TRADE MARKS ORDINANCE (Cap. 559)
OPPOSITION TO TRADE MARK APPLICATION NO.: 304401080
MARK:
CLASS: 29
APPLICANT: Pacific Food Products Sdn Bhd
OPPONENT: Monster Energy Company
STATEMENT OF REASONS FOR DECISION
Background
1. On 17 January 2018, Pacific Food Products Sdn Bhd (the “Applicant”) filed an application (the “subject application”) under the Trade Marks Ordinance (Cap. 559) (the “Ordinance”) for the registration of the following mark:
(the “subject mark”).
2. Registration is sought in respect of certain goods under Class 29 (the “subject goods”), particulars of which are set out in the following:
Snack foods and proteinaceous substances for human consumption included in Class 29; Potato crisps, potato chiplets, potato puffs and snack products of potato based; Cheese, potato chips, Mixtures of processed or prepared nuts and dried fruits, raisins and other dried or processed fruits; Roasted or processed nuts and fresh nuts prepared ready for human consumption; Roasted or baked meat; Fish and seafood, poultry, game and pickles; Flavoured milk beverage with the milk predominating; Milk shake; Milk shake with fruit drops; Jellies and jam.
3. Particulars of the subject application were published on 20 April 2018. Monster Energy Company (the “Opponent”) filed on 11 June 2018 a notice of opposition to the subject
1 application together with a statement of grounds of opposition (“Statement of Grounds”). A counter-statement (“Counter-statement”) was filed by the Applicant on 30 August 2018 in response to the Statement of Grounds filed.
4. The opposition hearing was scheduled to be heard on 16 December 2020. The Opponent filed a notice of attendance at hearing (Form T12) while the Applicant did not. The skeleton submissions (the “Skeleton Submissions of the Opponent”) together with a list of authorities were filed on behalf of the Opponent on 4 December 2020. The hearing took place before me on 16 December 2020, at which Mr. Philips Wong, Counsel, instructed by Messrs. Gallant, appeared for the Opponent. I reserved my decision at the conclusion of the hearing.
Statement of Grounds
5. According to the Statement of Grounds, the Opponent claims to be a well-known seller of a wide variety of beverages and that the Opponent’s main brands are a family of marks incorporating the word “MONSTER”, “MONSTER ENERGY” and logos created under these brands.
6. The Opponent is the owner of a number of marks registered in Hong Kong. The following marks are relied on by Mr. Wong at the hearing:
(i) Trade Mark No. 304373208: (“Mark 1”);
(ii) Trade Mark No. 304191714: (“Mark 2”);
(iii) Trade Mark No. 303825162: (“Mark 3”);
(iv) Trade Mark No. 300577684: (“Mark 4”);
(Mark 1, Mark 2, Mark 3 and Mark 4 collectively, the “Opponent’s HK Registered Marks”); and
(v) Trade Mark No. 303890674: (“Mark 5”)
2 Particulars of the aforesaid marks are set out at Annex 1 hereto. Mark 5 is a mark being applied for and not registered. A more detailed discussion on Mark 5 is set out under the section titled section 12(3) below.
7. The Opponent opposes the subject application under sections 3, 12(3), 12(4) and 12(5)(a) of the Ordinance. However, in the Skeleton Submissions of the Opponent, Mr. Wong for the Opponent only relied on sections 12(3), 12(4) and 12(5)(a) of the Ordinance.
Counter-statement
8. In the Counter-statement, the Applicant avers that it was founded in 1971 in Malaysia and had established itself as a household name for food and beverages serving over 50 products. It is averred that the relevant consumers would not have any confusion between the subject mark and the Opponent’s “Monster Energy” mark. The Applicant virtually denies all allegations made by the Opponent in the Statement of Grounds.
Relevant date
9. The relevant date for considering the opposition is 17 January 2018 (“Relevant Date”), which is the filing date of the subject application for registration.
Evidence of the Opponent
10. In support of the opposition, the Opponent filed the statutory declaration dated 19 February 2019 made by Rodney C. Sacks (“Sacks’ SD”) together with exhibits.
11. Mr. Rodney C. Sacks is the Chairman and the Chief Executive Officer of Monster Beverage Corporation and its subsidiaries including the Opponent. According to Sacks’ SD, the Opponent is in the business of designing, creating, developing, producing, marketing and selling energy drinks and other beverages such as natural sodas, fruit juices, iced teas etc. It is claimed that the Opponent has been widely acknowledged as a leader in the beverages industry. A number of recognition and awards were received by the Opponent over the years e.g. “Beverage Company of the Year” by The Beverage Forum in 2004 and 2006.
12. The Opponent has sought registration of its trade marks which include “MONSTER”,
“MONSTER ENERGY”, the claw mark “ ” (“Claw Mark”), and other marks containing
3 the word “MONSTER” (collectively the “Opponent’s Marks”) in many countries and areas worldwide including Hong Kong, the Mainland of China, Singapore, United States etc. Exhibit “RCS-1” to Sacks’ SD contains a list of registered and pending applications of trade marks of the Opponent in Hong Kong and the Mainland of China.
13. It is claimed that the MONSTER ENERGY beverage line has been tremendously successful since its launch in 2002. The worldwide retail sales (including Hong Kong) of the Opponent’s drinks amounted to approximately 3 billion cans per year, with estimated retail sales of about US$6 billion per year. Over time, the Opponent has expanded the range of beverages sold under the Opponent’s Marks to some 130 countries and territories in the world including Hong Kong. Apart from the traditional line of energy beverages, the Opponent also has other lines of energy drinks such as tea-based non-carbonated energy drinks, dairy- based coffee plus energy drinks etc.
14. Mr. Sacks claims that the Opponent’s marketing strategy is not conventional. The majority of its advertising and promotional budget are said to have spent on athlete endorsements and sponsorship of athletes, athletic competitions and other events. As a result, the Opponent’s Marks are often featured on sponsored athletes, teams’ uniform and gear. Exhibit “RCS-4” are some photographs of the Opponent’s sponsored athletes bearing the Opponent’s Marks (undated).
15. According to Mr. Sacks, as a result of the said marketing strategy, the Opponent allocates a large proportion of its budget on sponsorships of different athletic competitions and sporting events, which are broadcasted worldwide or webcasted on the Internet e.g. F1 Racing, MotoGP, Supercross, Ultimate Fighting Championship etc. It also sponsors athletes and racing teams such as Valentino Rossi, Mercedes AMG PETRONAS F1 Team etc. It is stated that throughout those activities, the Opponent’s Marks were displayed on banners, posters, signs, and on clothing and accessories sold at the events, on transport, support and hospitality tractor trailers, on motor homes, promotional vehicles for various sports etc. A vast amount of exhibits e.g. Exhibit “RCS-13” to Exhibit “RCS-15”, Exhibit “RCS-17”, Exhibit “RCS-18”, Exhibits “RCS-32” to “RCS-34” to Sacks’ SD contain copies of photographs, screen captures, webpages of examples of use of the Opponent’s Claw Mark and/or
/ (“MONSTER ENERGY Composite Mark”) shown on the outfit and gear of various sports celebrities and at venues of the sponsored sporting events,
4 the majority of which took place outside Hong Kong. It is stated that many of these sporting events such as F1 Racing has been broadcasted in many parts of the world including in Hong Kong on Fox Sports Asia and STAR Sports. Exhibit “RCS-16” is copy of marketing survey from 2009 to 2013 in respect of F1 Racing. Exhibit “RCS-19” is a copy of MotoGP World Championship Audience Data for 2009 to 2013 and 2015 to 2016. Nothing in the said exhibits contains any data/breakdown specific to Hong Kong. Mr. Sacks also goes to great lengths to describe the different types of sporting events including the outcomes of various teams/players at particular competitions as well as stories of some sponsored athletes. There are also produced in the exhibits to Sacks’ SD voluminous webpages, which show pictures or screen captures of those sports celebrities or event highlights. I do not find it useful or necessary to provide an account of the aforesaid, which are extraneous to the crux of the present opposition. Suffice it to say that those events receive a combination of coverage by television, press, social media on the Internet.
16. The Opponent also sponsors musicians and music festivals, which receive exposure on the Internet, television and in magazines. It is said the MONSTER Music Instagram account (@monstermusic) and the MONSTER Music Twitter account (@monstermusic) are accessible to fans in Hong Kong. Exhibit “RCS-7” and Exhibit “RCS-8” are copies of photos of music events held in Beijing.
