Monster Energy Company v A&E Television Networks LLC

[2023] ATMO 75

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Monster Energy Company to registration of trade mark application number 1952096 (class 41) – MONSTER MOTOR CHALLENGE - in the name of A&E Television Networks LLC

Delegate:

Tracey Berger

Representation:

Opponent: Stephen Rebikoff of Counsel, instructed by Elizabeth Godfrey of Davies Collison Cave

Applicant: Gadens Lawyers

Decision:

2023 ATMO 75

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44 and 60 considered – no grounds established – trade mark to proceed to registration

Background

1. This is a decision on an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Monster Energy Company (‘Opponent’) to registration of trade mark application number 1952096 for the words MONSTER MOTOR CHALLENGE (‘Trade Mark’) filed on 30 August 2018 by A&E Television Networks LLC (‘Applicant’) in respect of the following class 41 services:

Entertainment services, namely, a multimedia program series featuring subjects of general human interest distributed via various platforms across multiple forms of transmission media; entertainment services, namely, an ongoing television series featuring subjects of general human interest; providing entertainment information via a website (‘Applicant’s Services’)

[1] Unless otherwise stated, each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) and each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth).

2.  The Trade Mark was examined and advertised as accepted for possible registration on 29 April 2019.

3.  The Opponent filed a Notice of Intention to Oppose on 28 June 2019, followed by a Statement of Grounds and Particulars (‘SGP’) on 16 July 2019.  After a cooling-off period, the Applicant filed a Notice of Intention to Defend the opposition on 17 September 2020.

4.  The proceedings were then suspended for negotiations between the parties before the Opponent filed the following declarations as evidence in support of the opposition:

·     Declaration of Elizabeth Kate Godfrey, principal of Davies Collison Cave, attorneys for the Opponent, made on 30 March 2022 with Exhibits EKG-1 to EKG-29 containing the following declarations:

o   Rebecca Lee Dunbar, librarian employed by Davies Collison Cave, made on 8 August 2012 with Exhibits RLD-1 to RLD-20 at Exhibit EKG-1;

o   Danielle Jade Roberts, solicitor formerly of Davies Collison Cave, made on 9 July 2012 with Exhibits DJR-1 to DJR-48 at Exhibit EKG-2; and

o   Adrian Heath Hunter, former Australasian manager for the Opponent’s Australian subsidiary, made on 11 October 2012 with Exhibits AH-1 to AH-19 at EKG-3.

·     Declaration of Emily Elizabeth Maartensz, attorney employed by Davies Collision Cave, made on 1 April 2022 with Exhibit EEM-1 (‘EEM Declaration’).

·     Declaration of Paul J. Dechary, Senior Vice President and Deputy General Counsel of the Opponent, made on 1 April 2022 with Exhibits PJD-1 to PJD-81 (‘Dechary Declaration’) containing the following declarations:

o   Sam Anthony Pontrelli, Senior Vice President of Marketing for the Opponent, dated 7 August 2017 with Exhibits SAP-1 to SAP-35 at Exhibit PJD-2; and

o   Samuel Peter Thiele, Country Manager - Oceania employed by the Opponent’s Australian subsidiary, dated 11 August 2017 with Exhibits SPT-1 to SPT-32 at Exhibit PJD-3.

5.  The Applicant did not file any evidence in answer. 

6.  The parties were given the opportunity to request a hearing.  The Opponent requested an oral hearing and the Applicant did not ask to be heard.  Prior to the hearing, the Opponent filed a written summary of its submissions on 5 April 2023.  I was delegated to hear this matter and at the hearing, held by videoconference on 19 April 2023, the Opponent was represented by Stephen Rebikoff of Counsel, instructed by Elizabeth Godfrey of Davies Collision Cave.  I make this decision based on the documents and evidence outlined above as well as the written and oral submissions of the Opponent.

Grounds, Onus and Relevant Date

7.  In the SGP, the Opponents particularised grounds of opposition under ss 42(b), 44, 60 and 62A.  At the hearing, the s 62A ground was not pressed by the Opponent.

