The case, Monster Energy Company v. Glamco Co, Ltd. [2018] SGHC 238, was an appeal to the Singapore High Court by Monster Energy Company (the appellant) against the decision of the Principal Assistant Registrar of Trademarks (the PAR) in Monster Energy Company v. Glamco Co., Ltd. [2018] SGIPOS 7 [Apr. 20, 2018]. On November 5, 2018, the court dismissed the appellant’s appeal in its entirety and allowed Glamco. Co. Ltd. (the respondent) to proceed to register the SWEET MONSTER trademark in Class 30.

In its appeal, Monster Energy Company relied predominantly on its earlier registrations (Nos. T0605638Z, T0605639H and T1111969F) for the MONSTER word mark. In addition, it provided evidence of registration of other marks including the word “Monster” as a prefix and suffix (such as MONSTER REHABITUATE, MONSTER REHAB, MONSTER DETOX, MONSTER ENERGY, and JAVA MONSTER) and the MONSTER and claw device mark, which together make up a MONSTER family of marks.

The appellant argued that the MONSTER word mark possessed a high level of inherent distinctiveness in relation to the registered goods in question and the addition of the word “Sweet” to the respondent’s mark was insufficient to distinguish it from the earlier MONSTER registration, as the word was merely descriptive of the respondent’s goods. The appellant also contended that because of its reputation in the MONSTER family of marks, the average consumer would be confused into thinking that the goods offered under the respondent’s mark were part of the appellant’s family of marks.

In dismissing the appeal, the court found that the appellant’s earlier MONSTER marks did not possess a high level of inherent distinctiveness. The judge was convinced that the differentiating element (that is, the word “Sweet”) sufficiently and substantially distinguished the SWEET MONSTER mark visually from the appellant’s earlier MONSTER marks, and agreed with the PAR’s findings that the marks were more dissimilar than similar.

As the appellant was only able to provide evidence of use of two of the eight MONSTER marks from the purported MONSTER family of marks, the judge stated there was insufficient evidence to support the appellant’s contention that such a family of marks existed.

The appellant’s reliance on the ground that its earlier MONSTER marks were well known in Singapore also failed as it did not produce sufficient evidence of well-known status.

In relation to the tort of passing off, the judge agreed with the PAR’s findings that the appellant’s business as a whole had goodwill in Singapore; however, the use of the SWEET MONSTER mark was unlikely to give rise to any confusion that would link the respondent’s products to the appellant; hence, the element of misrepresentation was not successfully demonstrated.

This article was first published in the INTA Bulletin (February 2019 edition).