9 November, 2018
Assessing mark-similarity: The relevance of extraneous factors – Monster Energy Company v NBA Properties, Inc [2018] SGIPOS 16
Facts
Monster Energy Company (the "Opponent") sought to oppose the trade mark 
(the "Application Mark") in Classes 9, 16, 25, 28 and 41 on the basis of its earlier marks "
" ("Claw Device Mark") and "
" ("Composite Mark") (collectively, the "Opponent's Marks"), relying on Sections 8(2)(b) (confusingly similar marks and/or goods), 8(4)(b)(i) and 8(4)(b)(ii) (well-known in Singapore and/or to the public at large in Singapore) and 8(7)(a) (passing off) of the TMA.
Aside from this opposition, the Opponent previously initiated multiple unsuccessful actions against other parties, opposing their attempts to register trade marks that the Opponent deemed to be encroaching on its registered word marks, i.e. "MONSTER" and "MONSTER ENERGY".
Decision
As the IP Adjudicator was of the opinion that the Application Mark was dissimilar to the Opponent's Marks, it was held that the opposition failed on all grounds.
In relation to Section 8(2)(b) of the TMA, the IP Adjudicator clarified that when determining the dominant component of a composite mark, it is important to consider:
(i) the technical distinctiveness of the component;
(ii) the "size" of the component; and
(iii) the position of the component within the composite mark, which is consistent with the High Court's approach in The Polo/Lauren Company LP v United States Polo Association [2016] SGHC 32. Accordingly, due to the inherent technical distinctiveness and the large size of the Opponent's Claw Device Mark (80% of the space), the IP Adjudicator held that the Claw Device Mark should be regarded as the dominant component of the Opponent's Composite Mark. Further, the IP Adjudicator did not consider the claw device in the Application Mark to be the dominant component, and the Opponent's Claw Device Mark and the Application Mark as a whole must be compared to properly conduct the mark-similarity analysis.
More importantly, in relation to Section 8(2)(b) of the TMA, the IP Adjudicator clarified that when assessing mark-similarity, the average consumer's knowledge and how they are "likely to understand or interpret the word device element of a composite mark" must be considered. Accordingly, the average consumer in Singapore would be aware that there is a common naming convention which involves pairing a sporting team's informal name with its city of origin. As such, the average consumer would infer that the word component "TORONTO RAPTORS" of the Application Mark refers to the name of a sports team, which influences how the Application Mark is perceived.
In particular, this was exemplified in the IP Adjudicator's analysis on conceptual similarity of the marks, in distinguishing the Application Mark from the Opponent's Marks, on the basis that while the Application Mark primarily conveyed a sports team's athletic abilities, the Opponent's Marks primarily conveyed the idea of a mysterious and menacing creature.
In view of the high conceptual dissimilarity of the Application Mark and the Opponent's Marks, the IP Adjudicator held that the marks overall were dissimilar and therefore, the opposition failed on all grounds.
Comment
This case is significant as it clarifies the previous uncertainty in relation to determining the dominance of a component in a composite mark and provides guidance when undertaking the mark-similarity analysis. This is particularly useful for businesses in understanding that conceptual differences in marks may be of the utmost importance in determining and maintaining their brand, and distinguishing their marks from third party marks.
For further information, please contact:
Andy Leck, Principal, Baker & McKenzie.Wong & Leow
andy.leck@bakermckenzie.com