17. The Opponent launched its MONSTER energy drinks in Hong Kong in April 2012. It is claimed that from April 2012 to 31 September 2018 (including a period of some 8 months after the Relevant Date), the Opponent had sold more than 8.4 million cans of MONSTER energy drinks bearing one or more of the Opponent’s Marks in Hong Kong, amounting to sales of approximately US$7.22 million. Exhibit “RCS-2” contains copies of several undated photos of cans of energy drinks which are claimed to have been distributed in Hong Kong. Copies of invoices on divers dates from June 2012 to February 2018 issued by Monster Energy Hong Kong in respect of products are produced in Exhibit “RCS-3”1 Some sample invoices therein were issued to entities in Macao and the Mainland of China. The
mark shown thereon is . Exhibit “RCS-5” are copies of photographs showing the points of sale for MONSTER energy drinks sold in Hong Kong (undated). According to Mr. Sacks, in Hong Kong, the Opponent’s MONSTER energy drinks have been sold in over 3,000 retail outlets, including retail stores, gas stations, drug stores and convenient stores such as 7-Eleven and Circle K as well as supermarkets.
1 Sales information such as the addressee, unit price, net price etc. were redacted.
5 18. It is claimed that the Opponent has spent more than US$3.6 million in marketing and promotional activities to promote its energy drinks in Hong Kong between April 2012 and 30 September 2018 (including a period of some 8 months after the Relevant Date). The Opponent has participated in a number of events such as the 2012 Animation-Comic-Game entertainment and book fair. The Opponent’s kiosk at the event featured a tent branded with the Opponent’s MONSTER ENERGY Composite Mark. Exhibit “RCS-9” and Exhibit “RCS-10” are copies of screenshots from Youtube video of the aforesaid event. It is also claimed that at the Opponent’s official Hong Kong launch party held at Hyde Club on 23 August 2012, the Opponent’s Marks were prominently displayed throughout the event venue. The Opponent also sponsored several action sports competitions in Hong Kong including e.g. the Hong Kong X-Battle BMX contest, HKIT Go-Skateboarding Day, 2013 ATMA Fight Night etc. to promote its products and the Opponent’s Marks. Exhibit “RCS-11” are copies of screenshots of the YouTube video of the Hong Kong X Battle 2012. The Opponent was also a sponsor of a downhill mountain bike race in Hong Kong in 2013. In the said events, the MONSTER ENERGY Composite Mark and sometimes the Claw Mark on its own appeared on the clothing of the event participants. It is claimed that each week during 2012, street sampling was conducted in Hong Kong. Over 326,000 sample cans of MONSTER energy drinks were distributed to consumers in Hong Kong from 2013 to first quarter of 2015. According to Mr. Sacks, consumers in Hong Kong are also exposed to the MONSTER marks at NBA games which can be watched in Hong Kong on Sports 2 World and Viu TV channels. No exhibit showing the Opponent’s Marks used in NBA has been produced.
19. In addition to sponsoring professional athletes and teams, the Opponent maintains an amateur sponsorship and athlete development program called The Monster Army. At the time of Sacks’ SD, more than 389,000 amateur athletes worldwide have applied to be accepted as part of the Monster Army, including 35 people from Hong Kong. Google Analytics for the period from 1 October 2008 to 30 September 2018 show that the Monster Army website received nearly 7.6 million unique visitors during that period, of which more than 1,446 visitors were residents of Hong Kong.
20. There were more than some 43,000 visits from Hong Kong to the Opponent’s website www.monsterenergy.com over the period from 1 September 2010 to 30 September 2018 (including figures for 8 months after the Relevant Date). The Opponent also uses the Internet and the social media e.g. Facebook page, YouTube channels to promote its products and marks. According to Mr. Sacks, total views for the MONSTER ENERGY related YouTube channels exceeds 359 million worldwide in aggregate. In Hong Kong, between 25 August 2009 and 30 September 2018, the total views of the said channels exceeded
6 563,000. Exhibit “RCS-40” is a screenshot of YouTube’s reporting feature showing figures and other data for the said MONSTER ENERGY related YouTube channels worldwide.
21. It is claimed that the Opponent’s Marks have also been used on clothing since 2002, including t-shirts, sweat shirts, sweat bands etc. The Opponent has also given approval and licenses to different companies to market apparel and other merchandise e.g. motorcycle bearing the Opponent’s Marks (Exhibits “RCS-42” to “RCS-44”). Exhibit “RCS-41” contains a copy of an in-store display of the Opponent’s drinks in supermarkets in Hong Kong in 2014 which features the MONSTER ENERGY Composite Mark in connection with items of redemption i.e. backpacks and some other apparel items. There are also a number of published articles in magazines like Fortune, Newsweek, Adweek which feature the Monster Energy Composite Mark on the Opponent’s beverages in Exhibit “RCS-45” and Exhibit “RCS-46”.
22. In 2003, the Opponent signed a $10 million deal to sponsor the MONSTER train, the first multi-car train on the Las Vegas monorail. The Opponent’s Marks were featured on the train (re Exhibits “RCS-47” to “RCS-49”). The Opponent also distributes point of sale items, including display headers, display cards, stickers etc. Moreover, the Opponent’s Marks have been featured in some video games and their promotions as the Opponent has partnered with some video game publishers. It has also sponsored certain eSports teams which compete in multiplayer video game competitions.
Evidence of the Applicant
23. The Applicant filed a statutory declaration (“Pang’s SD”) made by Mr. Pang Tee Chew (“Pang”) dated 28 August 2019 in support of its application.
24. Mr. Pang is the Group Chief Executive Officer of the Applicant. According to Pang’s SD, the Applicant is one of the food production companies and wholly owned subsidiaries of Mamee-Double Decker (M) Sdn Bhd. The Applicant was incorporated in 1971 and is a manufacturer of dry noodles, instant rice vermicelli, noodle snacks, instant noodles and cup noodles. Exhibit B contains printouts of the Applicant’s website (undated). It is stated that the Applicant produces 35 different products under the brand “Mamee”. According to paragraph 9 of Pang’s SD, the Applicant claims to have built a strong affinity with children through a lovable blue monster mascot used together with the subject mark since its foundation. Exhibit C is a self-compiled list of the Applicant’s products, which includes “Mamee Monster Snack” and “Mamee Monster Biscuit” (undated). Little giveaways such as stickers, puzzles and cards are attached to the Applicant’s MAMEE MONSTER noodle
7 snack products. Exhibit D contains photos of some sample stickers, puzzles and cards (most documents are undated and some in foreign language). There is no evidence that such products/ stickers have been made available in Hong Kong. Exhibit E shows some packaging design plans featuring a mark similar to the subject mark (undated). Exhibit F- 1 shows photos of the Applicant’s snack products MAMEE MONSTER BISKIDZ in Malaysia (undated). Exhibit F-2, Exhibit G and Exhibit H contain photos and texts of the promotion and marketing activities of the Applicant which are in a foreign language (not English), and such activities appear to have been held outside Hong Kong. The only instance where the subject mark is shown with trade mark use is in Exhibit G where the subject mark appears on a product package in the video screenshot of the Youtube channel of one Les’ Copaque Production (“LCP”) published on 26 August 2013. According to Mr. Pang, in 2013, the Applicant is one of the sponsors of the animated series UPIN & IPIN, created by LCP. It is not known whether this video has ever been made available or promoted to customers/ viewers in Hong Kong. Other promotional activities referred to in Pang’s SD held before the Relevant Date were in Shanghai, Singapore, Cambodia.
25. According to Mr. Pang, the Applicant has been exporting its snack food products including noodle snack products bearing the subject mark from as early as the year of 2012. Exhibit I is a list of registrations and applications of trade marks in different countries compiled by the Applicant and it does not show any registration of the subject mark. Photographs of the Applicant’s products on display in physical stores in Hong Kong as well as online stores were produced in Exhibit J-1. It is noted in Exhibit J-1 that the mark used by the Applicant on
noodles is per se, and not the subject mark. Exhibit J-2 contains what
appears to be some kind of internal records of Applicant’s sales data for Hong Kong distributors from June 2015 to June 2018 (including 5 months after the Relevant Date). The description of the product is “MNS CHICKEN (HONG KONG)”. It is not clear what products they were and whether the subject mark was used on those products. No document such as invoice, packing list etc. was produced in support. Samples of the Applicant’s advertisements placed in newspapers and magazines in Hong Kong are produced in Exhibit
K. In Exhibit K, the mark shown in the promotional materials is and/or 媽
咪 and not the subject mark.
26. As per my observations above, Pang’s SD and its exhibits do not show use of the subject mark in Hong Kong before the Relevant Date.