8.  The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[2]  The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

9.  The date at which the rights of the parties are to be determined is 30 August 2018 (‘Relevant Date’) being both the filing and priority date of the Trade Mark.

The Opponent

10.     The Opponent, formerly known as Hansen Beverage Company, is a subsidiary of Monster Beverage Corporation and since 2002, has primarily been making and selling energy drinks (‘Opponent’s drinks’). By dollar value, the Opponent’s MONSTER energy drinks are the best-selling energy drinks in the USA and the second best-selling energy drink globally with the Opponent selling its energy drinks in over 120 countries. Worldwide retail sales of the Opponent’s energy drinks are estimated to be in excess of 5 billion cans annually and sales have continued to grow each year since 2002.

11.     The Opponent owns a number of trade marks containing or consisting of MONSTER, which are used to sell and promote the Opponent’s drinks, including those shown below (collectively the ‘MONSTER Marks’):

·    MONSTER

·     (‘Stylised MONSTER Mark’)

·    MONSTER ENERGY

·      (‘Claw Device’)

·           

12.     The Opponent’s MONSTER ENERGY drink was launched in Australia in 2006 by its predecessor in title and since mid-2009, the Opponent has continuously used the Monster Marks to sell its energy drinks in Australia.  Energy drinks bearing the MONSTER Marks are sold in over 4000 retail outlets across Australia.  Gross sales figures for the Opponent’s drinks in Australia are very substantial.

13.     The Opponent has also used its MONSTER Marks for dietary supplements, and other beverages including protein shakes, sports drinks, and energy drinks mixed with juice, coffee or tea. The MONSTER Marks are often used on these beverages in conjunction with another mark such as MONSTER ASSAULT, MONSTER REHAB, JAVA MONSTER, MONSTER MAXX, MUSCLE MONSTER, MONSTER HYDRO and JUICE MONSTER.

14.     The Opponent does not use direct television or radio advertising to promote its goods but instead directs the majority of its marketing budget, to reach its target market and create the desired brand image.  It does so through endorsements and sponsorships of athletes and musicians, and sponsoring music and extreme sports including motor sports, e-sports and other competitions, teams and events which are also webcast on the Internet. Some of the sponsored sports events/teams include MotoGP, the Monster Energy Factory Yamaha Racing Team, Mercedes AMG PETRONAS F1 racing team, Yamaha MX1 and MX2 motocross teams and the AMA Supercross Series.  Sponsored athletes include Michael Schumacher and Lewis Hamilton (Formula One), Valentino Rossi (MotoGP) and various Australian V7 Supercar racers.  These endorsements and sponsorships are supported through point of sale materials, sweepstakes and give-a-ways, vehicle branding, signage, providing MONSTER-branded apparel and sports gear, samples and merchandise. The Opponent also has a group called MONSTER GIRLS who attend sponsored events to promote the Opponent and its image.  There are numerous examples of use of the MONSTER marks on branded apparel, merchandise, equipment, signs and banners at venues and on podiums. 

15.     The Opponent’s sponsorships and endorsements receive extensive exposure on television, on the Internet including the Opponent’s website at in magazines, at live events and through its numerous social media accounts.  The Opponent’s marketing expenditure in Australia is substantial.

16.     The Opponent’s social media accounts are very popular with over 200 million fan engagements across the Opponent’s various social media channels in 2020.[4]  In 2018, the Opponent’s Facebook page was the 10^th most popular brand on Facebook.[5]

[4] Dechary Declaration, [200].

[5] Dechary Declaration, [194].

17.      The Opponent has licensed use of the MONSTER Marks for clothing and headwear, protective clothing, headwear, motorcycles and quad bikes, bags, and point of sale material including signage, sporting goods, aprons, stationery, temporary tattoos, decals, stickers, bags and other merchandise.  In addition, the Opponent licenses use of the MONSTER Marks in a number of electronic games available across different gaming platforms.  The EEM Declaration exhibits various examples of use of the Monster Marks for licensed products and video games.

Discussion

Section 44

18.     Section 44(2) provides that, subject to s 44(3) and s 44(4), an application for the registration of a trade mark in respect of services must be rejected if the trade mark is substantially identical with or deceptively similar to a prior trade mark registered or sought to be registered by another person in respect of similar services.

