21 Sep 2018

Monster Energy Company has filed a series of oppositions against various Singapore trade mark applications featuring the word “MONSTER”. However, the present opposition against NBA Properties Inc’s application does not relate to the contentious M-word. Instead, it is premised on objections to an allegedly similar graphical device mark.

This article focusses on the hearing officer’s determination of the dominant component of a device mark and whether contextual evidence of an average consumer’s understanding can be considered in the assessment for marks-similarity.

Background

Monster Energy Company (“Monster Energy”) sells energy drinks worldwide under various trade marks, including the word marks “MONSTER”, “MONSTER ENERGY” and device marks featuring a claw. NBA Properties Inc (“NBA Properties”) holds the trade marks of the teams competing in the National Basketball Association. These include the league’s only Canadian team, the Toronto Raptors from Toronto (or “LeBronto” in certain contexts).

Monster Energy and NBA Properties Inc’s respective marks are set out as follows:


Step-by-step analysis of section 8(2)(b) of the Trade Marks Act

Section 8(2)(b) of Singapore’s Trade Marks Act (Cap. 332) had been relied on by Monster Energy as one of its grounds of opposition. This section provides that a trade mark shall not be registered if because it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected, there exists a likelihood of confusion on the part of the public.

A “step-by-step” approach is applied to determine whether an opposition under this ground will succeed. In summary, this systemic approach requires the individual assessments of marks-similarity and goods-similarity to precede the evaluation of a likelihood of confusion. If the assessment is in the negative for any one step, the inquiry will end without further consideration of the next steps.

Dominant components of the marks

For the purpose of ascertaining marks-similarity, the hearing officer’s foremost consideration was whether each mark had a dominant component. Establishing the dominant component is often of tactical significance as it determines whether the marks are to be compared against each other in their entirety, or if the specific dominant components would be the focal points of the comparison.

In respect of the Monster Energy marks, the claw device clearly formed the dominant component in the Claw Device Mark as it contains no other elements. The claw device in the Composite Mark was also identified as its dominant component, given its above-average degree of inherent distinctiveness and its prominence in proportion to the textual component.

The hearing officer came to a different conclusion in respect of the claw device in the Application Mark. In addition to the graphical device, the Application Mark also featured the words “TORONTO RAPTORS” in capitalised letters encircling such device. The hearing officer therefore found that the textual element and graphical device were of roughly equal prominence, and the claw device did not comprise the dominant component of the Application Mark.

Accordingly, the comparison for marks-similarity was conducted between the Application Mark in its entirety against the claw device in the Claw Device Mark and Composite Mark.

Significance of a widely known textual element

At this juncture, the hearing officer also addressed the contested issue of whether public recognition of the words “TORONTO RAPTORS” in the Application Mark could be taken into account in the determination of the dominant component.

NBA Properties submitted that the reputation of “TORONTO RAPTORS” as an NBA team would cause consumers viewing the Application Mark to perceive the word element as the dominant component. Reference was made to the Court of Appeal’s citation in Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd [2013] 2 SLR (“Hai Tong”) of observations in the earlier case of Festina Lotus SA v Romanson Co Ltd [2010] 4 SLR 552 (“Festina”) that a “widely known textual element” can stand out and form a dominant component of a composite mark.

Monster Energy objected on the basis that the marks-similarity comparison should not involve consideration of extraneous circumstances, as affirmed by the Court of Appeal in Staywell Hospitality Group v Starwood Hotels & Resorts Worldwide [2014] 1 SLR 911 (“Staywell”). It was also submitted that the observations in Festina were no longer of authority as the Court of Appeal in Staywell declared “a slight departure from the approach taken by the High Court in Festina”.

However, the departure referred to by the Court of Appeal in Staywell was in reference to a separate point in Festina, and therefore did not contradict the citation in Hai Tong. Further, the hearing officer reasoned that a marks-similarity assessment requires consideration of how an average consumer would understand each element in a mark, including any textual component. As an average consumer’s understanding of word elements in a mark depends on general knowledge, evidence of the circumstances that establish such general knowledge can be adduced.

In this case, the hearing officer did not find it necessary to consider whether “TORONTO RAPTORS” is widely known to the public in Singapore as the name of an NBA team. It was decided that based on the naming convention, an average Singaporean consumer would perceive “TORONTO RAPTORS” to be the name of a sports team. However, the hearing officer did not elaborate on whether he considered any particular evidence to support the conclusion that an average consumer would perceive “TORONTO RAPTORS” to be the name of a sports team and not any other entity or item.

Visual Dissimilarity of Marks

From this starting point, the conclusion of visual dissimilarity was derived in a relatively straightforward manner.

The hearing officer observed that the Application Mark as a whole comprised textual elements enclosed by a circular perimeter. By incorporating his earlier findings that an average consumer would perceive “TORONTO RAPTORS” as the name of a sports team, the hearing officer concluded that such average consumer would identify the outline of a basketball within the circular perimeter (although it was acknowledged that others may see the image as a “watermelon” or “leaf with palmate lobes”). The absence of any basketball imagery within the Claw Device Mark and Composite Mark was a significant point of dissimilarity.

Other elements that pointed to overall visual dissimilarity included the orientation of the claws, and the proportion and positioning of the prongs in the respective claws. Further, the graphical depiction in the Claw Device Mark and Composite Mark was also likened to an imprint or mark made by a claw, whereas the device in the Application Mark resembled an actual claw.

Conclusion

This decision clarifies that for the purpose of ascertaining how a mark would be perceived by an average Singaporean consumer, evidence can be submitted to establish such average Singaporean consumer’s general knowledge of the subject. In some cases, this may overlap with the evidence required to demonstrate a mark’s reputation and acquired distinctiveness, but will not necessarily constitute extraneous matter if the analysis is confined to establishing an average Singaporean consumer’s understanding of the mark.

This article is authored by Benita Lau, Associate of Taylor Vinters Via LLC.