September 27, 2016
Mad Catz escape without a scratch, as purr usual
Mad Catz escape without a scratch, as purr usual
In a recent General Court decision, Monster Energy Company was unsuccessful in an attempt to prevent registration of two stylised marks in the name of Mad Catz Interactive, Inc. Following the Board of Appeal decision, the General Court’s decision hinges on the conceptual similarity between the two marks, both of which contain stylised scratch/claw/tear elements. The full decisions may be found here and here. The two contended Applications both contained 3 white diagonal scratch/claw marks against a black background. The first of the marks (the “contended figurative mark”) had no additional text and the second mark read MAD CATZ beneath the figurative element (“contended composite mark”). The General Court found that  the contended marks need not be viewed as containing scratch marks, and therefore concluded that the marks where not conceptually similar to those of Monster Energy. An “intellectual effort” was required on the part of the consumer to make this leap; whilst that step was not required in the case of the Monster Energy owned marks. With the conceptual similarity deemed to be low, the onus fell on the visual similarity, which was not sufficiently high to find a likelihood of confusion. It is worth noting that this outcome may have been decidedly different, had Monster Energy been able to rely on a registration for their stylised mark rotated 45 in either direction. This subtle alteration to their mark would have been far more visually similar and would have enabled the Opponent to rely less heavily on the conceptual similarities of the marks. A reminder then, perhaps, that if simple figurative elements are important to your brand, it may be advisable to ask 1) what do I want to protect?, followed swiftly by 2) what do I want to prevent? These may seem similar questions but they may yield different answers. For further information, please feel free to get in touch.
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Food & Drink /  Trademarks

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