Monster Energy Unable to Tame the Beast
In 2017 NZHC 2393 Monster Energy Company v Ox Group Global Pty Ltd the Judge rejected Monster Energy’s appeal of an Assistant Commissioner’s decision that allowed Ox Groups device mark to proceed to registration...
In 2014 Ox Group applied via the Madrid Protocol to register its device mark in New Zealand in relation to energy drinks and some other non-alcoholic beverages in class 32. The device mark prominently features the word OX above the split phrase UNLEASH THE POWER with the entire mark angled upwards at about 25 degrees. This was opposed by Monster Energy on the basis of their class 32 beverages registration for the phrase UNLEASH THE BEAST!
The Assistant Commissioner had found there to be insufficient visual or phonetic similarity between the two marks and that the weak conceptual similarity was outweighed by the significant visual and phonetic differences. Hence, despite the goods being the same and likely to be purchased by customers in low-involvement transactions, the Assistant Commissioner held there was unlikely to be deception or confusion amongst a substantial number of persons.
In its appeal Monster Energy contended that the Assistant Commissioner should have considered the phrase UNLEASH THE in isolation on the basis that it is an essential feature of their mark that is subsumed within Ox Group’s mark. While the phrase is not the dominant element, they contended that it can still function as a distinctive element that can give rise to a material degree of similarity when subsumed within another mark. However, the Judge reiterated the precedential principle that regard must be had for the mark as a whole and noted that consumers would observe UNLEASH THE as an incomplete phrase. Just as BEAST! is an important element of Monster Energy’s mark, the Judge also held the OX element to be important to evaluating the distinctiveness of Ox Group’s mark. However, the Judge went on to hold that even when stripped of the OX element and device form UNLEASH THE POWER is phonetically and visually dissimilar to UNLEASH THE BEAST.
In regards to conceptual similarity Monster Energy argued that BEAST is a colloquial term for power, and that this conceptual similarity is particularly reinforced by the raw power alluded to by the inclusion of the word OX. However, the Judge considered that the average consumer of the products is unlikely to engage in the process of analysis and approximation that Monster Energy proposes, and that even so any such conceptual similarity would not outweigh the significant visual and phonetic differences.
In earlier High Court proceedings Monster Energy had been allowed to add lack of intention to use the mark as a ground of appeal. The Judge noted that the act of filing creates a presumption of intention to use (if not already in use), but that this can be displaced by evidence showing, on the balance of probabilities, no intention to use the mark on the relevant goods. Monster Energy attempted to infer a lack of intention from Ox Group only distributing drinks bearing the mark UNLEASH THE POWER without the OX mark until November 2016. However, the Judge accepted Ox Group’s evidence that its non-use of the OX mark was intended to be temporary as they preferred to achieve registration before using on account of possible litigation from Red Bull. Hence, Monster Energy was held not to have displaced the presumption that Ox Group intended to use the OX mark they applied for.