A different Monster
29 February 2024
Photo: Facebook@Gentle Monster,Monster Energy
This decision arose from Monster Energy Company’s opposition against the registration of the Application Mark “GENTLE MONSTER” (a word mark) by IICOMBINED Co., Ltd, in Class 9 for “smartglasses”, on the following grounds:
- That the Application Mark is confusingly similar to its “MONSTER ENERGY” marks, one of which was registered in 2014 in Class 9;
- That by using a confusingly similar trademark, IICOMBINED is passing off its goods and services as Monster Energy’s.
IICOMBINED owns luxury eyewear brand “GENTLE MONSTER”, whose first Singapore trademark registration for the word mark “GENTLE MONSTER” was registered in 2013, in Class 9 for “spectacles, sunglasses”.
The present application filed in 2018, concerns electronics-equipped “smartglasses” that were first sold internationally in August 2019, and subsequently in Singapore in November 2019.
For purposes of this opposition, the Registrar took the opponent’s strongest case and compared the opponent’s word mark “MONSTER ENERGY” to the Application Mark “GENTLE MONSTER”.
As regards visual similarity, the Registrar rejected Monster Energy’s argument that “GENTLE” was descriptive of IICOMBINED’s smartglasses, instead holding that “GENTLE”, “MONSTER” and “ENERGY” are all ordinary English words that do not describe smartglasses. The Application Mark and the Opponent’s Mark should be considered as their respective wholes. As such, contrary to Monster Energy’s arguments that “MONSTER” rather than “GENTLE” was the dominant element of the Application Mark, there was no dominant element in either mark.
As regards aural similarity, the Registrar held that the marks were aurally different, with only two common syllables out of four in the Application Mark and five in the Opponent’s Mark, and the common syllables “MON-STER” appeared at the start of the Opponent’s Mark and the end of the Application Mark.
As regards conceptual similarity, the Registrar held the marks to be completely different. Despite the same word “MONSTER” appearing in both marks, the words “GENTLE” in the Application Mark and “ENERGY” in the Opponent’s Mark completely change the character of the monster that the marks refer to – the former mild and temperate; the latter imbued with great power and energy.
As the marks were overall different, Monster Energy could not establish passing off because there was no misrepresentation. The Registrar also observed that Monster Energy did not sell significant amounts of eyewear in Singapore vis-à-vis IICOMBINED.
The Registrar therefore dismissed the opposition on both grounds, and the Application Mark proceeded to registration.
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