Trademark Caselaw | Colombia | Monster Trademark Opposition Dismissed

Earlier this year, the Trademark Office at SIC, Colombia’s Intellectual Property agency, dismissed Monster Energy Company’s opposition against local company Monstruo S.A.S.’s trademark application for CAFÉ MONSTRUO (Logo), in classes 30 and 43.

Monster Energy Company had based its opposition on its pre-existing applications/registrations for trademarks MONSTER REHAB (Logo), JAVA MONSTER (Logo), JUICE MONSTER (Logo), MONSTER ENERGY and MONSTER ENERGY ULTRA, all in class 32.

Monster Energy Company’s Trademarks

In its February 23 decision, SIC’s Trademark Office found no likelihood of confusion (nor association) between trademarks whose most predominant elements were the terms “Monstruo” and “Monster”, which have the exact same meaning in Spanish and English, and whose meanings seem to be well known for speakers of both languages, stating that they were not similar, not phonetically nor orthographically, without much additional consideration.

The proposed, and now registered, mark.

The Trademark Office’s decision was also based on the fact that the applicant owns a registration for trademark CAFÉ MONSTRUO GLUGLUGLU RARR ÑAMÑAMÑAM BUMMI (Logo) in classes 30, 35 and 43, and that such mark pacifically coexisted with Monster Energy Company’s trademarks, since its registration date, during 2018, which seems interesting considering this trademark’s peculiar path to registration: Monster Energy Company had opposed the subject mark, yet the Trademark Office dismissed the opposition without an actual analysis thereof, finding that since the proposed mark did not seem to be inherently distinctive (due to the multiplicity of elements it included) and would be refused, such analysis was not relevant. Then, in an interesting turn of events and upon the applicant appealing the refusal of its application, SIC’s Superintendent revoked its Trademark Office’s refusal and found that the subject mark was distinctive enough to be registered.

SIC also based its decision on a pre-exising registration for the mark showed in the image, which was initially deemed not inherently distinctive.

SIC’s decision made it clear that it issues its rulings on a case-by-case basis and that previous cases taking place under similar circumstances should not necessarily influence its decisions. That said, the decision in this case seems to show a pathway for registering marks that would otherwise be deemed confusingly similar with other pre-existing trademarks, by simply disguising its most characteristic elements in a multiplicity of terms and/or additional figurative elements.

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