Last year energy drink giant Monster Energy unsuccessfully opposed an application by a pop-up pizzeria to trade mark its name “Monsta Pizza”. See our earlier blog: Monsta Pizza wins TM case against Monster Energy.
Monsta Pizza celebrated its win by posting on twitter on 21 August 2018: “WE Won! HOOZAH! Our name is ours … #pizzaargh!”.
But the fight was not yet over; Monster Energy came back for a second helping and appealed the decision, forcing Monsta Pizza to fend off an attack for the second time.
Monsta v Monster: Round 2
Monster Energy argued that the hearing officer had made several errors in his ruling, including that he had wrongly assessed the similarity between the goods and services and that he had wrongly concluded that there would not be a link between the two in the consumers mind.
Philip Johnson, the appointed person for the IPO, dismissed Monster Energy’s argument that both food and drink provide nourishment and so there must be some similarity. He said “there is no possible way the word ‘Pizza’ would be used to describe energy drinks” and that it would be “extraordinary” if he were to conclude “that beer or other drinks were similar to pizza”. Such a proposition would mean that all foods and drinks are similar.
While there is some aural similarity between the two marks, Johnson said that there is no conceptual similarity between those marks and that the marks are similar only to a low degree at best. He dismissed Monster Energy’s argument that consumers would find a link between the two marks.
The appeal was rejected in its entirety. Monster Energy has been unsuccessful in its attempt to prevent Monsta Pizza using its name. To quote Monsta Pizza’s twitter account:
The monsta beat the monster.
At Briffa, we understand that it can be daunting for those who do not deal with it on a daily basis to face intellectual property challenges. Briffa are experts in all aspects of trade mark law and practice, including all contentious and non-contentious matters. If you would like some advice regarding your trade mark portfolio or dispute, or if you would just like to have a preliminary discussion about a trade mark issue, please do not hesitate to book a free consultation by contacting us on email@example.com or 020 7288 6003.
Written by Charlotte Murphy, Trainee Solicitor