Monster Energy Company v YG Entertainment Inc

Monster Energy Company opposed the extension of protection for two international registrations held by YG Entertainment Inc, namely IR 1518394 (BABYMONSTERS) and IR 1537499 (BABYMONSTER), which sought protection in classes 9, 25, 28, and 41. The opposition was heard by Tracey Berger, Hearing Officer and Delegate of the Registrar of Trade Marks.

The primary legal issue before the Hearing Officer was whether the grounds of opposition raised by Monster Energy Company had been established on the balance of probabilities, considering the relevant priority dates of 12 December 2019 and 3 March 2020. The onus rested on the Opponent to prove these grounds.

The Hearing Officer found that the Opponent had successfully established a ground of opposition under section 44 of the relevant legislation in respect of all the goods and services listed in the international registrations, with the exception of "decorative magnets" in class 9 and "modelling for artists; songwriting" in class 41. The Opponent's extensive evidence demonstrated significant use and recognition of its "MONSTER" trade marks in relation to energy drinks and other beverages, as well as substantial marketing expenditure.

Consequently, the Hearing Officer directed that protection be extended to the international registrations for "decorative magnets" and "modelling for artists; songwriting". In all other respects, protection was refused. The Hearing Officer also awarded costs to the Opponent, with a direction that registration should not occur until any appeal was withdrawn or discontinued.