8 Decision
Opposition under section 12(3) of the Ordinance
27. Section 12(3) of the Ordinance provides as follows:
“A trade mark shall not be registered if– (a) the trade mark is similar to an earlier trade mark; (b) the goods or services for which the application for registration is made are identical or similar to those for which the earlier trade mark is protected; and (c) the use of the trade mark in relation to those goods or services is likely to cause confusion on the part of the public.”
28. Section 12(3) of the Ordinance requires the existence of an “earlier trade mark”, which is defined in Section 5 of the Ordinance as follows:
“ (1) In this Ordinance, “earlier trade mark” (在先商標), in relation to another trade mark, means – (a) a registered trade mark which has a date of the application for registration earlier than that of the other trade mark, taking into account the priorities claimed in respect of each trade mark, if any; or (b) a trade mark which, at the date of the application for registration of the other trade mark or, where appropriate, at the date of the priority claimed in respect of that application for registration, was entitled to protection under the Paris Convention as a well-known trade mark. (2) References in this Ordinance to an earlier trade mark shall be construed as including a trade mark in respect of which an application for registration has been made under this Ordinance and which, if registered, would constitute an earlier trade mark under or by virtue of subsection (1)(a), subject to its being so registered.”
Earlier trade marks
29. Each of the Opponent’s HK Registered Marks, i.e. MONSTER MEAL DEAL (Mark 1),
(Mark 2), (Mark 3),
(“Mark 4”), is registered and has a date of the application for registration earlier than the application date of the subject mark. According to section 5(1)(a) of the Ordinance, each of
9 these marks is an earlier trade mark in relation to the subject mark.
30. As regards the mark (Mark 5), at paragraph 19 of his Skeleton Submissions, Mr. Wong relies on the same as an earlier mark. It is not pleaded in Schedule B of the Statement of Grounds as a mark registered in Hong Kong or an earlier mark. It is noted that application for registration of Mark 5 was made on 1 September 2016. It is a mark being applied for and not registered in Hong Kong as of the date of opposition filed nor the date of this decision. Although section 5(2) of the Ordinance stipulates that “an earlier trade mark shall be construed as including a trade mark in respect of which an application for registration has been made under this Ordinance and which, if registered, would constitute an earlier trade mark under or by virtue of subsection (1)(a)”, the aforesaid is expressly qualified by the words “subject to its being so registered”. In the circumstances, Mark 5 does not fall within section 5(1)(a) of the Ordinance. It is noted under paragraph 10 of the Statement of Grounds that it is the Opponent’s case that the Opponent’s Marks are well- known trade marks which are entitled to protection under the Paris Convention and are earlier trade marks by virtue of section 5(1)(b) of the Ordinance. If the Opponent’s Marks (including Mark 5) are to meet the requirements of section 5(1)(b) of the Ordinance, i.e. they have to be trade marks which, at the date of the application for registration of the subject mark, were entitled to protection under the Paris Convention as well-known trade marks.
31. The meaning of “well-known trade mark” is defined in section 4 of the Ordinance. In determining whether a trade mark is well known in Hong Kong, the Registrar or the court shall have regard to Schedule 2 of the Ordinance. According to section 1(1) of Schedule 2 of the Ordinance, the Registrar or the court shall take into account any factors from which it may be inferred that the trade mark is well known in Hong Kong. These factors include, for example, the degree of knowledge or recognition of the trade mark in the relevant sectors of the public; the duration, extent and geographical area of any use of the trade mark; the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods or services to which the trade mark applies; the duration and geographical area of any registrations, or any applications for registration, of the trade mark, to the extent that they reflect use or recognition of the trade mark; the record of successful enforcement of rights in the trade mark, in particular, the extent to which the trade mark has been recognized as a well-known trade mark by competent authorities in foreign jurisdictions; and the value associated with the trade mark.
Analysis of the evidence of use of the Opponent
10
32. With regard to the evidence filed by the Opponent, it is noted that a number of exhibits to the Sacks’ SD contain materials which are either dated posterior to the Relevant Date or are undated. Such materials do not much assist in establishing whether distinctiveness has been enhanced through use or whether it is well-known in Hong Kong at or before the Relevant Date. Moreover, there are a number of duplicated exhibits e.g. Exhibit RCS-35 duplicates Exhibit RCS-13, and part of Exhibit RCS-49 duplicates Exhibit RCS-45. A summary of evidence of use in Sacks’ SD can be found at paragraphs 11 to 22 above.
33. According to Sacks’ SD, the worldwide sales of the Opponent’s energy drinks are substantial. Such drinks were first launched in Hong Kong in April 2012. The claimed use of the Opponent’s Marks in Hong Kong is some 5 years and 9 months before the Relevant Date of 17 January 2018. The sales revenue of the MONSTER ENERGY drinks in Hong Kong from April 2012 to 30 September 2018 is stated to be a sum of about US$7.22 million. However, the aforesaid period covers a substantial period after the Relevant Date of 17 January 2018 and there is no breakdown by the year of the amount of sales of MONSTER energy drinks in Hong Kong prior to the Relevant Date.
34. Similarly, there is no breakdown of the claimed marketing expenses of more than US$3.6 million between April 2012 and September 2018 (which includes a period of some 8 months after the Relevant Date) in Hong Kong. Promotion in Hong Kong includes promotion by way of distributing samples, and sponsoring the events referred to in paragraph 18 above. Apart from energy drinks, there is little evidence in relation to sales of other merchandise. As shown in the evidence, the mark predominantly used in the events held in Hong Kong
(and indeed in other places) is the MONSTER ENERGY Composite Mark
or the Claw Mark alone. Seldom was there any instance where the word “MONSTER” alone or other word combinations containing “MONSTER” would appear on the merchandise, in promotional materials/ events, or the social media.
35. Albeit the Opponent’s Marks including the MONSTER ENERGY Composite Mark had received tremendous exposure on the Internet, television and magazines, newspapers, social media through the sponsorship of numerous sportsmen, sports events, musicians, music festivals etc., the majority of the evidence are reports, screenshots, photos, printouts from
11 social media relating to events, competitions and promotions, which took place outside Hong Kong. There is no documentary proof if the broadcast or webcast of sports events such as Formula 1 were in fact made to consumers in Hong Kong or if so, the extent to which those events were broadcasted or viewed in Hong Kong, and the extent of recognition of the Opponent’s Marks in the relevant sectors of the public. As for the sponsorship of certain extreme sports competitions or contests held in Hong Kong, there is no evidence on the number of attendees or spectators at these events, or to what extent the relevant consumers in Hong Kong were aware of the Opponent’s sponsorship of those events or the extent of use or recognition of the Opponent’s Marks on the Opponent’s products in Hong Kong.
36. It is claimed that as at the time of Sacks’ SD, MONSTER energy drinks were available in over 3,000 outlets in Hong Kong. However, there is no evidence of the number of outlets at which the drinks were available in Hong Kong as at the Relevant Date.
37. With regard to the enrolment to the Monster Army, 35 people from Hong Kong is only a very small number. Only an aggregate number of visitors from Hong Kong of the Opponent’s websites/ videos on social media like YouTube channel were recorded for a period of some 9 years and there is no breakdown by year of the figures prior to the Relevant Date.
38. Despite the claim that the Opponent’s Marks had also been used on clothing since 2002, no evidence such as sales figure was produced to show that such products have been sold in Hong Kong. Exhibit “RCS-41” contains copies of an in-store display of the Opponent’s drinks in supermarkets and other stores in Hong Kong in 2014 which feature the MONSTER ENERGY Composite Mark used in connection with backpacks and some other items including apparel such as T-shirts and hats. However, it is clear from the photos shown that these backpacks and apparel were only offered only as part of the promotion program for energy drinks and not a marketing effort in respect of apparel or other goods.
39. Regarding the overseas publications exhibited in Sacks’ SD, it was not shown whether or to what extent those publications had been circulated to consumers in Hong Kong before the Relevant Date. As to the Opponent’s other publicity efforts such as the sponsorship of the MONSTER train in Las Vegas, the distribution of point of sale items, the partnership with some video game publishers, the sponsorship of eSports teams etc., there is no evidence to show that any of the aforesaid activities or products had been sold and/or promoted or made known to consumers in Hong Kong before the Relevant Date (or at all).
40. It is noted that the Opponent’s Marks have been filed or registered worldwide in many
12 countries or territories.
