Monster Energy Company v Glamco Co, Ltd: Trade Mark Dispute over SWEET MONSTER
Monster Energy Company appealed against the decision of the Principal Assistant Registrar of Trade Marks, which allowed Glamco Co., Ltd's application to register the trade mark "SWEET MONSTER". The High Court of Singapore, presided over by Chan Seng Onn J, dismissed the appeal, finding that the SWEET MONSTER mark was dissimilar to Monster Energy Company's earlier Monster marks and that there was no likelihood of confusion. The court allowed Glamco Co., Ltd’s trade mark application to proceed to registration.
1. Case Overview
1.1 Court
High Court of the Republic of Singapore1.2 Outcome
Appeal dismissed
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Appeal by Monster Energy Company against the registration of the SWEET MONSTER trade mark by Glamco Co., Ltd. The court dismissed the appeal, allowing the SWEET MONSTER mark to proceed to registration.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Monster Energy Company | Appellant | Corporation | Appeal dismissed | Lost | Just Wang, Penelope Ng |
| Glamco Co., Ltd | Respondent | Corporation | Trade mark application allowed | Won | Tan Zhishu Gillian |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Chan Seng Onn | Judge | Yes |
4. Counsels
| Counsel Name | Organization |
|---|---|
| Just Wang | Bird & Bird ATMD LLP |
| Penelope Ng | Bird & Bird ATMD LLP |
| Tan Zhishu Gillian | Infinitus Law Corporation |
4. Facts
- Glamco Co., Ltd applied to register the trade mark SWEET MONSTER for goods in Class 30.
- Monster Energy Company opposed the registration based on its earlier MONSTER marks.
- The Principal Assistant Registrar of Trade Marks dismissed Monster Energy Company's opposition.
- Monster Energy Company appealed to the High Court.
- The High Court found that the SWEET MONSTER mark was dissimilar to Monster Energy Company's earlier MONSTER marks.
- The High Court dismissed the appeal and allowed the SWEET MONSTER mark to proceed to registration.
5. Formal Citations
- Monster Energy Company v Glamco Co, Ltd, Tribunal Appeal No 5 of 2018, [2018] SGHC 238
6. Timeline
| Date | Event |
|---|---|
| Judgment reserved | |
| Judgment issued |
7. Legal Issues
- Trade Mark Similarity
- Outcome: The court found that the SWEET MONSTER mark was dissimilar to the Appellant's earlier MONSTER marks.
- Category: Substantive
- Sub-Issues:
- Visual similarity
- Aural similarity
- Conceptual similarity
- Technical distinctiveness
- Likelihood of Confusion
- Outcome: The court found that there was no likelihood of confusion between the SWEET MONSTER mark and the Appellant's earlier MONSTER marks.
- Category: Substantive
- Sub-Issues:
- Consumer perception
- Reputation of earlier mark
- Similarity of goods
- Well-Known Trade Mark
- Outcome: The court found that the Appellant's earlier MONSTER marks were not well-known in Singapore or to the public at large.
- Category: Substantive
- Sub-Issues:
- Reputation in Singapore
- Recognition by the public
- Passing Off
- Outcome: The court found that there was no misrepresentation and therefore no passing off.
- Category: Substantive
- Sub-Issues:
- Goodwill
- Misrepresentation
- Damage
8. Remedies Sought
- Opposition to Trade Mark Registration
- Injunction
9. Cause of Actions
- Trade Mark Infringement
- Passing Off
10. Practice Areas
- Trade Mark Registration
- Trade Mark Opposition
11. Industries
- Food and Beverage
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Monster Energy Company v Glamco Co., Ltd | Intellectual Property Office of Singapore | Yes | [2018] SGIPO7S | Singapore | The decision of the Principal Assistant Registrar of Trade Marks (PAR) that was appealed in the current judgment. |
| Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appeal | Court of Appeal | Yes | [2014] 1 SLR 911 | Singapore | Re-affirmed the 'step-by-step approach' for assessing trade mark disputes, which involves systematically assessing the similarity of marks, similarity of goods or services, and likelihood of confusion. |
| Ceramiche Caesar SpA v Caesarstone Sdot-Yam Ltd | Court of Appeal | Yes | [2017] 2 SLR 308 | Singapore | Discussed the visual similarity of marks with a common element, but distinguished in the present case. |
| Itochu Corporation v Worldwide Brands, Inc. | Intellectual Property Office of Singapore | Yes | [2007] SGIPOS 9 | Singapore | Relied upon for the principle that adding an adjective can change the conceptual similarity of a mark. |
| Ozone Community Corp v Advance Magazine Publishers Inc | High Court | Yes | [2010] 2 SLR 459 | Singapore | Relied upon for assessing the visual similarity of two competing marks. |
