For the fourth time in less than 12 months, Monster Energy Company (‘MEC’) initiated trademark opposition proceedings at the Intellectual Property Office of Singapore (IPOS) with the aim at preventing another party’s registration of a mark containing the word “MONSTER”.

In this case, MEC, the proprietor of the mark “MONSTER ENERGY”, challenged its most high-profile opponent to date, Tencent Holdings Limited (‘Tencent’) – the multi-billion dollar company most renowned for QQ and WeChat – against the latter’s application to register the mark “MONSTER CASTLE” in classes 9, 41 and 42.

The previous three hearings – Monster Energy Company v Mixi, Inc. [2017] SGIPOS 12, Monster Energy Company v Chun-Hua Lo [2017] SGIPOS 17 and Monster Energy Company v Glamco Co., Ltd. [2018] SGIPOS 7 – all concluded unsuccessfully for MEC at IPOS (with the second decision having been upheld upon appeal to the High Court, and the latter pending appeal at the High Court).

This case proved no different. In fact, the case bore significant similarities with that fought against ‘Mixi’ in the first of the four opposition hearings.

In ‘Mixi’, Hearing Officer Gabriel Ong ruled that the applicant’s mark “MONSTER STRIKE” was more dissimilar than similar to MEC’s mark “MONSTER ENERGY” and therefore the application was not refused registration under Section 8(2) (b) of the Trade Marks Act. In the present case, MEC opposed Tencent’s mark “MONSTER CASTLE” on the same grounds, submitting that the words “ENERGY” and “CASTLE” were merely descriptive and so the marks should be regarded as similar for sharing the same dominant component “MONSTER” – substantially the same argument put forward in ‘Mixi’.

Perhaps unsurprisingly, Hearing Officer Ong, also presiding over this case, saw no reason to deviate from his decision taken in ‘Mixi’. Moreover, in issuing his decision, he found “MONSTER CASTLE” to be even less similar to MEC’s mark than “MONSTER STRIKE”. As in ‘Mixi’, and indeed all of MEC’s opposition proceedings mentioned, the Hearing Officer applied the established test for similarity of marks in Singapore set out in Staywell Hospitality Group Pty Limited v Starwood Hotels & Resorts Worldwide, Inc. [2014] 1 SLR 911 (‘Staywell’). This is a mark-for-mark comparison, without consideration of any external matter, for three aspects of similarity – visual, aural and conceptual.

In assessing visual similarity between the two marks, the Hearing Officer refuted the same arguments which MEC had unsuccessfully put forward in ‘Mixi’ – that “MONSTER” was the dominant component of both marks, and that the second words of the marks, being descriptive, should not be points of visual distinction. These, along with the fact that the applied-for “MONSTER CASTLE” mark was presented as a 3D design, in contrast with “MONSTER ENERGY” having been registered as a plain-word mark, guided the Hearing Officer to find that the marks were visually dissimilar.

Aurally, the marks were also found to be different. As the Hearing Officer had already found “MONSTER” not to be a dominant component, the only test for aural similarity, per Staywell, was the Syllables Approach. The marks clearly differing in sound by number of syllables, aural similarity could not be established.

Furthermore, the marks could not be found to be similar conceptually either. Regardless of whether words are shared between marks, the concept of a mark is taken to cover the sum of its parts (Staywell). “MONSTER CASTLE” was taken to connote a physical structure inhabited by monsters, whilst “MONSTER ENERGY” was found to represent an abstract notion of powerful energy.

The finding of dissimilarity ensured that the opposition failed. However, the Hearing Officer went on to give his observations on the availability of partial trade mark oppositions in Singapore (i.e. whether the Registrar  can, in trade mark opposition proceedings, refuse the registration of certain goods or services in a certain class but allow it to be registered for other goods or services in the same class).

In the Hearing Officer’s view, the language of Sections 8 (2) (b) and 8 (4) of the Trade Marks Act cannot be interpreted as allowing for partial oppositions in Singapore. The case of Nike v Campomar [2001] SGIPOS 4 has sometimes been interpreted as allowing for partial oppositions – however, this was decided under the old Trade Marks Act of 1999, which conferred upon the Registrar the power to accept or refuse an application ‘subject to such conditions, amendments, modification or limitations, as he may think right to impose’. The current Trade Marks Act grants no equivalent wide-ranging power. Further, it would not be unfair to refuse an application on the basis of a single point of overlap / similiarity of goods / services because the incumbent mark is registered on a public register and the applicant of the later mark cannot claim that it did not have notice of the earlier mark.

By Denise Mirandah and Yan Chongshuo