41. There is no evidence to show the market share in energy drinks in Hong Kong or the degree of recognition of the Opponent’s Marks in the relevant sectors of the public in Hong Kong before the Relevant Date. There is also no mention of any record of successful enforcement of rights in Opponent’s Marks2, or the extent to which such marks have been recognized as a well-known trade mark by competent authorities in foreign jurisdictions and the value associated with the same in the evidence. Having considered the totality of the evidence filed by the Opponent and all the relevant factors in accordance with section 1 in Schedule 2 to the Ordinance, I am not satisfied that Mark 5, the MONSTER ENERGY Composite Mark, or indeed any of the Opponent’s Marks are well-known in Hong Kong at or before the Relevant Date. None of the Opponent’s Marks can qualify as an earlier trade mark under section 5(1)(b) of the Ordinance.
42. To sum up, except for Marks 1, 2, 3 and 4, no other Opponent’s Marks is regarded as an earlier trade mark under the Ordinance. I will consider in the following the Opponent’s HK Registered Marks which are earlier trade marks under section 5(1)(a) of the Ordinance.
43. According to section 7(1) of the Ordinance, in determining whether the use of a trade mark is likely to cause confusion on the part of the public, the Registrar may take into account all factors relevant in the circumstances, including whether the use is likely to be associated with an earlier trade mark.
44. The basic principles regarding the assessment of similarity between signs and the likelihood of confusion between them are set out in Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] F.S.R. 19. Such principles have been adopted in Hong Kong and confirmed by the Court of Appeal and Court of Final Appeal in Tsit Wing (Hong Kong) Co Ltd v TWG Tea Co Pte Ltd [2015] 1 HKLRD 414 and Tsit Wing (Hong Kong) Co Ltd v TWG Tea Co Pte Ltd (No 2) [2016] 4 HKC 486. Lam VP of the Court of Appeal cited (at paragraph 35) the propositions endorsed by Kitchin LJ in Specsavers (at paragraph 52) as follows:
2 Notwithstanding, I do take note that in item 14 of the Opponent’s List of Authorities, Mr. Wong referred to “ ” Trade Mark (not the same mark as the subject mark herein), decision of the UK Trade Marks Registry, 28 May 2020 which involves the same parties in these proceedings and where the Opponent had been partially successful in its opposition against the Applicant based on the marks “MONSTER ENERGY” and “MONSTER”. Save as aforesaid, no other successful enforcement action has been disclosed.
13 “On the basis of these and other cases the Trade Marks Registry has developed the following useful and accurate summary of key principles sufficient for the determination of many of the disputes coming before it: (a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors; (b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question; (c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details; (d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements; (e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components; (f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark; (g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa; (h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it; (i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient; (j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; (k) if the association between the marks causes the public to wrongly believe that the respective goods [or services] come from the same or economically-linked undertakings, there is a likelihood of confusion.”
45. Section 12(3) essentially prohibits the registration of a trade mark which would be likely to cause confusion on the part of the public as a result of its being similar to an earlier trade
14 mark and because it is to be registered in respect of goods the same as or similar to those the subject of the earlier trade mark. I must therefore consider whether there are similarities between the subject mark and the Opponent’s HK Registered Marks and the goods covered, and whether they would combine to create a likelihood of confusion.
The Average Consumer
46. The subject goods include snack food such as potato crisps, mixtures of processed or prepared nuts and dried fruits, raisins and other dried or processed fruits; Roasted or baked meat; Fish and seafood, poultry, game and pickles as well as milk beverages under Class 29. The relevant consumers in question are members of the general public in Hong Kong who are deemed to be reasonably well-informed, reasonably circumspect and observant. They are expected to pay an average level of care and attention when selecting these goods.
Distinctiveness of the Opponent’s HK Registered Marks (Marks Nos.1 to 4)
47. The distinctive character of the earlier trade mark is a factor to be taken into account in the assessment of the likelihood of confusion. As mentioned in paragraph 44 above, it is well established that there is a greater likelihood of confusion where the earlier mark has a highly distinctive character either because of its inherent qualities or because of the use that has been made of it.
48. In determining the distinctive character of an earlier trade mark, I must make an overall assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (Windsurfing Chiemsee v Huber and Attenberger [1999] ETMR 585 at paragraph 51; Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV [2000] FSR 77 at paragraph 24).
15 49. Mr. Wong is of the view that Marks 1 to 5 enjoy high inherent distinctiveness in respect of the registered goods, in particular because of the word “MONSTER”. He submitted that as far as the marks “MONSTER” and “MONSTER ENERGY” are concerned, the distinctiveness has been enhanced through the extensive use of the said marks before the Relevant Date.3
Mark 1
50. Mark 1 is comprised of three English words in upper case in plain font
and in equal size. There is no decoration or stylization nor is there any colour claim. The word “Monster” has a number of different meanings e.g. “any imaginary frightening creature, especially one that is large and strange”, “something that is very big, or too big” etc.4 “Meal” generally means “an occasion when food is eaten, or the food that is eaten on such an occasion”.5 “Deal” can mean “an agreement or an arrangement, especially in business”, “a large amount” etc.6 I am of the view that with regard to the goods registered under Mark 1 which include food items like meat, fish, poultry, jellies, milk and milk products, beverages made from based on or containing yoghurt or milk etc. in Class 29, and coffee, tea, bread, pastry etc. in Class 30, the words “MEAL DEAL” when combined is of a more descriptive nature because it can mean “a set of at least 2 (usually 3) prepared and packaged food items (can be any of these: sandwich/wrap, crisps/treat, drink) that are sold together for a discounted price at a supermarket.”7 Although Mr. Wong argued that “MONSTER” is the most distinctive element, I find that when the three words are used in the sequence “MONSTER MEAL DEAL”, the word “MONSTER” may be perceived to qualify the words “MEAL DEAL” to mean “large” or “huge”. As a whole, the combination can mean a huge set of food items being sold in a discounted price. Even if “MONSTER” is a bit more prominent than “MEAL DEAL”, as a whole, the inherent distinctiveness of Mark 1 in respect of the registered goods is only of an average degree.
Mark.2 and Mark 3
51. Regarding Mark 2 and Mark 3 , they have one
3 Paragraphs 20 and 21 of the Skeleton Submissions of the Opponent 4 Cambridge Online Dictionary https://dictionary.cambridge.org/dictionary/english/monster?q=monster_1 5 Cambridge Online Dictionary https://dictionary.cambridge.org/dictionary/english-chinese-traditional/meal 6 Cambridge Online Dictionary https://dictionary.cambridge.org/dictionary/english-chinese-traditional/deal 7 Urban Dictionary https://www.urbandictionary.com/define.php?term=Meal%20Deal
16 thing in common: the word “MONSTER” is preceded by another word of the same size and same font style in upper case. There is no decoration or stylization. The word “JAVA”8 (with a whole lot of different meanings e.g. “a computer programming language”, “an island of Indonesia”, “a breed of chicken” to “a slang for coffee”) together with “MONSTER” will form a distinctive combination for the registered goods of non-alcoholic beverages and food items like rice, tapioca etc. It is distinctive to a medium degree. Regarding “JUICE MONSTER”, it is observed that “JUICE” is a word descriptive of the registered goods of non-alcoholic beverages in that it may designate a component of the beverage or form the subject matter. As a result, I find the word “MONSTER” to be a more distinctive element than “JUICE”. However, it does not mean the word “JUICE” should be overlooked in the combination. Together with the word “MONSTER”, its distinctiveness is moderate in respect of the registered goods of non-alcoholic beverages.
Mark 4
52. Regarding Mark 4 MONSTER ENERGY, it is comprised of two words “MONSTER ENERGY” in upper case in plain font and in equal size. There is no decoration or stylization. The word “Energy” can mean “the power and ability to be physically and mentally active”.9 I am of the view that with regard to the goods registered under the MONSTER ENERGY which are beverages in Class 32 (including energy drinks), the word “ENERGY” is of a more descriptive nature with regard to energy drinks and the word “MONSTER” is a more distinctive element. Having said that, when the two words are used in the sequence “MONSTER ENERGY”, it can mean “having the energy of a monster” or simply “a large volume of energy”. As a whole, the inherent distinctiveness of Mark 4 in respect of the registered goods of beverages in Class 32 is of a medium degree.
53. Regarding enhanced distinctiveness, Mr. Wong submitted that he relied on Mark 4 “MONSTER ENERGY” and Mark 5 “MONSTER”. Mr. Wong accepted that in Sack’s SD, there was only the use of the MONSTER ENERGY Composite Mark. He argued that although the word mark “MONSTER ENERGY” is used in conjunction with some other marks, distinctiveness may be acquired in consequence of the use of a mark as part of or in conjunction with a registered trade mark and the enhanced distinctiveness is claimed in respect of Mark 4 and Mark 5 (Societe Des Produits Nestle SA v Mars UK Ltd. [2005] ETMR 96 at paragraphs 26 to 32)10. He submitted that the evidence relating to overseas use of the Opponent’s marks and global reputation is also important because it provides the
8 Collins English Dictionary https://www.collinsdictionary.com/dictionary/english/java 9 Cambridge Online Dictionary https://dictionary.cambridge.org/dictionary/english/energy 10 Paragraph 22 of the Skeleton Submissions of the Opponent
17 context on which the marks entered into Hong Kong in 2012. As said earlier, Mark 5 “MONSTER” cannot be relied upon as an earlier mark for the purpose of section 12 of the Ordinance since it is neither registered in Hong Kong nor can be regarded as a well-known trade mark under the Ordinance.
