Monster falls short in Merck TM dispute
Monster Energy has failed to block a UK trademark filed by German pharmaceutical company Merck KGaA.
In a decision issued in May, but made public in the last week, the UK Intellectual Property Office (IPO) said the companies’ logos shared little similarity beyond the letter ‘M’.
The German drugmaker applied to the IPO for a UK designation of a pre-existing international trademark registration, covering the ‘M’ from the company’s stylised logo.
Monster, whose logo is an ‘M’ in the shape of three claw marks, opposed the registration, arguing it was likely to cause confusion in the marketplace.
Monster claimed that Merck would enjoy an unfair advantage from the drinks company’s reputation “without having contributed any of the investment”.
But the IPO examiner found little similarity between the marks. The fact that both logos depict the same letter was the “high point” of Monster’s case, the IPO said.
Apart from the ‘M’, the “presentation and stylisation of the respective marks are significantly different in all other visual respects,” the examiner wrote.
One of the most striking elements of Monster’s logo is the claw-mark stylisation, completely absent from Merck’s applied-for trademark, they added.
Monster is known to be prolific in opposing trademarks, with varying levels of success. The energy drinks company lost several other oppositions at the IPO last year.
It was able to block rival Robot Energy from registering a UK trademark in “bad faith”, as part of a plan to stop Monster from protecting its own IP.
Merck has enjoyed greater success in its own trademark affairs lately, having prevailed over US rival Merck Sharp & Dohme (MSD) at the English High Court in a long-running dispute.
The court issued an injunction that will likely require MSD’s UK employees to change their email addresses from @merck.com to @msd.com.
The two companies, who share the same corporate lineage and split in 1917, have traditionally agreed to split rights to the ‘Merck’ name based on jurisdiction.
MSD is known as Merck in the US and Canada, while the German company uses the name almost everywhere else.
The dispute at the High Court mostly dealt with MSD having violated the terms of their agreement by using the ‘Merck’ name on its social media channels and online presence.
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