A monstrous result for Monster Energy

Mr Robert Marchington applied to register the M device (above right) in the UK for alcoholic drinks but excluding energy drinks.

Monster Energy Company, owner of the well-known MONSTER energy drink, opposed this application based on its registered M device (above left) and associated reputation for its energy drinks:

Monster's strongest registration relied on (as depicted above left) was over five years old and therefore subject to use. Monster had only used the M device on energy drinks.

The Hearing Officer found that the broader 'beverages' in the registration could not be relied upon given that use had been confined to energy drinks specifically.

The Hearing Officer also found that the M marks were conceptually different and visually barely similar (the one being two pairs of walking legs, the other bearing the appearance of scratches from an animal). However, he conceded that the marks would be pronounced in exactly the same way.

The verbal identity, however, was insufficient to overcome the visual and conceptual differences. He considered that the products would be selected visually and that consumers therefore would not confuse or associate the two marks.

This contrasts with previous cases which have found that drinks are often ordered verbally without even seeing the packaging, for example in a bar or restaurant.

The Hearing Officer found the visual and conceptual differences were striking enough that, even though Monster had demonstrated a reputation for its M device, this still would not lead to a mental link being created between the two marks, and therefore the ground of free-riding and dilution also failed. This would have been the case, it was said, even if the goods were identical.

Had the Hearing Officer followed previous case law with regard to the verbal selection of alcoholic drinks, Monster may have won this opposition.

The way in which Monster's product is actually ordered in real life – almost certainly by reference not to 'M' but to the word 'Monster', would have no bearing on this test.

The decision may yet be appealed.

Case Ref: O/126/19