54. Based on the evidence available, I find that the mark shown to be used consistently in Hong
Kong is the MONSTER ENERGY Composite Mark e.g. or which always appear to be stylized as shown above and are for most of the time consistently used in conjunction with the Claw Mark. In fact, I can hardly find any actual use of Mark 4 i.e. “MONSTER ENERGY” simpliciter as a trade mark in the evidence. I agree the words “MONSTER ENERGY” form part of the MONSTER ENERGY Composite Mark, but they continue to perform the role of indicating trade origin as the MONSTER ENERGY does. The legal principle under the Societe Des Produits Nestle SA as referred to by Mr. Wong would be relevant for consideration in the context of whether distinctiveness has been enhanced.
55. I have summarized and analysed the evidence of the Opponent with regard to the use, promotion, awards, sales figures etc. of the Opponent’s Marks (paragraphs 11 to 22 and 32 to 40 above). Having taken into account the totality of evidence filed, I am of the view that since there is no use of Marks 1, 2 or 3 having been shown in Hong Kong, the distinctiveness of these marks has not been enhanced. As for Mark 4, I find that distinctiveness has been enhanced.
Comparison of marks
56. The subject mark consists of the words “MAMEE”, “MONSTER” and “SNEK MI”. In Mr. Wong’s view, the words “SNEK MI” are printed in very small size and they are hardly noticeable. The word “MONSTER” is regarded as the most dominant element within the subject mark as it occupies the central position of the mark, and is larger than the other elements. Further, he submitted that it is presented in a stylised 3D typeface with shading and such presentation highlights this element within the whole mark. He believes that the word “MAMEE” will plainly be understood as denoting “mommy”, and is inherently weak in distinctiveness in respect of the goods sought to be registered. The device encircling the word “MAMEE” is too simple to evoke any particular concept. He submitted that the word
18 “MONSTER” is the most dominant and distinctive element in the subject mark. Alternatively, the word “MONSTER” is one of the most dominant elements in the subject mark, and the average consumer is unlikely to miss the element upon seeing the subject mark.11
57. Mr. Wong averred that with regard to the Opponent’s earlier marks relied upon, “MONSTER” is also the most dominant and distinctive element given that they are not descriptive of the goods registered. He submitted that in so far as the Opponent’s HK Registered Marks contain other elements (i.e. “MEAL DEAL”, “JUICE”, “ENERGY”), the other elements are either descriptive or less distinctive when compared with the word “MONSTER”. He argued in the alternative that the word “MONSTER” is one of the most distinctive and dominant elements.12
58. In his submissions, Mr. Wong stressed in particular that in respect of Mark 1
, “MEAL DEAL” (in his words, meaning “a deal for a meal”) are
descriptive or less distinctive in respect of Class 29 goods (which are food and beverage items). Accordingly, he is of the view that “MONSTER” is the most distinctive element in Mark 1. Such observation is said to also apply to “JUICE MONSTER” and “MONSTER ENERGY” in which “MONSTER” is regarded by Mr. Wong to be the most distinctive element. Mr. Wong submitted that upon seeing Mark 1 “MONSTER MEAL DEAL” used in relation to food or beverage products, the average consumer will inevitably rely more on the word MONSTER as indicating trade origin. According to Mr. Wong, the Opponent’s Marks 1 to 5 on the one hand and the subject mark on the other coincide in the dominant and distinctive element “MONSTER”. Therefore there is at least a moderate degree of visual and oral similarity. Conceptually the subject mark as well as Marks 1 to 5 suggest something relating to “MONSTER”. The underlying concept is seen to be a monster, whether it is a “mother” monster, “juice monster” or simply a monster. He concluded that the marks share a high degree of similarity conceptually. He placed particular emphasis on Mark 1 because he considered that the goods registered under Mark 1 are highly similar to the subject goods. Lastly, he also referred to the UK decision on opposition between the same parties in respect
of the mark (see footnote 2 above). In that case, it was held that
(the mark does not contain the words “SNEK MI” as the subject mark does) is
11 Paragraph 24 of the Skeleton Submissions of the Opponent 12 Paragraph 25 of the Skeleton Submissions of the Opponent
19 found to be similar to the mark “MONSTER” to a medium degree and to “MONSTER ENERGY” a low to medium degree of similarity.
Distinctiveness of the subject mark
59. In the present case, the subject mark consists of “MAMEE” at the top, “MONSTER” in the middle and two smaller words “SNEK MI” on the right immediately beneath the word “MONSTER”. The word “MAMEE” is framed in a hexagonal device which is surrounded by small round dots, the appearance of which resembles something like a movie signboard. “MAMEE” is not a dictionary word although Mr. Wong submits that it means “mommy” or “mother”. While I take note of his reference to page 1 of Exhibit B of Pang’s SD which contains an explanation of “MAMEE” being “a derivative of an endearing term for mother”, I do not think average consumers in Hong Kong would without doubt perceive such term as meaning “mother” or “mom” since the spelling/ pronunciation is not the familiar word “mommy” or “mummy”13 (which is a typical child’s word for “mother” or “mom”). Nevertheless, I would also not rule out the possibility that average consumers may perceive the word “MAMEE” as meaning something to do with “mommy”. In any event, “MAMEE” does not have a dictionary meaning. It is, in my view, distinctive of Class 29 goods which include food and beverage items. Even if it is considered to allude to “mother”, I do not see it having weak distinctiveness in respect of the subject goods like potato crisps, raisins, fish and seafood etc. As regards the word “MONSTER”, it is also not descriptive of the subject goods. There are also two tiny words “SNEK MI” in upper case which appear beneath the letters “ER” in the word “MONSTER”. “SNEK” does not have a dictionary meaning while “MI” can stand for “Michigan”, “Military Intelligence” etc. 14 The combination “SNEK MI” does not have any comprehensible meaning. It is also a distinctive element of the subject mark but as a result of its size and position, they are much less prominent than that of “MAMEE” or “MONSTER”. Despite the slightly smaller size of the word “MAMEE”, the way “MAMEE” is presented also serves to highlight the word itself. I find that the words “MAMEE” and “MONSTER” as well as the combination “MAMEE MONSTER” to be equally distinctive and dominant in respect of the subject goods. The distinctiveness of the subject mark is of a medium degree. The subject mark should be examined as a whole.
13 Cambridge Dictionary https://dictionary.cambridge.org/dictionary/english-chinese-traditional/mommy 14 Oxford Dictionary https://www.lexico.com/en/definition/mi
20 60. In comparing the marks, I bear in mind that an average consumer normally perceives a mark as a whole and does not proceed to analyze its various details, and rarely has the chance to make direct comparisons between marks but must instead rely upon the imperfect picture of them he has kept in his mind. I should also consider the perception of the marks in the mind of an average consumer of the relevant goods.
Opponent’s Mark 1 Subject Mark
MONSTER MEAL DEAL
61. As discussed in paragraph 50 above, Mark 1 “MONSTER MEAL DEAL” has an average distinctiveness in view of the combination capable of being perceived as a huge set of food items being sold at a discounted price. The distinctiveness would lie in the combination of the 3 words “MONSTER MEAL DEAL” with the word “MONSTER” being a slightly more distinctive element. However, given the way in which Mark 1 is presented, the relevant consumers will unlikely remember only the word “MONSTER” and ignore the two words that follow. In comparison with the subject mark, Mark 1 should be viewed as a whole rather than solely highlighting the “MONSTER” element. The visual similarity between
“MONSTER MEAL DEAL” and the subject mark is considered to be low in view of the respective word combination, sequence and positioning of the words in both marks, and the stylization and visual impact of the subject mark. The two marks are similar only to the extent that they contain the word “MONSTER”. Aurally, Mark 1 and the subject mark are similar to the extent that they contain the common element “MONSTER”. However, “MAMEE”, “SNEK MI” on one hand and “MEAL DEAL” on the other hand obviously have different pronunciations. Mark 1 is pronounced as “monster-meal-deal” and the subject mark “mamee-monster” (the words “snek-mi” may or may not be omitted in speech). The aural similarity is low. Conceptually, the subject mark may be perceived as a “monster named MAMEE” or “a mother monster”. As for MONSTER MEAL DEAL, it can be perceived as a huge set of food items being sold at a discounted price. The concepts of the 2 marks are not the same. I find that Mark 1 to be conceptually dissimilar to the subject mark. Having regard to the visual, aural and conceptual similarities and differences between the subject mark and Mark 1 and the effect of imperfect recollection of marks, I find that the overall impression created by the subject mark to be different from that created by Mark 1 of the Opponent. The subject mark is found to be dissimilar to Mark 1 when the
21 marks are considered in their entirety.
