On 9 June 2020, the UK IPO issued a decision in the UK trade mark opposition between Monster Energy Company (Monster energy drinks) and Frito-Lay Trading Company GmbH (Monster Munch crisps).
Unfortunately for Frito-Lay, Monster's opposition was successful and an award of cost of £1600 has been issued.
By way of background, Frito-Lay sought to register the mark MONSTER MUNCH in respect of goods in Classes 29 and 30. Monster objected to the application specifically in respect of inter alia "yoghurt; nut-based food bars; cereal based food bars; snack bars...".
The opposition was based on a likelihood of confusion with Monster's earlier registrations in the EU for MONSTER, MONSTER DETOX, MONSTER ENERGY and COFFEE MONSTER in respect of inter alia "dairy based beverages".
During the proceedings both parties provided evidence of use of the respective marks.
The Registrar concluded that whilst Monster had a reputation in energy drinks, they had not demonstrated a reputation in dairy based beverages.
With regard to Monster Munch, although the mark has been used in the UK since 1977 (and I think it is safe to say everyone is aware of the mark in respect of crisps), no evidence was provided to demonstrate use in respect of the contested goods and therefore the mark could not have a high degree of distinctiveness in respect of such contested goods.
When considering the goods at issue, which had also been restricted from that originally filed in the hope of overcoming a conflict, the Registrar found that as 'yoghurt' was a dairy based product that could be provided in beverage form, it was identical to the goods covered by Monster's registrations. With regard to the cereal/snack bars, these were similar but to a low degree given that the products can be said to provide a relatively quick source of energy.
Moving on to the comparison of the marks, MONSTER v MONSTER MUNCH, the Registrar agreed with Monster that the word 'MUNCH' was the least distinctive element of that mark. Particularly when you take into consideration the goods of interest - ie food products which can be 'munched'. Therefore, the marks were similar.
Although the Registrar found that there was no likelihood of direct consumer confusion, there was a risk of indirect consumer confusion as the contested mark may be considered an extension of the Monster brand into yoghurts and snack bars.
Given the distinctive differences between the MONSTER and MONSTER MUNCH branding, I suspect that the risk of genuine confusion would be low. However, the Registrar is not concerned with genuine confusion in practice, but how the marks look on paper.
It will be interesting to see if Frito-Lay appeal the decision and/or proceed with MONSTER MUNCH yoghurts and snack bars despite the trade mark refusal.
In a loss for Frito-Lay, the American subsidiary of PepsiCo, the UK Intellectual Property Office (IPO) has sided with Monster Energy in a trademark opposition