A recent opposition by Monster Energy Company (the opponent) against a trademark application filed by Health and Happiness (H&H) Hong Kong Limited (the applicant) is one of the very rare instances whereby the opponent relied on its earlier trademarks for goods to oppose an application for services.
The applicant applied to register NOISY BEAST in an animal head with horns device in Class 35 for, inter alia, sales promotion, marketing, and advertising services (Trademark application no. 40201810156W (Application Mark). Monster Energy Company opposed the application by relying on its earlier registered marks UNLEASH THE BEAST! (trademark registration nos. T0601902F, T1202150I, and T1402590J) and REHAB THE BEAST! (trademark registration nos. T1108653D and 40201606883W) in Classes 5 and 32 for, inter alia, nutritional supplements and beverages, arguing that the marks were so identical or similar that there exists a likelihood of confusion on the part of the public.
Owing to the obvious (dis)similarity of the goods, the Principal Assistant Registrar (PAR) made his initial findings on this ground before considering the similarity of the marks (step 1) and the likelihood of confusion (step 3), notwithstanding the sequential approach laid down in the Staywell test. He rejected the opponent’s argument that the services under the Application Mark were complementary to the goods covered by the opponent’s earlier marks. The opponent had argued that they share a close connection such that one is indispensable or important for the use of the other, and, as a consequence, that there is an inseparable and close relationship rendering them sufficiently similar. Instead, the PAR opined that the goods covered by the opponent’s earlier marks cannot by any stretch of the imagination be regarded as similar to the services applied for under the Application Mark.
As similarity of the goods was not found, the opposition must fail. Nevertheless, for completeness, the PAR made his observations on similarity of the marks and likelihood of confusion as follows:
- The term “BEAST” is the only point of similarity between the conflicting marks, but considering the differences visually, aurally, and conceptually, including the animal head with horns device; the number of syllables, length, rhythm, and intonation of the marks; and the description of one beast being “NOISY” against the other having instructive commands of “UNLEASH” or “REBAH” (presumably to rehabilitate), the conflicting marks were more dissimilar than similar; and
- Since no similarity in goods or marks was found, likelihood of confusion was not considered.
As the opposition was completely unsustainable from inception, the opposition was dismissed with an award of legal costs issued in favor of the applicant.
This article was first published by the International Trademark Association on inta.org.