Opponent’s Mark 2 Subject Mark and Mark 3
62. Mark 2 “JAVA MONSTER” and Mark 3 “JUICE MONSTER” and the subject mark contain the common element “MONSTER” in the second word. While the word “MONSTER” may be a more distinctive and dominant element in Marks 2 and 3 in respect of the registered goods of beverages, the words “JAVA” and “JUICE” should not be disregarded when each of the marks is viewed as a whole. Visually, Mark 2 and Mark 3 on one hand and the subject mark on the other hand are similar to the extent that they coincide in the second word “MONSTER”. The words “MAMEE”, “JAVA”, “JUICE” have different numbers of letters in their composition. The subject mark has the additional words “SNEK MI”. Moreover, as a result of the plain font style of “JAVA MONSTER” and “JUICE MONSTER” vis-à-vis the stylistic presentation of the subject mark, I find that there is a low degree of visual similarity. As “JAVA” and “JUICE” on one hand and “MAMEE” (and additionally “SNEK MI”) on the other are pronounced differently, I consider that “JAVA MONSTER” and “JUICE MONSTER” are similar to the subject mark to a low degree aurally. It is not clear exactly what concept “JAVA MONSTER” or “JUICE MONSTER” or “MAMEE MONSTER” (with SNEK MI) would portrait. As a result of each frontal word having different meaning and the general principle that the beginning of a mark will attract attention of the consumers, “JAVA”, “JUICE” (of a descriptive nature to drinks) on one hand and “MAMEE” (a name of a person or another term for mother) on the other acting as adjective to the word “MONSTER”, as a whole, these marks would trigger different conceptual perceptions. The marks are dissimilar or of very low similarity in concept.
63. Having regard to their visual, aural and conceptual similarities and differences between the subject mark on one hand and Mark 2/Mark 3 on the other as well as the effect of imperfect recollection of marks, I find that the overall impression created by the subject mark is different from that created by Mark 2 and Mark 3 of the Opponent. I consider the subject mark dissimilar to these marks when the marks are considered in their entirety.
22
Opponent’s Mark 4 Subject Mark
64. In respect of the comparison between Mark 4 “MONSTER ENERGY” and the subject mark, “MONSTER ENERGY” is similar to the subject mark to the extent that both contain the element “MONSTER”. Taking into account the position of the words and the outward appearance including the style, visual effect, the visual similarity between the two marks is low. “MONSTER ENERGY” and “MAMEE MONSTER SNEK MI” are pronounced differently especially when the words “ENERGY” and “MAMEE” are unlikely to be omitted in speech. They are similar to a low degree aurally. Conceptually, MONSTER ENERGY (“having the energy of a monster” or “a large volume of energy”) and MAMEE MONSTER (“a mother monster”, “a monster named MAMEE”) are dissimilar or of low similarity. Having regard to the visual, aural and conceptual similarities and differences between the subject mark and Mark 4 and the effect of imperfect recollection of marks, I find that the overall impression created by the subject mark is different from that created by Mark 4. I consider the subject mark dissimilar to Mark 4 when the marks are considered in their entirety.
65. It is noted that Mr. Wong referred to a UK opposition decision (re footnote 2 above) between the same parties, in which a decision in favour of the Opponent in part was given. Suffice it to say that decisions in other jurisdictions (including the said UK decision referred to) are persuasive and not binding on the Registrar. Each decision had its own set of circumstances, e.g. different marks involved, different evidence etc. as distinct from the present one, for consideration in reaching the conclusions of individual cases. The Registrar will assess each case on its own merits and form his/ her own judgment independently based on the facts and circumstances of the particular case.
Comparison of Goods
66. In assessing the similarity of the goods and services concerned, the following factors set out by Jacob J (as he then was) in British Sugar Plc v James Robertson and Sons Ltd [1996] R.P.C. 281 (at pages 296-7) should be taken into account: (a) The respective uses of the respective goods or services;
23 (b) The respective users of the respective goods or services; (c) The physical nature of the goods or acts of services; (d) The respective trade channels through which the goods or services reach the market; (e) In the case of self-service consumer items, where in practice they are respectively found or likely to be found in supermarkets and in particular whether they are, or are likely to be, found on the same or different shelves; and (f) The extent to which the respective goods or services are competitive. This inquiry may take into account how those in trade classify goods, for instance whether market research companies, who of course act for industry, put the goods or services in the same or different sectors.
67. It was also held in Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc. [1999] E.T.M.R. 1 (at paragraph 23) that when comparing the similarity of the goods or services in question, all the relevant factors relating to the goods or services, including but not limited to their nature, their end users, their method of use and whether they are in competition with each other or are complementary, should be taken into account.
68. In Gérard Meric v Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM) Case T-133/05, at paragraph 29 the General Court said:
“In addition, the goods can be considered as identical when the goods designated by the earlier mark are included in a more general category, designated by the trade mark application (Case T-388/00 Institut für Lernsysteme v OHIM – Educational Services (ELS) [2002] ECR II-4301, paragraph 53) or when the goods designated by the trade mark application are included in a more general category designated by the earlier mark (Case T-104/01 Oberhauser v OHIM – Petit Liberto (Fifties) [2002] ECR II-4359, paragraphs 32 and 33; Case T-110/01 Vedial v OHIM – France Distribution (HUBERT) [2002] ECR II-5275,paragraphs 43 and 44; and Case T-10/03 Koubi v OHIM – Flabesa (CONFORFLEX) [2004] ECR II-719, paragraphs 41 and 42.”
69. In paragraph 29 of the Skeleton Submissions of the Opponent, Mr. Wong submitted that the subject goods are either identical or similar to the registered goods covered by the Opponent’s HK Registered Marks.
70. I find that the subject goods under Class 29 are either identical or similar to the goods registered under Class 29 of Mark 1 and Class 32 of Marks 2, 3, and 4. They are set out in the following table:
24
Subject Goods Goods covered by the Opponent’s HK Registered Marks Class 29 Mark1 Class 29 Cheese, Flavoured milk beverage with the milk and milk products; beverages made from, based milk predominating; Milk shake; Milk on or containing yoghurt or milk shake with fruit drops (“Group A Goods”) Mark 2 Class 32 Non-alcoholic beverages Mark 3 Class 32 Non-alcoholic beverages Mark 4 Class 32 beverages in international Class 32 Mark 1 Class 29 Snack foods and proteinaceous substances Meat, fish, poultry and game, meat extracts for human consumption included in Class 29; Potato crisps, potato chiplets, potato puffs Preserved, frozen, dried and cooked fruits and and snack products of potato based; potato vegetables chips, Mixtures of processed or prepared nuts and dried fruits, raisins and other dried or processed fruits; Roasted or processed nuts and fresh nuts prepared ready for human consumption; pickles Roasted or baked meat; Fish and seafood, Meat, fish, poultry and game; meat extracts poultry, game; Jellies and jam Jellies, jams (“Group B Goods”)
71. The Opponent’s Mark 1 is registered, inter alia, in respect of “milk and milk products; beverages made from, based on or containing yoghurt or milk” under Class 29 and Marks 2 to 4 are all registered in respect of Class 32 (“non-alcoholic beverages” or “beverages”) (see Annex 1). The subject good “cheese” is highly similar to “milk and milk products” registered in Class 29 under Mark 1 of the Opponent given that cheese is a product made from milk and are likely to be produced by the same manufacturers. Cheese is often sold side by side with milk and other milk products in the supermarket. Moreover, I agree with Mr. Wong that the subject goods “flavoured milk beverage with the milk predominating; Milk shake; Milk shake with fruit drops” under Class 29 can be included in a more general category
25 of “milk and milk products; beverages made from, based on or containing yoghurt or milk” registered under Class 29 of Mark 1 and “Non-alcoholic beverages” under Class 32 of Marks 2 to 4. These goods can be considered identical adopting the principle in the Gérard Meric case. All the aforesaid subject goods are referred to as “Group A Goods”.
