Monster Energy Company lost the trademark infringement lawsuit

Monster Energy Company (“Monster Energy”) filed an opposition with Taiwan IPO against the registration of the “Crazy Zebra and device” mark (hereinafter the “mark at issue”) which is owned by a local apparel dealer, Crazy Zebra, and is designated for use on “precious metals and jewelry” under Class 14 and “shirts, suits, and overcoats” under Class 25 of the List of Classes of Goods and Services of the Enforcement Rules of the Trademark Act, based on the ground that the local apparel dealer infringed upon Monster Energy’s famous stylized mark (consisting of a stylized “M” letter and stylized words “MONSTER ENERGY”; hereinafter “Monster Energy’s mark”).  After Taiwan IPO’s examination of Monster Energy’s opposition, Taiwan IPO decided to cancel only the part of the registration of the mark at issue for use on the products under Class 25 but sustained that of the mark at issue for use on the products under Class 14.  Monster Energy further filed an administrative appeal but it turned out unsuccessful, for which Monster Energy further initiated an administrative action with the IP Court. 

Monster Energy said that it has sold 7 billion cans of beverages products around the world since its incorporation in 2002 and that it has successfully registered its trademark in Taiwan.  Monster Energy has been once named as one of the top 10 most liked brands on Facebook and ranked among the Forbes Global’s 200 best small companies for 2006 and 2007.  Moreover, Monster Energy was admitted as the representative company of liquid beverages for 2012.  For Monster Energy, the foregoing facts make it a matter of course that Monster Energy represents a internationally well-known beverage brand and its mark is widely recognized by consumers around the world.  Besides, Monster Energy also makes apparel and sports clothing and pants.  The local dealer’s use of a mark similar to Monster Energy’s mark would make itself suspected of copying without authorization.  Based on the foregoing, Monster Energy requested that Taiwan IPO should cancel the part of the registration of the mark at issue for use on the products under Class 14.

The Taiwan IP Court decided on this case based on the following holding that the designated products for the mark at issue and Monster Energy’s mark, respectively, are different in materials, nature, function, purpose, manufacturer, and distributing channels.  Also, the IP Court negated Monster Energy’s allegation that its mark is well-known in Taiwan because Monster Energy failed to prove its mark well recognized by Taiwanese consumers.  Therefore, the IP Court decided on this case against Monster Energy, but this case is appealable.  (October 2015)
/CCS