Monster Energy’s trademark opposition for its M claw design fell short

On August 29, 2023, Monster Energy Company (“MEC”) filed trademark opposition against trademark No. 02299405 (the ‘405 trademark), contending that ‘405 trademark should be canceled because of the similarity with MEC’s iconic M claw design trademark (No. 01713839, see below).

 

The contested trademark, i.e., ‘405 trademark (see below), was filed by Yi-Shen International Corp. (“Yi-Shen”) on August 19, 2022, and granted on June 1, 2023, designated for use in services under Class 43, including restaurant, foods, and beverages services. MEC’s opposition is mainly based on Articles 30.1.10 and 30.1.11 of Trademark Act.

 

On November 8, 2024, Taiwan’s IP Office (“TIPO”) ruled in Yi-Shen’s favor, reasoning that:

1.      The Trademark Act provides that a mark shall not be registered if such a mark is “being identical with or similar to another person’s registered trademark or earlier filed trademark and to be applied for goods or services identical with or similar to those for which the registered trademark is protected or the earlier filed trademark is designated, and hence there exists a likelihood of confusion on relevant consumer” (Article 30.1.10), or “being identical with or similar to another person’s well-known trademark or mark, and hence there exists a likelihood of confusion on the relevant public or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark or mark” (Article 30.1.11).

2.      The ‘405 trademark consisted of Chinese characters “川常獨要” and three flaming red stripes. Although MEC’s M claw trademark also features three irregular stripes, the visual appearance is similar to the letter “M”, which is visually different from the ‘405 trademark. As such, the similarity between MEC’s M claw design and Yi-Shen’s ‘405 trademark is low.

3.      The designated products of MEC’s M claw trademark cover various kinds of drinks and beverages, like tea, milk, and alcohol. These products may be sold and supplied via the services designated by Yi-Shen’s ‘405 trademark. Thus, the products covered by MEC’s trademark is associated with or related to the services covered by Yi-Shen’s ‘405 trademark.

4.      Further, Yi-Shen’s ‘405 trademark possesses sufficient distinctiveness, which could be recognized by the consumers and distinguishable from MEC’s M claw trademark.

5.      Although MEC contented that its M claw trademark is famous and may be diluted by the registration of Yi-Shen’s ‘405 trademark, the evidence submitted by MEC was unable to back the alleged well-known status. TIPO found the sales records and news reports provided by MEC, such as marketing materials and invoices, insufficient to show the market share of the branded products, and fail to demonstrate the M claw trademark is actually perceived and well-regarded among the relevant consumers.

6.      In view of the above, given the lack of similarity, the lack of evidence showing the well-known status of the M claw trademark, and the lack of actual confusion or harm to MEC’s reputation, TIPO found the registration of Yi-Shen’s ‘405 trademark does not violate Article 30.1.10 and 30.1.11 Trademark Act.

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4OTdldlYvYVl5S3VmVnJzY0V2MHFnZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true