19.     In support of this ground, in its SGP, the Opponent relies on its registrations below (‘Opponent’s Marks’):

Trade Mark	Number	Priority Date	Specification
MONSTER ENERGY	1670320	22 Jan 2015	Class 35:  Promoting goods and services of others in the sports, motorsports, electronic sports, and music industries through the distribution of printed, audio and visual promotional materials; promoting sports and music events and competitions for others; retail and wholesale foods and beverage distributorship services; On-line retail store services in the field of beverages, clothing, headwear, calendars, posters, stickers, promotional items Class 41:  Entertainment services; organizing, conducting and staging sports events, live musical performances, exhibitions and competitions; on-line publication and provision of multimedia content in the nature of multimedia files containing audio, video, text, still images, and graphics in the fields of sports, people, entertainment, and music; provision of non-downloadable publications in the nature of multimedia content in the nature of multimedia files containing audio, video, text, still images, and graphics in the fields of sports, people, entertainment and music via a website
MONSTER ARMY	1770844	16 Nov 2015	Class 25:  Clothing, including, tops, shirts, t-shirts, hooded shirts, sweat shirts, jackets, pants, bandanas, sweat bands and gloves; headgear, including, hats and beanies; footwear Class 41:  Provision of information on athletes, via a website; organizing and conducting educational programs and activities for athletes; athlete development program
1788449	12 Feb 2016	Class 25:  Clothing, including, tops, shirts, t-shirts, hooded shirts, sweat shirts, jackets, and bandanas; headgear, including, hats and beanies Class 41:  Provision of information on athletes, via a website; organizing and conducting educational programs and activities for athletes; athlete development program
MONSTER ENERGY	1835597	19 Oct 2016	Class 41:  Entertainment services, including, providing online and non-downloadable video games and providing temporary use of non-downloadable computer games, electronic games, and interactive games; arranging contests featuring online gaming; online gaming including such services provided via a website or online portal, coordination of game tournaments, leagues, and tours for recreational computer game playing purposes; entertainment services, including, online gaming services provided via a website; providing information about online gaming and online gaming professionals via a website; entertainment in the nature of live online gaming
1907111	16 Aug 2017	Class 41:  Entertainment services, including organizing sports, action sports, e-sports (video games), motor sports and motocross events; providing entertainment information, news, videos, opinions, commentary, and images in the field of athletes, sports, esports (video games) and sporting events via a website; on-line journals, including blogs in the field of athletes, sports, e-sports (video games) and sporting events; video production services; production of videos featuring music

20.     I confirm that each of the above marks has an earlier priority date than the Trade Mark and is in the name of a person other than the Applicant.

21.     At the hearing and in its written submissions, the Opponent principally relied on its registrations for MONSTER ENERGY and hence I will first consider whether the s 44 ground is established based on the Opponent’s registration numbers 1670320 and 1835597 for this mark (‘MONSTER ENERGY Registrations’).

22.      The MONSTER ENERGY Registrations cover “entertainment” which encompasses the Applicant’s Services.

23.     Therefore, the relevant question is whether the Trade Mark is substantially identical with, or deceptively similar to MONSTER ENERGY.

24.     The Opponent does not argue that the Trade Mark and MONSTER ENERGY are substantially identical and I note that on a side by side comparison there are obvious differences.  Although both marks have MONSTER as the first word, the differences in the other elements are such that there is not a total impression of resemblance.  The Trade Mark is not substantially identical to MONSTER ENERGY and I note for completeness that I do not regard the Trade Mark as substantially identical to any of the other Opponent’s Marks.

Deceptive Similarity

25.     Section 10 of the Act provides that a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

26.   The concepts of ‘deceive’ and ‘cause confusion’ were explained in the New Zealand case of Pioneer Hi-Bred Co v Hy-line Chicks Pty Ltd, where Richardson J said:

“Deceived” implies the creation of an incorrect belief or mental impression and causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.[6]

[6] (1979) 96 RPC 410, 423 (citations omitted).

27.     In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd, Windeyer J provided the following insights on deceptive similarity:

The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[7]

[7] [1963] HCA 66, [13].