72. I also find “Snack foods and proteinaceous substances for human consumption included in Class 29; Potato crisps, potato chiplets, potato puffs and snack products of potato based; potato chips, Mixtures of processed or prepared nuts and dried fruits, raisins and other dried or processed fruits; Roasted or processed nuts and fresh nuts prepared ready for human consumption; Roasted or baked meat; Fish and seafood, poultry, game and pickles; Jellies and jam” (“Group B Goods”) of the subject goods are identical or similar to “Meat, fish, poultry and game, meat extracts; Preserved, frozen, dried and cooked fruits and vegetables; Jellies, jams” registered under Class 29 of Mark 1 in view of the nature, use and users. However, Group B Goods are found to be dissimilar to the milk beverages or non-alcoholic beverages registered under the Opponent’s HK Registered Marks given they have a different nature and purpose. These goods normally are not manufactured by the same types of undertakings. They also do not have the same method of use and are not complementary or in competition. They are dissimilar.
Likelihood of confusion
73. The likelihood of confusion must be appreciated globally, taking into account all relevant factors which have a degree of interdependency. The matter must be judged through the eyes of the average consumer of the goods who is deemed to be reasonably well-informed and reasonably observant and circumspect. In this case, the relevant consumers for the subject goods are members of the general public who would exercise an average level of care and attention when purchasing these goods. Moreover, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa.
74. Applying the relevant legal principles and as analysed in paragraphs 61 to 64 above, I found the subject mark to be dissimilar on the whole to Mark 1, Mark 2, Mark 3 and Mark 4 after comparing their visual, aural and conceptual similarities and differences. I have also considered the inherent distinctiveness of Marks 1 to 4 which range from an average to medium degree. Apart from Mark 4 MONSTER ENERGY, which has enhanced distinctiveness through use, the distinctiveness of Mark 1, Mark 2 and Mark 3 has not been enhanced. On the other hand, the registered goods under Classes 29 and/ or Class 32
26 covered by the Marks 1 to 4, and the subject goods are either identical or similar. Taking into account the combined effect of all of the aforesaid, I consider that despite the distinctiveness of Mark 1, Mark 2, Mark 3 and Mark 4, given the overall dissimilarity between the subject mark and Marks 1 to 4, when the subject mark is used in relation to those of Group A Goods or Group B goods which are identical or similar to the Opponent’s registered goods under Marks 1 to 4, the average consumer would be able to distinguish the marks and would not be confused into thinking that the subject goods and the Opponent’s registered goods come from the same or economically-linked undertakings.
75. The opposition under section 12(3) fails.
Opposition under section 12(5)(a) of the Ordinance
76. Section 12(5)(a) of the Ordinance provides, inter alia, as follows:
“(5) … a trade mark shall not be registered if, or to the extent that, its use in Hong Kong is liable to be prevented – (a) by virtue of any rule of law protecting an unregistered trade mark or other sign used in the course of trade or business (in particular, by virtue of the law of passing off); … (b)…
and a person thus entitled to prevent the use of a trade mark is referred to in this Ordinance as the owner of an “earlier right” in relation to the trade mark.”
77. In the Statement of Grounds, the Opponent claims that:
“13. The [subject mark] is similar to the Opponent’s Marks. 14. The [subject goods] overlap with or are similar to the Opponent’s goods. 15. Use of the [subject mark] in connection with the [subject goods] is likely to deceive or cause the public to be confused into thinking that the [subject goods] originate from or are associated with the Opponent… … 17. The use of the Opponent’s Marks predated [the subject application]. The Applicant is hence not entitled to claim any rights over and to the [subject mark]. Any use or registration by the Applicant of the [subject mark] would jeopardize the Opponent’s reputation and goodwill in the Opponent’s Marks and encroach upon its registered
27 and unregistered trade mark rights in the Opponent’s Marks. 18. By reason of the foregoing: … (d) Registration of the [subject mark] offends against Section 12(5)(a) of the Ordinance”.
78. The requisite elements for establishing a passing-off action were formulated in the case of Reckitt & Colman Products v. Borden Inc. [1990] R.P.C. 341. These elements have been repeatedly relied upon by the courts in Hong Kong including the Court of Final Appeal in Re Ping An Securities Ltd. (2009) 12 HKCFAR 808 (FACV 26/2008). In essence, in the present context, the Opponent has to establish that:
(a) As of the Relevant Date, the Opponent enjoys goodwill attached to the goods which it supplies in the mind of the purchasing public by association with a trade mark under which its goods are offered to the public, such that the trade mark is recognized by the public as distinctive specifically of the Opponent’s goods; (b) the Applicant has made a misrepresentation to the public leading or likely to lead the public to believe that the subject goods offered by it are the goods of the Opponent; and (c) the Opponent suffers, or is likely to suffer, damage by reason of the erroneous belief engendered by the Applicant’s misrepresentation that the source of the Applicant’s subject goods is the same as the source of goods offered by the Opponent.
79. To establish a likelihood of deception or confusion in an action for passing off where there has been no direct misrepresentation generally requires the presence of two factual elements:
(a) that a name, mark or other distinctive feature used by the plaintiff has acquired a reputation among a relevant class of persons; and (b) that members of that class will mistakenly infer from the defendant's use of a name, mark or other feature which is the same or sufficiently similar that the defendant's goods or business are from the same source or are connected.
80. In arriving at the conclusion of fact as to whether deception or confusion is likely, the court will have regard to:
(a) the nature and extent of the reputation relied upon; (b) the closeness or otherwise of the respective fields of activity in which the plaintiff
28 and the defendant carry on business; (c) the similarity of the mark, name etc. used by the defendant to that of the plaintiff; (d) the manner in which the defendant makes use of the name, mark etc. complained of and collateral factors; and (e) the manner in which the particular trade is carried on, the class of persons who it is alleged is likely to be deceived and all other surrounding circumstances.15
Goodwill
81. Mr. Wong submitted that the Opponent would rely on the goodwill associated with the plain word marks “MONSTER” and “MONSTER ENERGY” or alternatively he will rely
on MONSTER ENERGY Composite Mark / in case I do not
find goodwill in the aforesaid plain word marks in relation to beverages (in particular energy drinks), apparel, bags and other merchandise. I have considered the Opponent’s evidence of use and analysed the same at paragraphs 11 to 22 and 32 to 40. It is noted that there was limited use of the plain words “MONSTER ENERGY” in Hong Kong and in most instances, the Opponent’s products are identified by either the MONSTER ENERGY Composite Mark and/or the Claw Mark and seldom “MONSTER” alone. I am satisfied that as at the Relevant Date, the Opponent has a certain degree of goodwill in Hong Kong in relation to the Opponent’s energy drinks, which is known to the public by association with the use of the MONSTER ENERGY Composite Mark, and “MONSTER ENERGY”. Apart from the aforesaid, I do not consider goodwill has been acquired in association with any other Opponent’s Marks in Hong Kong.
Misrepresentation and damage
82. Mr. Wong submitted that in light of the close similarity between the marks (which are dominated by the word and concept of MONSTER), and the identity or similarity in respect of some of the goods, it is likely that the relevant public will be deceived into thinking that the goods bearing the subject mark come from the Opponent or are approved or licensed by the Opponent.16
15 Halsbury's Laws of Hong Kong (2nd Edition) Vol. 33, para. 225.021 16 Paragraph 37 of the Skeleton Submissions of the Opponent
29 83. In respect of the Opponent’s MONSTER ENERGY Composite Mark, visually, it consists of (i) the Claw Mark, (ii) the stylized word “ ”, with a vertical spike piecing through the letter “O”; and (iii) the word “ ” in plain block letters. The sizable Claw Mark occupies a prominent position and has significant impact in the overall visual impression of the mark. As the word “ENERGY” is in smaller font size and is placed underneath the word “MONSTER”, the stylized element MONSTER is more prominent than the word “ENERGY”. The subject mark, on the other hand, consists of the word “MAMEE” being highlighted in a hexagonal device, the word “MONSTER” stylized in 3D form with shading and the presence of the words “SNEK MI”, which does not bear any particular meaning. Despite the fact that the MONSTER ENERGY Composite Mark and the subject mark share the same word “MONSTER”, the overall visual impression created by MONSTER ENERGY Composite Mark and that created by the subject mark are only similar to a very low degree. Aurally, the MONSTER ENERGY Composite Mark would be pronounced as /mɒn.stər-en.ə.dʒi/ and “MAMEE MONSTER SNEK MI” /mami:-mɒn.stər-snek-mi/. They are pronounced differently. The two marks are aurally similar also to a very low degree. Conceptually, the word “MONSTER” is the more dominant element in MONSTER ENERGY Composite Mark in view of its position and size. The Claw Mark with its rugged appearance reinforces the idea of “MONSTER”. The key concept of the MONSTER ENERGY Composite Mark would be perceived to be a “Monster” with “energy” or “a large amount of energy”. As for the subject mark, I repeat my earlier observation on the concept or perception for “MAMEE MONSTER” (i.e. “a monster named MAMEE”, “mother monster”). Overall, conceptually the subject mark and MONSTER ENERGY Composite Mark are dissimilar or of a low similarity. Having regard to the similarities and differences between the subject mark and MONSTER ENERGY Composite Mark and the overall impression created by each of them, I find that the two marks are dissimilar.
