19 November 2020Trademarks

Shaketastic and Monster Energy clash over ‘Cookie Monster’ TM

The UK Intellectual Property Office (IPO) has held that Shaketastic cannot register ‘Cookie Monster’ as a trademark to be used in relation to milk-based drinks, following opposition proceedings initiated by Monster Energy.

The IPO announced its decision on Monday, November 16.

In 2018, UK-headquartered beverage company Shaketastic sought to register the word mark ‘Cookie Monster’ in classes 29, 30, 32, and 43, covering a range of food and drinks as well as café, bar, and restaurant services.

According to the company’s website, the Cookie Monster, which contains Oreos, chocolate chip cookies, and mini marshmallows, is Shaketastic’s most popular milkshake.

American beverage company Monster filed a notice of opposition in 2019, relying on its earlier-registered trademarks ‘Monster’, ‘Monster Energy’, ‘Espresso Monster’, ‘Juice Monster’, ‘Caffe Monster’, and ‘Coffee Monster’.

The first four of the trademarks relied upon are UK trademarks while the final two are EU trademarks, and the relied-upon marks are each registered in at least one of class 29, 30, and 32, covering energy drinks, beverages, and other foods.

Monster claimed that the applied-for mark is very similar to its existing marks and the goods and services which the applied-for mark seeks to cover are similar to those covered by its own marks.

Monster also relied on its considerable reputation in relation to two of its UK trademarks, and said that use of the ‘Cookie Monster’ mark will dilute and tarnish Monster’s reputation.

The IPO agreed that there is “a degree of complementarity” to the goods and services covered by Monster’s trademarks and those which the applied-for mark seeks to cover.

Having considered the initial word, ‘Cookie’, in the applied-for mark, the IPO said the marks also have a low to medium degree of both aural and visual similarity.

Conceptually, when looking at the ‘Cookie Monster’ trademark, “the average consumer in the UK will immediately envisage a large monster who eats cookies”, the IPO said. In contrast, Monster’s trademarks evoke “a large, ugly, and frightening imaginary creature” in the minds of consumers.

The IPO agreed with Monster that its ‘Monster’ and ‘Monster Energy’ trademarks benefit from an enhanced distinctiveness through use for energy drinks, but found that the other four marks do not qualify for enhanced distinctiveness.

Finally, when considering the likelihood of confusion, the IPO compared the vast range of food and drinks that Shaketastic wanted the ‘Cookie Monster’ mark to cover to those covered by Monster’s existing trademarks.

After this analysis, the IPO held that Monster’s opposition succeeded in relation to a range of beverages in classes 29 and 30. The IPO upheld Monster’s opposition to all of the drinks and foodstuffs in class 32.

Notably, the opposition was successful in relation to milkshakes: “beverages consisting principally of milk” and “beverages having a milk base”, both in class 29.

However, the opposition failed in relation to a smaller range of foodstuffs in class 29, dairy products and snack foods in class 30, and bar and café services (including milkshake bar services) in class 43.

Finding that Monster had been “mostly successful”, the IPO ordered Shaketastic to pay £800 ($1,063) towards the Monster’s legal fees.

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