Monster Energy faces K-pop defeat in Singapore
Not the ‘first rodeo’ put in motion by energy drink company, says IPOS | Court’s analysis looked at the meanings of the words, overall appearances, and pronunciation.
Monster Energy has faced off against a South Korean pop (K-pop) entertainment company before the Singapore IP Office (IPOS) in a trademark dispute—and lost.
Referring to Monster’s long and complex history of trademark oppositions worldwide, the adjudicator, Ravindran Muthucumarasamy, opened his decision by remarking: “This is not the opponent’s first rodeo”.
The case arose when Monster Energy opposed the applied registration of two trademarks filed by Seoul-based YG Entertainment.
K-pop, an abbreviation for Korean popular music, is a genre that originated in South Korea, gaining momentum in the 1990s.
The K-pop giant sought protection for two marks, ‘Babymonster’ and ‘Babymonsters’, in classes 9, 25, 28, and 41, covering a variety of goods and services, including CDs, clothing, toys, and entertainment services.
BabyMonster are a female K-pop group that debuted in 2023 and are managed by YG Entertainment.
Muthucumarasamy, found against the energy drinks company and granted protection to YG Entertainment’s trademarks on December 29 2023.
IPOS issued the order today, January 8.
Trademark dissimilarity analysis
The case primarily concerned the likelihood of confusion with an earlier trademark.
YG Entertainment referred to the case Staywell Hospitality Group Pty v Starwood Hotels & Resorts Worldwide, using a step-by-step approach to assess mark similarity. It successfully argued that ‘Babymonster’ and ‘Monster Energy’ were dissimilar in conceptual, visual, and aural aspects.
IPOS’ analysis looked at the meanings of the words, overall appearances, and pronunciation.
Notably, Monster Energy didn’t claim that its registered ‘Monster Energy’ marks presents a ‘significant level of inherent technical distinctiveness’—leading the conclusion that the registered marks (with their lack of significant inherent distinctiveness) shouldn’t face a high standard for differentiation from YG Entertainment’s marks.
On visual and aural grounds, YG Entertainment claimed dissimilarity due to differences in letter arrangement and dominant letters.
The IP office agreed, concluding that the marks were more dissimilar than similar, and the elements required for a successful opposition were not met.
Examining goodwill, misrepresentation, and damage
Monster Energy also relied on opposing the registration of YG Entertainment's trademarks based on the grounds of goodwill, misrepresentation, and damage.
The energy drinks company claimed goodwill in Singapore since October 2012, which neither the adjudicator nor YG Entertainment disputed.
However, in terms of misrepresentation, “the parties part [ed] company on this issue,” with Monster Energy emphasising the distinctive nature of its mark.
This included the stylised "Monster" mark and a composite mark featuring a claw device.
The decision dissected the opponent's branding and highlighted the dominance of the claw device in the composite mark.
Further, the stylised version of the ‘Monster Energy’ mark was found to be an integral part of the composite mark, playing a significant role in public recollection of the mark for energy drinks.
Monster has an extensive marketing strategy, including athlete endorsements, sponsoring athletic competitions, and other events.
However, despite the renown of the opponent's drinks, the court decided that there was no overlap or that there was minimal overlap with the goods and services claimed by YG Entertainment.
The differences between the composite mark and the ‘Babymonster’ marks, particularly on apparel and merchandise, were ruled sufficient to prevent confusion among the Singaporean public.
Based on the adjudicator's findings for misrepresentation, it was deemed unnecessary to deal with the damage element.
The oppositions were ruled unsuccessful on all grounds. YG Entertainment's trademarks were granted protection, and costs were awarded to them.
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