In a decision rendered by the Intellectual Property Office of Singapore (“IPOS”), it was held that Monster Energy Company had failed in its opposition against NBA Properties Inc. Whilst the energy drink company has spent more than US$2.2 million in marking and promotional activities in Singapore, it has also launched multiple strikes against various different parties within the last few years in hopes of preventing registrations which it regarded as intrusive to its registered trade marks (“MONSTER” and “MONSTER ENERGY”), yet the present case alike several others commenced by Monster Energy Company has meet an unsuccessful end.
(A) Who are the parties involved in this case?
(a) Monster Energy Company (“the Opponent”)
The Opponent is an undertaking based in the United States in the global energy drink beverage industry. Its primary business consists of designing, creating, developing, producing, marketing and selling energy drinks under the “MONSTER” and “MONSTER ENERGY” brands, using its claw-shaped logo as one of, or a part of, its registered trade marks. Sales of the Opponent’s products bearing these trade marks were launched in Singapore in October 2012 and the goods are available at convenience stores, petrol stations and other retail outlets.
(b) NBA Properties, Inc. (“the Applicant”)
The Applicant is the marketing and licensing arm of the National Basketball Association (“NBA”), a men’s professional basketball league consisting of thirty-member teams located in the United States of America and Canada.
(B) What actually happened?
The Applicant applied to register their mark in Singapore on 16 December 2014. The application was accepted and published on 6 November 2015 for opposition.
The following time-line occurred prior to the hearing of the present case:
- The Opponent filed its Notice of Opposition to oppose the registration of the Application Mark on 4 January 2016.
- The Applicant filed its Counter-statement on 4 May 2016.
- The Opponent filed its evidence in support of the opposition on 21 December 2016.
- The Applicant filed its evidence in support of the application on 21 August 2017.
- The Opponent filed its evidence in reply on 20 November 2017.
- Following the close of evidence, the Pre-Hearing Review was held on 13 December 2017.
At the Pre-Hearing Review, the grounds of opposition were discussed and the Opponent was directed to particularise its allegation of bad faith under Section 7(6) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“the Act”). The Opponent was not able to do so and thus, this ground of opposition has been abandoned. The opposition was heard on 5 June 2018.
(C) What is/are the issue(s) in dispute?
The Opponent relied on the following provisions for this opposition:
(a) The Opponent contended on the ground of opposition under Section 8(2)(b) that the Applicant’s mark was similar to the Opponent’s trade marks, in respect of similar or identical goods or services, the result of which was a likelihood of consumer confusion;
(b) The Opponent further contended on the grounds of opposition under Sections 8(4)(b)(i) and 8(4)(b)(ii) that the Applicant’s mark was similar to the Opponent’s trade marks, which were allegedly “well known in Singapore” or “well known to the public at large in Singapore”, such as to either damage the interests of the Opponent by indicating a connection between the Applicant’s goods or services and the Opponent, dilute the distinctive character of the Opponent’s trade marks in an unfair manner or take unfair advantage of the distinctive character of the Opponent’s trademarks; and
(c) The Opponent also submitted under Section 8(7)(a) that the use of the Applicant’s mark was liable to be prevented in Singapore by the tort of passing off.
(D) Holding
(a) Having found that the marks are visually and conceptually dissimilar, and that there was no evidence to indicate that the competing marks are aurally similar, the IP Adjudicator (“Hearing Officer”) concluded that the Applicant’s mark is not similar to the Opponent’s earlier registered marks. Given that the threshold requirement of mark-similarity has not been established, the Opponent therefore failed on the ground of opposition under Section 8(2)(b).
(b) The Hearing Officer found, for the same reasons under Section 8(2)(b), that whole or essential part of the Applicant’s mark is not identical with or similar to the Opponent’s mark under Section 8(4). The Opponent therefore failed on the ground of opposition under Section 8(4)(b).
(c) Having already found that the competing marks are dissimilar, misrepresentation for the purposes of passing off cannot be established in the case. Equally, since misrepresentation cannot be established, the requirement of damage in a claim of passing off cannot be made out, whether or not the element of goodwill has been made out. The Opponent therefore failed on the ground of opposition under Section 8(7)(a).
(E) Rationale for holding
(a) In relation to the ground of Section 8(2)(b), the Hearing Officer noted the “step-by-step” approach as re-affirmed by the Court of Appeal in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc [2014] 1 SLR 911 that the Tribunal has to systematically consider the similarity of marks, similarity of goods or services, and the likelihood of confusion arising from the two similarities. If, for any one step, the answer is in the negative, the inquiry will end, and the opposition will fail.
Visually, the Hearing Officer was of the view that when viewed at as a whole, the Applicant’s mark is dissimilar to the Opponent’s Claw Device Mark. The Applicant’s mark is circular in shape with a smooth perimeter, whereas the Opponent’s mark is an asymmetrical three-pronged claw with jagged edges. While the word element “TORONTO RAPTORS” in the Applicant’s mark is featured in bold lettering in while, against a strongly contrasting dark background, no such (or any) wording is found in the Opponent’s mark. The Hearing Officer further found that an average consumer may either recognize from the Applicant’s mark as the name of a basketball team playing in the NBA league or, at the very least, to be the name of a sports team, in which the stylized graphic device element in the centre of the Applicant’s mark is likely to be understood. Based on this combination of elements in the Applicant’s mark, the Hearing Officer was persuaded that an average consumer is likely to understand that the circular shape within the mark alludes to a basketball with its contoured ribs merged with what appears to be a tapering three-pronged claw, thereby perceiving the image as a set of claws gripping a basketball, which such component is completely absent in the Opponent’s mark. The Hearing Officer further analyzed that there are numerous visual differences between the graphic details of the Opponent’s Claw Device Mark and the Applicant’s Claw Device. The Opponent’s three-pronged claws have a clear vertical orientation while the Applicant’s claw image is diagonal in a southwest-northeast direction. The Opponent’s mark consists of three elongated prongs with jagged edges running nearly parallel to each other, while the claw in Applicant’s graphic device element consist of three short and more thickset prongs converging along the contoured ribs of a spherical object. The Hearing Officer noted that the Opponent’s Claw Device Mark resembles the claw mark left behind on a surface scratched by a three-clawed beast, whereas the graphical device in the Applicant’s mark depicts the claw of a beast, presumably a velociraptor. Conclusively, the Hearing Officer was of the view that while the average consumer with imperfect recollection may not scrutinize all the individual details of the Applicant’s mark, there is enough obvious visual differences between the competing marks to distinguish them from each other. As such, the Hearing Officer found that the Applicant’s mark and the Opponent’s marks are visually dissimilar.
