Intellectual Property Office of Singapore Case Summary: Monster Energy Company v NBA
Properties, Inc. [2018] SGIPOS 16Source: https://www.ipos.gov.sg/protect-ip/hearings-mediation/legal-decisions
Published: 12 September 2018
Monster Energy Company (“the Opponent”) is the owner of various trade marks registered in Singapore, where it has
sold energy drinks under the “MONSTER” and “MONSTER ENERGY” brands since 2012. Two of the Opponent’s
Singapore trade marks include a Claw Device Mark and a Composite Mark, which have been registered in respect of awide range of goods (including sunglasses, printed matter and clothing) in addition to beverages. The Opponent
opposed the registration of a trade mark by NBA Properties Inc (“the Applicant”), the marketing and licensing arm of theNational Basketball Association (NBA) which operates a North American men’s professional basketball league. The
Applicant had sought to register a composite mark comprising a graphical device encircled with the words “TORONTORAPTORS” (“the Application Mark”), the team name of one of the members of the NBA basketball league.

Applicant’s
Application Mark

Opponent’s (Earlier)
Claw Device Mark

Opponent’s (Earlier)Composite MarkThe Opponent objected to the registration of the Application Mark on a number of different statutory grounds: (1) Section
8(2)(b) – that the Application Mark was similar to the Opponent’s trade marks, in respect of similar or identical goods orservices, the result of which was a likelihood of consumer confusion; (2) Sections 8(4)(b)(i) and 8(4)(b)(ii) – that theApplication Mark was similar to the Opponent’s trade marks, which were allegedly “well known in Singapore” or “wellknown to the public at large in Singapore”, such as to either damage the interests of the Opponent by indicating aconnection between the Applicant’s goods or services and the Opponent, dilute the distinctive character of theOpponent’s trade marks in an unfair manner or take unfair advantage of the distinctive character of the Opponent’s
trade marks; and (3) Section 8(7)(a) – that the use of the Application Mark was liable to be prevented in Singapore by
the tort of passing off. All of these grounds of opposition hinged on a finding of “similarity” between the Application Markand the Opponent’s earlier trade marks.
The IP Adjudicator found that the Application Mark and the Opponent’s earlier trade marks were dissimilar, both visuallyand conceptually, such that none of these grounds of opposition could be sustained. The Opponent’s Claw Device
Mark depicted a menacing three-pronged jagged scar produced by an unidentified feral creature, while the graphicaldevice in the Application Mark depicted a three-pronged claw (presumably the claw of a velociraptor) clutching abasketball. In the IP Adjudicator’s view, a mere similarity in the subject matter of the competing marks (i.e. the threepronged claw-shaped devices with jagged edges) was not sufficient to establish visual similarity for the purposes ofopposing the registration of a trade mark. The IP Adjudicator also made general observations about how the knowledgeof the average consumer and evidence of consumer awareness of the meaning of the words incorporated into a trade
mark ought to be relevant to the mark-similarity analysis in trade mark opposition proceedings. Applying a contextual
approach towards evaluating what the average consumer might see when looking at the trade mark, or how he is likely
to understand or interpret its components, the IP Adjudicator took the view that adopting the average consumer’s
perspective in assessing whether or not the Application Mark was similar to the Opponent’s earlier trade marks made it
appropriate to take into consideration those surrounding circumstances that are relevant towards establishing thegeneral knowledge possessed by the average consumer.
The opposition proceedings brought by the Opponent were therefore unsuccessful.

1Disclaimer: The above is provided to assist in the understanding of the Registrar's grounds of decision. It is notintended to be a substitute for the reasons of the Registrar. The full grounds of decision can be found athttps://www.ipos.gov.sg/docs/default-source/resources-library/hearings-and-mediation/legal-decisions/2018/monsterenergy-v-nba-properties-2018-sgipos-16.pdf?sfvrsn=0.

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