Regular readers know that we like to write about trade mark similarity and likelihood of confusion cases from around the world. In this article, we continue our love affair with virtual globe-trotting and discuss a case in Japan as well as one in the EU.
Japan: The Monster case
The case that we're discussing, Monster Energy v Pocket Monsters (aka Nintendo), was a trade mark opposition.
*Image credit: Wikimedia Commons
The facts
In 2022, Nintendo filed an application in Japan to register the trade mark POCKET MONSTERS in a wide range of classes, namely 3, 9, 14, 16, 18, 20, 21, 24, 25, 28, 30 and 41. For the benefit of those who do not live and breathe trade marks, this basically means that Nintendo was seeking to protect its trade mark for a very wide range of goods and services, including electronic goods, sporting goods, clothing and entertainment services.
The application to register POCKET MONSTERS was opposed by Monster Energy. It opposed registration of the trade mark for various goods such as tea-based beverages, coffee beverages and cocoa. It relied on Articles 4(1)(vii) and (xv) of the Japan Trademark Law and made reference to its earlier trade marks MONSTER ENERGY and MONSTER in class 32.
Monster Energy made a number of points, including:
- Its trade mark is famous and-well known to consumers, indicating energy drinks.
- Consumers would associate the opposed trade mark with Monster Energy.
- There would be consumer confusion.
The JPO decides
The JPO made the following findings:
- There was a high degree of recognition of MONSTER ENERGY for energy drinks.
- The trade marks MONSTER ENERGY and POCKET MONSTERS are distinguishable – the JPO said that the 'difference of the words ENERGY and POCKET has a material effect on overall visual and aural impression to the extent that consumers can easily distinguish'.
- There was little likelihood of conceptual confusion, meaning that the trade marks are dissimilar.
- The opposed trade mark, POCKET MONSTERS, should not be cancelled.
A nice, no-fuss decision – just the way we like it!
Eu: The Rat Pac case
General Court
Ratpac Entertainment applied to register RATPAC as an EU trade mark in class 36, the financial services class. A company with a similar name, Rat Pack Filmproduktion, opposed the registration of the trade mark based on its registration for RAT PACK in class 41, the class that covers, inter alia, entertainment and film production. So, would there be consumer confusion?
The General Court made the following findings:
- Distinct services: The services offered by the two parties are quite clearly distinct. The Court was pretty thorough on this issue. It said that one service is a serious one (financial services), whereas the other is all about fun (entertainment). One service is all about funding, whereas the other is all about entertainment. One service is about investors, the other is all about producers.
- Confusion: The case concerned one simple issue - was there a likelihood of confusion between the trade marks?
- Not complementary: The services are not complementary. Financial services, we're told, cater for 'third party clients', whereas film production is all about funding your own projects. The public would not believe that these were services offered by the same company.
- German consumers: In this case the German public was all-important as the opposition was based on a German trade mark.
- EU law: In a case like this it's all about EU law, and national court decisions are of little or no relevance.
- Consumer confusion: There was no likelihood of confusion.
The General Court upheld the decision of the Board of Appeal, thus dismissing the opposition.
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