| The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd | High Court | Yes | [2005] 4 SLR(R) 816 | Singapore | Cited for the principle that in cases with a common denominator, it is important to look at the differences between the mark and the sign. |
| McDonald’s Corp v Future Enterprises Pte Ltd | Court of Appeal | Yes | [2005] 1 SLR(R) 177 | Singapore | Cited for the principle that one must look at the mark as a whole. |
| Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another and another appeal | Court of Appeal | Yes | [2013] 2 SLR 941 | Singapore | Cited for the principle that visual similarity of two contesting marks must normally be assessed by reference to the overall impressions created by the marks or signs, bearing in mind their distinctive and dominant components. |
| Han’s (F & B) Pte Ltd v Gusttimo World Pte Ltd | High Court | Yes | [2015] 2 SLR 825 | Singapore | Cited for the principle that a mark may still have high technical distinctiveness if the meaning of that word has little bearing on the product to which it is to be applied. |
| Johnson & Johnson v Uni-Charm Kabushiki Kaisha (Uni-Charm Corp) | High Court | Yes | [2007] 1 SLR(R) 1082 | Singapore | Set out a list of factors relevant for the assessment of the similarity of goods and services. |
| British Sugar Plc v James Robertson & Sons Ltd | Unknown | Yes | [1996] RPC 281 | United Kingdom | Factors relevant for the assessment of the similarity of goods and services. |
| Monster Energy Company v Chun-Hua Lo | Intellectual Property Office of Singapore | Yes | [2017] SGIPOS 15 | Singapore | The Opponents’ argument above that the goods in Classes 5, 30 and 32 all “serve the common purpose of quenching thirst” is too broad a categorisation. |
| Lacoste v Carolina Herrara, Ltd | Intellectual Property Office of Singapore | Yes | [2014] SGIPOS 3 | Singapore | Registration of a number of marks each bearing the same element in common, does not automatically give rise to the presumption that the consumer would perceive them as being a family or series of marks. |
| Sarika Connoisseur Cafe Pte Ltd v Ferrero SpA | Court of Appeal | Yes | [2013] 1 SLR 531 | Singapore | Held that the phrase “whole or an essential part of the trade mark” does not alter the inquiry for the similarity of marks. |
| City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier | Court of Appeal | Yes | [2010] 1 SLR 382 | Singapore | The test ‘well known to the public at large in Singapore’ must mean more than just ‘well known in Singapore’. |
| Novelty Pte Ltd v Amanresorts Ltd and another | Court of Appeal | Yes | [2009] 3 SLR(R) 216 | Singapore | A … much more extensive level of protection is granted to trade marks which have attained the coveted status of being “well known to the public at large in Singapore”. |
| The Audience Motivation Company Asia Pte Ltd v AMC Live Group China (S) Pte Ltd | Court of Appeal | Yes | [2016] 3 SLR 517 | Singapore | In relation to this ground of opposition, there are three elements to be established which correspond to the elements for the tort of passing off |
| Rovio Entertainment Ltd v Kimanis Food Industries Sdn Bhd | High Court | Yes | [2015] 5 SLR 618 | Singapore | Section 8(7)(a) of the TMA requires an opponent to adduce sufficient evidence to establish, at the very least, a prima facie case on the aforestated three elements |
| Singsung Pte Ltd v LG 26 Electronics Pte Ltd (trading as L S Electrical Trading) | High Court | Yes | [2016] 4 SLR 86 | Singapore | Goodwill, in the context of passing off, is concerned with goodwill in the business as a whole, and not specifically in its constituent elements, such as the mark, logo or get-up that it uses |
13. Applicable Rules
| Rule Name |
|---|
| Order 55 of the Rules of Court (Cap 322, R 5, 2014 Rev Ed) |
| Order 87 of the Rules of Court (Cap 322, R 5, 2014 Rev Ed) |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| Section 8(2)(b) of the Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| Section 8(4)(b)(i) of the Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| Section 8(4)(b)(ii) of the Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| Section 8(7)(a) of the Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Trade mark
- Trade mark registration
- Trade mark opposition
- Similarity of marks
- Likelihood of confusion
- Well-known mark
- Passing off
- Technical distinctiveness
- Visual similarity
- Aural similarity
- Conceptual similarity
15.2 Keywords
- Trade mark
- Sweet Monster
- Monster Energy
- Trade mark dispute
- Intellectual property
- Singapore
- High Court
- Trade mark registration
- Trade mark opposition
16. Subjects
- Trade Marks
- Intellectual Property
17. Areas of Law
- Trade Mark Law
- Intellectual Property Law