According to the Beijing Court Trial Information Network, Monster Energy, which owns Magic Claw Drink, has lost a trademark similarity dispute case with the State Intellectual Property Office over the "GENTLE MONSTER" glasses brand of Korea Aikang Bynd Co., Ltd.

The second instance of the Beijing Higher People's Court still found that the GENTLE MONSTER used on sunglasses and other commodities did not constitute a similarity to the Monster Energy trademark used on beverages and other commodities, and finally rejected the appeal of Monster Energy.

According to the disclosure of the second-instance judgment issued by the Beijing Higher People's Court at the end of August this year, the trademark in dispute is the trademark No. 11022899 filed by IICOMBINED CO. LTD., in June 2012, which is composed of English GENTLE MONSTER. The categories used are nine categories including eyeglass frames; sunglasses; eyeglass cases; eyeglass cleaning cloth; sports goggles; contact lenses; contact lens cases; swimming goggles; eyeglass lenses, etc.

The cited trademarks include the trademarks G1048069, 5397978, and 5449961 filed by Monster Energy since 2006. Approved commodities include mineral water in Class 32; soft drinks; non-alcoholic beverages; energy drinks; isotonic drinks (non-incorporated drugs); fruit juice drinks; fruit juices; syrups for making beverages, etc., as well as Class 9 sports helmets etc.

The original Trademark Review and Adjudication Board ruled that both the disputed trademark and the cited trademark contained the distinguishing words "MONSTER", which could easily lead to confusion and misidentification on similar products. The disputed trademark "GENTLE MONSTER" used in sports goggles and swimming goggles declared invalid.

However, because it does not constitute a similar product with the Cited Trademark 1 on other commodities such as "spectacle frames", and the evidence in the case is insufficient to prove that the Cited Trademark 2 has become a well-known trademark before the disputed trademark application date; therefore the effectiveness of the trademark used on other commodities are maintained.

But Monster Energy Company refused to accept the ruling and filed an administrative lawsuit with the Beijing Intellectual Property Court.

The Beijing Intellectual Property Court held that the disputed trademark "GENTLE MONSTER" used on commodities including spectacle lenses, and the "Monster Energy" trademark used on sports helmets under the Monster Energy Company are obviously different in functions, uses, production departments, sales channels and consumption. They do not belong to the same category or similar commodities, so the two do not constitute similar trademarks.

At the same time, Beijing Intellectual Property Court also stated that the sales and promotional use evidence provided by Monster Energy Company is insufficient to prove that the latter two cited trademarks have reached the level of well-known trademarks. This dismissed Monster Energy's litigation request.

However, Monster Energy still refused to accept it and appealed to the Beijing Higher Court.

However, the Beijing Higher People's Court mentioned in the Judgment that the Categories of sunglasses and other commodities approved for the use of the disputed trademark "GENTLE MONSTER" and the three categories including mineral water, where cited trademarks belong to, do not constitute similar commodities. The four trademarks involved coexist, and when the relevant public pays general attention, they will not be confused with the source of the goods.

At the same time, the Court of second instance also mentioned that Monster Energy did not provide sufficient evidence on the sales scope, economic indicators, advertising investment, and market rankings of the last two cited trademarks within the reasonable range of the disputed trademark application date. It proved that before the registration of the disputed trademark, the two cited trademarks "Monster Energy" had constituted well-known trademarks.

Therefore, the use of the disputed trademark "GENTLE MONSTER" does not constitute the situation in Article 13 Paragraph 3 of the Trademark Law of 2014. That is to say, the rule does not applicable which is "the trademark applied for registration for the same or similar goods is a well-known trademark that is copied, imitated or translated by others that has not been registered in China, which is likely to cause confusion, shall not be registered and the use shall be prohibited".

The court finally rejected the monster energy company's appeal and upheld the original verdict.

Source: China IP Today