Robot Energy applied to register the stylised trade mark HYBRID (above left) in the UK in relation to a broad range of goods in class 32, including energy drinks.

This application was opposed by Monster Energy on the basis of:

  • its unregistered rights in the trade marks above (centre and right) relating to drinks
  • bad faith on the part of the applicant.

To reach a finding of passing off, the opponent must show goodwill in its business under its trade marks in relation to particular goods, misrepresentation leading to deception or a likelihood of deception and damage to the opponent flowing from the applicant's misrepresentation.

The Hearing Officer held that the first limb of this test was satisfied, in that Monster Energy owned substantial goodwill in both of the marks upon which it relied. The goodwill resided in the business of selling drinks and, in particular, energy drinks.

The Opponent was unsuccessful in proving that there would be a misrepresentation to the public if the Applicant were to use the HYBRID mark in relation to drinks.

The Hearing Officer admitted that the Applicant's mark used green lettering on a black background, and that the letter D was stylised in such a way as to slightly evoke the Claw device. He pointed out that the word HYBRID bears no similarity at all to the word MONSTER, and held that consumers would not confuse the HYBRID mark with either the MONSTER ENERGY and Claw device or the Claw device, even when paying a below average degree of attention to the selection of goods in a supermarket.

The Hearing Officer also held that the HYBRID mark is not so similar to Monster Energy's marks as to deceive consumers into believing that it is connected to the opponent in any way. He held that, at best, the similarity would cause some consumers to 'wonder' whether there might be a connection between the two.

The Hearing Officer found that the HYBRID mark was not adopted by the Applicant with the intention to deceive consumers. In his opinion, the evidence established that adoption of the HYBRID mark was intended to be as a lookalike mark, which merely reminded consumers of Monster Energy's trade marks and, on the contrary, sought to avoid deceiving consumers.

As the misrepresentation limb of the test was not proven, the passing off claim failed.

Bad faith

A bad faith claim is assessed on the basis of all the factors relevant to the particular case, including the knowledge of the Applicant at the time of filing its application, dishonest conduct on the part of the Applicant, and dealings which fall short of the standards of acceptable commercial behaviour.

The Opponent adduced considerable evidence to show that the Applicant is in the business of applying for registration of trade marks which imitate trade marks registered and/or used by Monster Energy, including the below trade marks:

 

It also asserted that the Applicant had no genuine intention to use these marks and that its real intention was to block or otherwise disrupt Monster Energy's business.

The Hearing Officer agreed with the Opponent that the Applicant is engaged in applying for registration of trade marks which imitate trade marks registered and/or used by Monster Energy. He held that it was highly unlikely to be coincidental given that the Opponent is a leading player in the energy drinks market in both the US and the EU.

The Hearing Officer found that the Applicant intentionally imitated Monster Energy's US trade mark application to register HYBRID ENERGY and elements of the Opponent's get-up when filing its application to register the HYBRID mark in the UK.

The Hearing Officer held that the Opponent's US trade mark application to register HYBIRD ENERGY put the applicant on notice that it may wish to register and/or use the mark in the EU in the future.

He also found that the Applicant intended to block or otherwise disrupt the business of Monster Energy in the UK, as evidenced by its opposition to Monster Energy's application to register the MONSTER ENERGY HYBRID mark in the EU, and by its offer of a licence to use the marks HYBRID and HYBRID ENERGY.

The Hearing Officer had no trouble finding that the Applicant's objection was an illegitimate one and falls below the standards of commercial behaviour observed by honest traders. The bad faith claim was successful in relation to all of the goods in class 32 and the application was refused in its entirety.

Key takeaway

This case serves as an important reminder that the practice of living dangerously (ie developing a trade mark which is evocative of an earlier, more famous brand) may not be sufficient to constitute misrepresentation for the purposes of a passing off claim.

Case ref: 0-389-19