Similarity of Marks Examined in Singapore ‘Monster’ Case

In Monster Energy Company v Glamco Co., Ltd. [2018] SGIPOS 7, multinational energy drinks manufacturer Monster (‘the Opponent’) unsuccessfully opposed an application to register the mark ‘SWEET MONSTER’ (‘the Application Mark’) in Class 30 by Korean dessert purveyor Glamco (‘the Applicant’).

The Registrar denied the Opponent’s three grounds of opposition. The first was that, following Section 8(2)(b) of the Trade Marks Act, the Application mark was similar to earlier marks which the Opponent had registered in Singapore, in similar classes, and that there existed a likelihood of confusion on behalf of the public in Singapore due to this similarity. The registered marks of the Opponent which were specified as being most similar to the application mark were three plain word mark registrations for ‘MONSTER’ (‘the earlier marks’).

The Registrar examined the similarity between ‘SWEET MONSTER’ and ‘MONSTER’ using the established three-aspect test affirmed in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc [2014] 1 SLR 911 – visual, aural and conceptual similarity.

Visually, the Registrar found the marks to be more dissimilar than similar. The Application Mark consisted of two words as opposed to just one, and both words were taken to be equally prominent. Moreover, the adjective ‘sweet’ was found to cause the Application Mark to form a unitary whole giving an entirely different impression to that of the opponent’s earlier marks – and the fact that this was the first of the two words meant that it was unlikely to be overlooked by the average consumer.

The two marks were found to be similar aurally – sharing the two syllables of ‘Monster’. Nevertheless, ‘sweet’ was found to distinguish the two marks conceptually. In fact, ‘SWEET MONSTER’ taken as a whole was found to be antithetical to ‘MONSTER’ alone in terms of meaning.

Assessing these factors, the overall conclusion reached by the Registrar was that the two marks were more dissimilar than similar. The ground under Section 8(2)(b) therefore failed.

The second ground under Section 8(4)(b), protecting the proprietors of well-known marks from damage to interests caused by registrations of identical or similar marks,  also failed as a result of this assessment, as no essential part of the Application Mark was found to be similar to the earlier marks.

The third and final ground of opposition was under Section 8(7)(a) – whether the Application Mark’s registration should be refused by virtue of the earlier marks being protected by the law of passing off. Although it was found that the Opponent did have relevant goodwill in Singapore, misrepresentation on behalf of the Applicant could not be established as the Application Mark bore a converse meaning to the earlier marks.

This case is pending appeal before the Singapore High Court.

By Denise Mirandah