17 August 2018Trademarks

Monster Energy left weary as UKIPO dismisses two oppositions

The UK Intellectual Property Office (IPO) this week dismissed two separate trademark oppositions brought by energy drinks brand Monster Energy.

George Salthouse of the IPO delivered his decision in Monster’s opposition to a series of two figurative marks on Tuesday, August 14. Allan James presented his ruling on Monster’s opposition to a figurative mark in another opposition the following day.

In the first matter, Monster had opposed the series of two marks applied for by the owners of a London-based eatery, Monsta Pizza.

The marks, one red and one black, are both square-shaped with the words ‘Monsta Pizza’ in stylised writing. The applicants sought to register them in class 30 and 43, for pizza and pizza parlours.

In its opposition, Monster relied on its earlier registered marks, including the word mark ‘Monster’ (EU trademark number 9,492,158), registered in class 32 for non-alcoholic beverages.

Monster also relied on its square-shaped black and green figurative mark, which features the words ‘Monster Energy’ (11,154,739).

The energy drinks brand claimed that the applied-for mark covers similar goods to its earlier-registered marks and that the ‘Monsta Pizza’ series marks would take unfair advantage of Monster’s reputation.

At the IPO, Salthouse noted that it is “obvious to anyone who has walked down a high street” in the UK that the word ‘Monster’ is used to describe large portions of food.

He said the goods covered by the applied-for mark “are not in any way similar to the goods of the opponent”. The marks are also “very different in appearance and, on first impression, are quite distinct”, he added.

Salthouse dismissed Monster’s opposition and ordered the company to pay Monsta Pizza’s owners £2,100 ($2,670) towards their costs.

Michael Downing, partner at Downing IP, which represented Monsta Pizza in the opposition, said the parlour is very pleased with the decision.

Downing noted that large brands have a tendency to adopt a word that already has a meaning, develop a reputation based on that word, and forget that the word still has a meaning outside of the brand.

In the other matter, which was a separate opposition, Monster opposed the registration of a square-shaped figurative mark.

Malaysia-based Vem Distribution had applied to register the black and grey trademark featuring the words ‘Monsta Vape’, covering electronic cigarettes and flavourings in class 34.

Again, Monster sought to rely on its earlier registered word and figurative marks. The energy drinks brand said Vem’s applied-for mark is similar to its own marks and covers similar goods.

James said the goods covered by the applied-for mark and Monster’s marks are “different in nature and method of use”.

He added that the applied-for mark is visually dissimilar to Monster’s marks and that no significant section of UK consumers is likely to link the contested mark with Monster’s earlier marks.

James rejected Monster’s opposition and ordered the company to pay Vem £1,300 ($1,653) towards its costs.

Earlier this year, Monster failed to prevent the registration of ‘Monster Castle’ in Singapore. The mark covers a game where monsters protect castles from humans.

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More on this story

31 August 2018   WIPR has recently reported on numerous trademark oppositions filed by drinks maker Monster Energy, but this week, the UK Intellectual Property Office handed down a decision on Monster’s attempt to register a trademark.
14 December 2018   Drinks maker Monster Energy has lost an appeal in an EU court in a trademark dispute.
5 February 2019   Monster Energy has lost an appeal against a trademark series applied for by Monsta Pizza, a pop-up eatery.