster Energy has gone through other opposition proceedings relating to the trade marks “MONSTER STRIKE” (filed by Mixi, Inc. – see [2017] SGIPOS 12 ); (filed by Chun Hua Lo – see [2017] SGIPOS 17); and (filed by Tencent Holdings Limited – see [2018] SGIPOS ). It is noted that all of Monster Energy’s said oppositions have failed.

Practical Significance

One can ask the value of pursuing opposition proceedings? It is obviously important for trade mark owners to take steps to try to protect their trade marks, including commencing trade mark oppositions or other litigation proceedings to prevent third parties from using or registering similar trade marks.

However, trade mark owners should be mindful of the possible negative implications that such actions may have on its business. For instance, failed oppositions may embolden other third parties to use or register trade marks that may bear some arguable similarities to the owner’s trade mark.