Aurally, the Hearing Officer found that there was no comparison to be made between the syntax and syllables of the textual elements of each mark. As the Opponent’s Claw Device Mark has no textual elements, there are no aural elements to be compared against the words found in the Applicant’s mark. As far as the Opponent’s marks are concerned, the absences of any commonality between its word component “MONSTER ENERGY”, and the word component of the Applicant’s mark “TORONTO RAPTORS” means that there is no aural similarity between these marks. As such, the Hearing Officer found that aural similarity has not been established in this case.
Conceptually, the Hearing Officer found that the competing marks are dissimilar. The Hearing Officer noted that assessing any conceptual similarity between the marks requires an analysis into the ideas that lie behind and inform the understanding of the mark as a while, bearing in mind that the idea connoted by each component of the mark might be very different from the sum of its parts. Viewed holistically, the Hearing Officer stated that Opponent’s Claw Device Mark and Composite Mark convey the general idea of an unidentified feral creature whose three-pronged claw has produced a jagged scar, marking its territory with a dreadful demonstration of its power. On the other hand, the depiction of the claw in the Applicant’s mark is likely to convey more specific, and closely inter-related, ideas to the average consumer, who is likely to understand the wording “TORONTO RAPTORS” to be the name of a sports team. The Hearing Officer noted that the average consumer looking at the Applicant’s mark is likely to think of a velociraptor’s claw gripping a basketball. The Hearing Officer observed in short that the primary concept underlying the Opponent’s marks is the idea of a mysterious and menacing creature, while the primary concept underlying the Applicant’s mark is the athletic prowess of a specific basketball team. As such, the Hearing Officer found that the competing marks are conceptually dissimilar.
Having found that the marks are visually and conceptually dissimilar, and that there was no evidence to indicate that the competing marks are aurally similar, the Hearing Officer concluded that the Applicant’s mark is not similar to the Opponent’s earlier registered marks. Given that the threshold requirement of mark-similarity has not been established, the Opponent therefore failed on the ground of opposition under Section 8(2)(b).
(b) In relation to the ground of Section 8(4)(b), the preliminary element to be satisfied is that “the whole or essential part of the trade mark must be identical or similar to an earlier mark”. If this element is not made out, the ground of opposition under any limb of Section 8(4)(b) will fail. The Hearing Officer found, for the same reasons under Section 8(2)(b), that whole or essential part of the Applicant’s mark is not identical with or similar to the Opponent’s mark under Section 8(4). Since the Opponent has not satisfied the essential element of marks-similarity, there is no need for the Hearing Officer to address the remaining elements. The Opponent therefore failed on the ground of opposition under Section 8(4)(b).
(c) To satisfy a claim for passing off under Section 8(7)(a), the Opponent must establish the “classical” trinity of goodwill, misrepresentation and damage. Even though the sale of the Opponent’s energy drinks in Singapore would easily satisfy the requirement of goodwill, the Hearing Officer opined that the Opponent would face an insurmountable obstacle as far as the misrepresentation element is concerned. An operative misrepresentation, within the context of this trade mark opposition hearing, hinges on the similarity between the Applicant’s mark and the Opponent’s earlier registered marks. Having already found that the competing marks are dissimilar, misrepresentation for the purposes of passing off cannot be established in the case. Equally, since misrepresentation cannot be established, the requirement of damage in a claim of passing off cannot be made out, whether or not the element of goodwill has been made out. The Opponent therefore failed on the ground of opposition under Section 8(7)(a).
Point of Interest:
As opined by the Hearing Officer, that while the vigilant trade mark proprietor may, instinctively, feel threatened by the subsequent efforts of third parties to register new marks that bear some resemblance to its earlier trade mark, the pursuit of trade mark opposition proceedings must be bridled by the specific legal requirements set out in the relevant statutory provisions of the Act. Prior to taking an offensive stance against these perceived threats, a trade mark proprietor may instead benefit from having a keener self-awareness of the limits created by this legal tether and rein in his impulses accordingly. The present case hence demonstrated how far exclusivity of a registered trade mark extends and what is the appropriate breadth of the legal monopoly and statutory protection that the registered proprietor of a device trade mark is entitled to, particularly against a subsequent trade mark applicant seeking to register another device mark which contains allegedly similar visual elements.
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This article is written by Renee Xavier from Alpha & Omega.
This article does not constitute legal advice or a legal opinion on any matter discussed and, accordingly, it should not be relied upon. It should not be regarded as a comprehensive statement of the law and practice in this area. If you require any advice or information, please speak to a practicing lawyer in your jurisdiction. No individual who is a member, partner, shareholder or consultant of, in or to any constituent part of Interstellar Group Pte. Ltd. accepts or assumes responsibility, or has any liability, to any person in respect of this article.