A monstrous infringement?
Energy drinks and videogames may not, at first glance, seem to be in direct competition.
However, well-known game producer Ubisoft recently faced an objection from Monster Energy, the company behind the Monster Energy drinks. Monster Energy filed an opposition to the new videogame Gods & Monsters on the grounds that it could be confused with the MONSTER ENERGY logo. Monster Energy also invoked the reputation of its trademarks, arguing that Ubisoft would be free-riding on the reputation of the marks, and may even detract from them.
Monster Energy pointed out that it uses the 'Monster' trademark extensively within the video gaming industry for items ranging from sponsored apparel for professional gamers and sporting events, to an actual videogame called ‘Monster Energy Supercross’. The company also claimed that the valuable goodwill it has built up for its MONSTER trademarks has been won with considerable cost and effort and that, in addition to the trademarks MONSTER and MONSTER ENERGY being registered, they have acquired significant additional rights through use.
Ubisoft counter-argued that there are currently hundreds of other registered trademarks containing the word 'monster', and Monster Energy is not entitled to lay claim to the word. Ubisoft also disputed the assertion that the trademark MONSTER ENERGY has become so well known that it enjoys additional protection.
While it may be true that MONSTER ENERGY is a well-known trademark, its owners still needed to provide proof of this for the trademark proceedings. This is no easy matter even for globally recognised trademarks, whose owners regularly struggle to provide irrefutable evidence, and providing proof of use for the registered trademark MONSTER ENERGY already posed a challenge given the large number of variations it employs. The European Trademarks Office concluded that the trademark was not well known and that use had only been demonstrated for some of the trademarks.
When it came to the risk of confusion, the question was whether the trademarks GODS & MONSTERS and MONSTER ENERGY were similar enough to cause confusion, and whether consumers might make a connection between the two which would, in effect, mean that Ubisoft was free-riding on MONSTER ENERGY's reputation. Because Monster Energy is also registered for games and MONSTER ENERGY and GODS & MONSTERS were found to be similar, the opposition succeeded.
In fact: Ubisoft changed the name of its videogame to 'Immortals: Fenyx Rising' a month after filing papers. Ubisoft claims that the name change had nothing to do with Monster Energy's opposition, and the name simply fitted the game better. Whether this was the real reason for the change is debatable. Ubisoft probably realised it was likely to lose the case and will have wanted to avoid any costly delays. The outcome of the proceedings shows that Ubisoft assessed the risks correctly and changing the name of the game was a wise choice.
Author: Arnaud Bos
Bio: Arnaud is trademark attorney and within Knijff responsible for the marketing & communication. Arnaud is specialist in the metaverse and music sectors and his client portfolio includes many upcoming and renowned bands. He keeps a close eye on the latest case law in the EU and will let you know when he sees remarkable applications.