Monster Energy Company v Glamco Co, Ltd

• Jurisdiction: Singapore
• Judge: Chan Seng Onn J
• Judgment Date: 05 November 2018
• Neutral Citation: [2018] SGHC 238
• Plaintiff Counsel: Just Wang and Penelope Ng (Bird & Bird ATMD LLP)
• Date: 05 November 2018
• Docket Number: Tribunal Appeal No 5 of 2018
• Hearing Date: 24 August 2018
• Subject Matter: Trade Marks and Trade Names,Conflicts with earlier marks,Registration criteria
• Published date: 09 February 2021
• Defendant Counsel: Tan Zhishu Gillian (Infinitus Law Corporation)
• Court: High Court (Singapore)
• Citation: [2018] SGHC 238
• Year: 2018

Chan Seng Onn J: Introduction

This is an appeal by Monster Energy Company (the “Appellant”), a company incorporated and existing under the laws of Delaware, United States of America,¹ against the decision of the Principal Assistant Registrar of Trade Marks (the “PAR”) in Monster Energy Company v Glamco Co., Ltd [2018] SGIPO7S 7 (the “GD”).² Glamco Co., Ltd (the “Respondent”) had applied to register the trade mark, SWEET MONSTER (the “Application Mark”), which is a plain word mark, in Class 30 of the International Classification of Goods and Services (“ICGS”) in respect of the following goods (“Application Goods”):³

Popcorn; food products containing (principally) cereals; confectionary; gum sweets; biscuits; bread; sweetmeats (candy); iced cakes; ice cream; non-medicated confectionary in jelly form; chocolate; cookies; rice cakes; chemical seasonings (cooking); sauces; tea; coffee; cocoa products; non-medicated tea based beverages; chocolate based products.

This application was opposed by the Appellant, which is the registered proprietor of the following prior marks in Singapore (collectively, the “Appellant’s Earlier Marks”).⁴ For ease of reference, I have grouped the Appellant’s Earlier Marks in the same broad categories as the PAR.