84. As for the comparison of the subject mark with the plain word mark “MONSTER ENERGY”, I have already set out my findings in paragraph 64 above in which I find that the two marks are dissimilar on the whole.
85. I have found that the Opponent enjoys some goodwill in Hong Kong at the Relevant Date in the field of energy drinks which is associated with the MONSTER ENERGY Composite Mark and/or MONSTER ENERGY. In view of my analysis of the evidence of use of the Opponent, I find such goodwill to be confined to the rather narrow field of energy drinks.
30 86. The subject goods are related to food stuff and milk beverages. The milk beverages of the subject goods are similar to energy drinks of the Opponent in the sense that they were both beverages while the subject food items are different from energy drinks of the Opponent in terms of nature and use. As the manufacturers/ suppliers of foodstuff item are not likely the same as that of energy drinks, hence the Applicant’s field of activity would overlap only to some degree with that of the Opponent.
87. On the other hand, I have already found that the overall impression created by the subject mark is different from that created by Opponent’s MONSTER ENERGY Composite Mark and plain word mark MONSTER ENERGY (Mark 4). Despite the fact that there is a certain degree of overlap of the respective fields of activity of the Opponent and the Applicant, given the dissimilarity between the subject mark and the Opponent’s MONSTER ENERGY Composite Mark/ MONSTER ENERGY plain word mark, on seeing the subject mark used in relation to the subject goods, even assuming the imperfect recollection of the marks, the public would unlikely be misled into believing that the subject goods offered by the Applicant are of the same origin as the Opponent’s goods or are connected to the Opponent. The element of misrepresentation is not made out. As such, there is no question of any damage resulting from a misrepresentation.
88. As the elements of misrepresentation and damage for establishing a case under section 12(5)(a) are not proved, the opposition under section 12(5)(a) must fail.
Opposition under section 12(4) of the Ordinance
89. Section 12(4) of the Ordinance provides, inter alia, as follows:
“… a trade mark which is– (a) identical or similar to an earlier trade mark; and (b) proposed to be registered for goods or services which are not identical or similar to those for which the earlier trade mark is protected, shall not be registered if, or to the extent that, the earlier trade mark is entitled to protection under the Paris Convention as a well-known trade mark and the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.”
90. In the Statement of Grounds, the Opponent claims that: “…
31 10…The Opponent’s Marks are well known trade marks entitled to protection under the Paris Convention… … 13. The [subject mark] is similar to the Opponent’s Marks. … 16. Use of the [subject mark] is without due cause and takes unfair advantage of, or is detrimental to, the distinctive character or repute of the Opponent’s Marks. … 18. By reason of the foregoing: … (c) Registration of the [subject mark] offends against Section 12(4) of the Ordinance”.
91. To succeed under section 12(4) of the Ordinance, the Opponent has to establish that:
(a) at the Relevant Date, the Opponent’s trade mark is an earlier trade mark which is entitled to protection under the Paris Convention as a well-known trade mark; (b) the subject mark is identical or similar to an earlier trade mark of the Opponent; and (c) the use of the subject mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.
92. Mr. Wong submitted that the Opponent’s marks i.e. (i) the “MONSTER” and “MONSTER ENERGY” or in the alternative, the MONSTER ENERGY Composite Mark enjoy well-known status as of the Relevant Date. At the hearing, he added that the Applicant has in its Counter-statement admitted that the Opponent “is a well-known seller of beverages”; (ii) the Opponent’s marks are closely similar to the subject mark such that the average consumer will likely find a “link” between the two marks; and (iii) by adopting and using the subject mark, the public will be more easily attracted to the Applicant’s goods or services, thus enabling the Applicant to gain an unfair advantage of and misappropriate the cachet attached to the repute of the Opponent’s marks.17 Accordingly, the Opponent considers that the subject mark should be refused registration under section 12(4) of the Ordinance.
93. With regard to Mr. Wong’s submission that the Applicant had admitted that the Opponent is a well-known seller of beverages, to be fair, I do not think it is tantamount to an admission that the Opponent’s Marks are well known under the Ordinance.
17 Paragraphs 46 to 48 of the Skeleton Submissions of the Opponent
32 Whether the Opponent’s Marks are well-known should be examined by reference to the evidence filed and the criteria as set out under section 1 of Schedule 2 of the Ordinance, which I have proceeded to do so (re paragraphs 11 to 22 and 32 to 40 above). As in my earlier assessment at paragraph 41, I have found that neither the plain word mark “MONSTER” (Mark 5), the MONSTER ENERGY Composite Mark, nor any of the Opponent’s Marks has become well-known in Hong Kong at or before the Relevant Date.
94. The requirements under paragraph 91(a) to (c) above are cumulative. Each of those requirements must be established before a claim under section 12(4) of the Ordinance is made out. Since the Opponent has failed to establish the requirement referred to under paragraphs 91(a) above, the opposition under section 12(4) of the Ordinance must fail.
Conclusion
95. The opposition against the subject application fails as none of the Opponent’s grounds of opposition has been made out.
Costs
96. As the opposition has failed, I award the Applicant costs. At paragraph 6 of the Skeleton Submissions of the Opponent, Mr. Wong submitted that the filing of Pang’s SD serves no useful purpose and the Opponent invites the Registrar to disallow the costs in respect of Pang’s SD, irrespective of the outcome of the proceedings. It is noted that despite not having been argued or relied upon at the hearing, it is pleaded in paragraph 18(a) of the Statement of Grounds that “the [subject mark] is not a trade mark within the meaning of Section 3 of the Ordinance…(e) registration of the [subject mark] should be refused by the Registrar in the exercise of the Registrar’s general discretionary powers.” Moreover, the Opponent accuses the Applicant that “use of the [subject mark] is without due cause and takes unfair advantage of, or is detrimental to, the distinctive character or repute of the Opponent’s Marks.” Rule 19 of the Trade Marks Rules (Cap.559A) provides that “If the opponent files evidence within the period specified in rule 18(1),…the applicant shall file (a) evidence in support of his application; or (b) a statement to the effect that he does not intend to file evidence.” Although few exhibits to Pang’s SD are related to use of the subject mark, the contents
33 of Pang’s SD cannot be regarded as irrelevant in responding to the allegations of the Opponent made in the Statement of Grounds and the Applicant is entitled to file evidence to defend. Having considered all the circumstances, there are not sufficient grounds such that the Applicant should be deprived altogether of its costs in respect of Pang’s SD.
97. Subject to any representations, as to the amount of costs or calling for special treatment, which either party may make within one month from the date of this decision, costs will be calculated with reference to the usual scale in Part I of the First Schedule to Order 62 of the Rules of the High Court (Cap. 4A) as applied to trade mark matters, unless otherwise agreed between the parties.
(Winnie WH Ng) for Registrar of Trade Marks 31 May 2021
34 Annex 1
The Opponent’s Marks 1 to 5
Registration Mark Date of Specification No. Registration Mark 1 304373208 19-12-2017 Class 29
Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; beverages made from, based on or containing yoghurt or milk. Class 30 Coffee, tea, cocoa and artificial coffee; coffee-based beverages; tea-based beverages; chocolate based beverages; rice; tapioca and sago; preparations made from cereals; bread, pastry and confectionery; edible ices; honey. *Class 43 Restaurant services; bar services. Mark 2 304191714 30-6-2017 Class 30 Coffee, tea, cocoa and artificial coffee; coffee-based beverages; tea-based beverages; chocolate-based beverages; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice. Class 32 Non-alcoholic beverages; beer. Mark 3 303825162 2-7-2016 Class 32 Non-alcoholic beverages; beer. Mark 4 300577684 8-2-2006 *Class 5 nutritional supplements in international Class 5. Class 32
35 beverages in international Class 32. Mark 5 ^303890674 #1-9-2016 Class 32 Non-alcoholic beverages; beer.
* Classes of goods/ services not relied upon by Mr. Wong in his Skeleton Submissions # Date of application for registration ^ Application No.
36