b-monster’s attempt to register “Boxing b-monster FITNESS STUDIO” is denied due to similarity with “Monster Energy”

On August 19, 2019, b-monster Co. Ltd. (“b-monster”), a gym studio that features “dark boxing” fitness exercise, filed trademark application for “Boxing b-monster FITNESS STUDIO” (Application No. 108054348, see below), intended for use in nutritional supplements under Class 5, such as protein powder, vitamin supplements, enzyme nutritional supplement, etc. 

 

However, b-monster’s application was denied by Taiwan’s IP Office (“TIPO”) on February 9, 2021, because b-monster’s mark is considered similar with Monster Energy’s registered trademarks (Reg. No. 01242825, 01497954, 01713838, and 01497953, see below). 

 

In its determination, TIPO was of the view that:

 

1.     Although there are other decorative drawings presented in b-monster’s mark, TIPO found general consumers, upon seeing such mark, would still focus on “monster”, which is similar with Monster Energy’s aforesaid registered trademarks. Hence, the combination of other elements in b-monster’s mark is insufficient to overcome the impression that “monster” constitutes the main portion of b-monster’s mark. As a result, b-monster’s mark is considered visually and conceptually similar with Monster Energy’s registered trademarks.

 

2.     Monster Energy’s cited trademarks are also applied for use in the same class, covering products like nutritional supplement, meal replacement nutritional supplement, and liquid nutritional supplement. These products serve similar purpose and perform the same function for supplementing nutrition. Thus, TIPO considered b-monster’s mark was applied for use in similar goods. 

 

3.     Further, TIPO noted that in this case, when used as a trademark, “monster” does not relate to the nature, quality, or function of the designated nutritional products. Therefore, TIPO concluded that Monster Energy’s registered trademarks are distinctive, and consumers may use “monster” to identify the source of the provided goods or services. 

 

Since the main distinctive portion of b-monster’s mark is “monster”, and is similar with Monster Energy’s registered trademarks, which are also applied for use in similar goods, TIPO determined that b-monster’s application shall be denied in accordance with Article 30.1.10 of Trademark Law, because the similarity may cause confusion among the relevant public.

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4K0xESWUxcVl0TzB6dGhkVnFkUE43QT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true