S/N	Mark and Registration No	ICGS class and specification of goods
Appellant’s Earlier Monster Marks
1	MONSTER T0605638Z	Class 5: Nutritional supplements; vitamin drinks; drinks containing vitamins and minerals.
2	MONSTER T0605639H	Class 32: Beverages; fruit juices [beverages]; aerated fruit juices; soda water; vitamin enriched non-alcoholic beverages [vitamins not predominating]; isotonic beverages and drinks; energy drinks.
3	MONSTER T1111969F	Class 5: Nutritional supplements in liquid form in Class 5. Class 32: Non-alcoholic beverages in Class 32.
Appellant’s Earlier Monster Prefix Marks
4	MONSTER REHABITUATE T1210719E	Class 5: Nutritional supplements in liquid form. Class 30: Ready to drink tea, iced tea and tea based beverages; ready to drink flavoured tea, iced tea and tea based beverages; all included in Class 30. Class 32: Non-alcoholic beverages, namely energy drinks, energy drinks flavoured with tea, energy drinks flavoured with juice, sports drinks, and fruit juice drinks; all of the foregoing enhanced with vitamins, minerals, nutrients, amino acids and/or herbs; all included in Class 32.
5	MONSTER REHAB T1107597D	Class 5: Nutritional supplements in liquid form; vitamin drinks; beverages containing added vitamins and minerals (for medical purposes); all included in Class 5. Class 30: Ready to drink tea, iced tea and tea based beverages; ready to drink flavoured tea, iced tea and tea based beverages; all included in Class 30. Class 32: Non-alcoholic beverages, namely energy drinks, energy drinks flavoured with tea, energy drinks flavoured with juice, sports drinks, and fruit juice drinks; all of the aforegoing enhanced with vitamins, minerals, nutrients, amino acids and/or herbs; all included in Class 32.
6	MONSTER DETOX T1206503D	Class 5: Nutritional supplements in liquid form in Class 5. Class 30: Ready to drink tea, iced tea and tea based beverages; ready to drink flavoured tea, iced tea and tea based beverages; all included in Class 30. Class 32: Non-alcoholic beverages, including energy drinks, energy drinks flavoured with tea, energy drinks flavoured with juice, sports drinks, and fruit flavoured non-alcoholic drinks; all of the foregoing enhanced with vitamins, minerals, nutrients, amino acids and/or herbs (other than for medicinal use); all included in Class 32.
Appellant’s Earlier Monster and Claw Device Marks
7	T0609605E	Class 32: Beverages; preparations for making beverages.
8	T0813672J	Class 9: Protective clothing; protective footwear; protective headwear; protective eyewear; all included in Class 9. Class 16: Printed matter and publications; posters; stickers; transfers; cards; stationary; signboards; all included in Class 16. Class 18: Bags; backpacks; wallets; cases; key cases; leather and imitations of leather, and goods made of these materials and not included in other classes; all included in Class 18. Class 25: Clothing; footwear and headgear; all included in Class 25.
9	T1402721J	Class 16: Printed matter and publications; posters; stickers; sticker kits comprising stickers and decals; decals; transfers; cards; stationery; signboards of paper or cardboard. Class 25: Clothing, namely t-shirts, hooded shirts and hooded sweatshirts, sweat shirts, jackets, pants, bandanas, sweat bands and gloves; headgear, namely hats and beanies.
Appellant’s Earlier Monster Energy Marks
10	MONSTER ENERGY T0603081Z	Class 32: Mineral and aerated waters and other non-alcoholic drinks; energy drinks; isotonic beverages (non-medicated); fruit drinks; fruit juices and syrups for preparing beverages.
11	MONSTER ENERGY T0813668B	Class 9: Protective clothing; protective footwear; protective headwear; protective eyewear; all included in Class 9. Class 16: Printed matter and publications; posters; stickers; transfers; cards; stationery; signboards; all included in Class 16. Class 18: Bags; backpacks; wallets; cases; key cases; leather and imitations of leather, and goods made of these materials and not included in other classes; all included in Class 18. Class 25: Clothing; footwear and headgear; all included in Class 25.
12	MONSTER ENERGY 40201501193T	Class 35: Promoting goods and services of others in the sports, motorsports, electronic sports, and music industries through the distribution of printed, audio and visual promotional materials; promoting sports and music events and competitions for others; retail and wholesale foods and beverage distributorship services; Online retail store services in the field of beverages, clothing, headwear, calendars, posters, stickers, promotional items. Class 41: Entertainment services; organizing, conducting and staging sports events, live musical performances, exhibitions and competitions; on-line publication and provision of multimedia content in the nature of multimedia files containing audio, video, text, still images, and graphics in the fields of sports, people, entertainment, and music; providing a website featuring non-downloadable publications in the nature of multimedia content in the nature of multimedia files containing audio, video, text, still images, and graphics in the fields of sports, people, entertainment and music via a website.
13	MONSTER ENERGY 40201401724W	Class 9: Protective clothing; protective footwear; protective headwear; protective eyewear, sports helmets; protective covers and cases for electronic devices; earphones and headphones; eye glasses; eye glass cases; sunglasses; sunglass cases; video recordings featuring sports, extreme sports, and motor sports; cell phone cords; eyeglass cords; lanyard for holding ID tag; lanyards for holding credential certificate; lanyards for holding encoded key cards; lanyards for holding keys; lanyards for holding sound recording carriers; lanyards for holding portable media players. Class 16: Printed matter and publications; posters; stickers; decals; transfers; cards; stationery; signboard of paper and cardboard; sticker kits comprising stickers and decals. Class 18: Bags; backpacks; wallets; cases; key cases; duffle bags; book bags; handbags; all-purpose sports bags; all-purpose bags; leather and imitations of leather, and goods made of these material and not included in other classes. Class 25: Clothing, footwear, and headgear.
Appellant’s Earlier Monster Suffix Marks
14	JAVA MONSTER T0611182H	Class 32: Beverages, namely, soft drinks; carbonated soft drinks; carbonated and non-carbonated energy drinks; carbonated and non-carbonated sports drinks; carbonated and non-carbonated fruit juice drinks; soft drinks, carbonated soft drinks, carbonated and non-carbonated energy drinks, carbonated and non-carbonated sports drinks and carbonated and non-carbonated fruit juice drinks, all enhanced with vitamins, minerals, nutrients, amino acids, and/or herbs; flavoured waters, fruit juices; concentrates, syrups or powders used in the preparation of soft drinks or energy drinks.
15	JAVA MONSTER T1402722I	Class 32: Non-alcoholic beverages.
16	X-PRESSO MONSTER T1009880F	Class 5: Nutritional supplements in Class 5. Class 32: Non-alcoholic beverages being energy drinks in Class 32 flavoured with coffee.

I note that the Appellant relies predominantly on the Appellant’s Earlier Monster Marks for its opposition application, both at the hearing before the PAR and the hearing before me. This is on the basis that out of all the Appellant’s Earlier Marks, these are the marks most similar to the Application Mark.⁵ I agree with the PAR that if the Appellant’s Earlier Monster Marks are found to be dissimilar to the Application Mark, the same would follow for the rest of the Appellant’s Earlier Marks (GD at [20(ii)]). This therefore focuses the inquiry to a comparison between the Application Mark and the Appellant’s Earlier Monster Marks.

Before the PAR, the Appellant based its opposition on the following grounds: Section 8(2)(b) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”); Section 8(4)(b)(i) of the TMA; Section 8(4)(b)(ii)(A) and (B) of the TMA; and Section 8(7)(a) of the TMA. The Appellant’s opposition failed on all grounds.

In dismissing the Appellant’s opposition application under s 8(2)(b) and s 8(4)(b)(i), the PAR found that the Application Mark and the Appellant’s Earlier Monster Marks were more dissimilar than similar (GD at [90] and...