28.     For trade marks to be considered deceptively similar there must be a real or tangible danger of deception or confusion occurring.[8]  This will be the case where there is a real likelihood that an ordinary person would be caused to wonder whether the goods come from the same trade source.

[8] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592, 595 (Kitto J); Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French J).

29.     The Opponent argues that the Trade Mark and MONSTER ENERGY are deceptively similar because the “essential” or “distinguishing” feature[9] of each mark is the common element MONSTER which has no meaning in relation to the Applicant’s Services whereas, the Opponent contends, the words MOTOR CHALLENGE are descriptive.  Hence the Opponent submits that consumers will rely on the word MONSTER to distinguish the Trade Mark.  Similarly, whilst ENERGY is less descriptive, the Opponent is of the opinion that consumers will refer to both the Trade Mark and MONSTER ENERGY as ‘MONSTER’ and be caused to wonder whether MONSTER MOTOR CHALLENGE entertainment services and MONSTER ENERGY entertainment services are related.  I am not persuaded by this reasoning. 

[9] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147 (Greene MR); Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [79]-[90] (Moore, Sackville and Emmett JJ).

30.     I must estimate the impression that a person of ordinary intelligence and memory would have of MONSTER ENERGY and of the Trade Mark. I must consider the look, sound, and idea conveyed by each mark, allowing for imperfect recollection.

31.     The trade marks must be considered in their entirety.  The only similarity between the Trade Mark and MONSTER ENERGY is the word MONSTER which may reference the subject matter of the entertainment services.  In my view, people of ordinary intelligence are unlikely to dismiss the words MOTOR CHALLENGE in the Trade Mark.  The Trade Mark and MOSTER ENERGY are not visually or aurally similar.  Further, the idea suggested by the Trade Mark is a large vehicle contest or race which is quite distinct from the Opponent’s MONSTER ENERGY mark which suggests huge energy or brute/animal energy.  When the trade marks are considered as a whole, the visual, aural, and conceptual differences outweigh the similarities derived from the common word, MONSTER.  For these reasons, I am not satisfied that the Trade Mark is deceptively similar to MONSTER ENERGY such that it is likely to cause deceive or confusion.

32.     The remainder of the Opponent’s Marks are no more similar to the Trade Mark.  Each of those marks is visually, aurally and conceptually different from the Trade Mark and, for similar reasons, I do not consider that the Trade Mark is deceptively similar to any of the other Opponent’s Marks.

33.     The s 44 ground of opposition is unsuccessful.

Section 60

34. Section 60 provides:

60  Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)  another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b)  because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

1. To establish a ground of opposition under s 60, an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.

2. In McCormick & Co Inc v McCormick,[10] Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour consulted the Macquarie Dictionary and based on the definition provided, she concluded that it was ‘the recognition of the [trade mark] by the public generally’.[11]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [10] [2000] FCA 1335.

   [11] Ibid, [81].

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[12]

   [12] [1992] FCA 159, [118].

   37. For the purposes of s 60, reputation must be established as a matter of fact by the Opponent[13] and must be amongst a ‘significant’ or ‘substantial’ number of Australian consumers[14] although this is tempered by the nature of the relevant market.  In the context of the Applicant’s Services, this is a very large proportion of the Australian population.

   [13] Ibid [77].

   [14] Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

   38.   In the SGP, the Opponent refers to the particulars in support of the s 42(b) ground of opposition which reads in part:

   The Opponent's MONSTER trade marks are well known in Australia, the United States and internationally in approximately 120 countries or territories for energy drinks, a range of beverages, nutritional supplements and related goods, including clothing and headgear and related services.  The Opponent also has a well known reputation in relation to sponsoring high profile sporting (including motorsports), music and gaming events and teams and/or individuals participating in those events. 

   The Opponent has sold well over 22 billion cans of MONSTER energy drinks worldwide and now sells about 3 billion cans per year.  Sales of the Opponent's MONSTER energy drinks bearing the MONSTER trade marks have generated more than US$40 billion in total retail revenues worldwide, with estimated retail sales exceeding US$6 billion per year. 

   39.     Accordingly, the Opponent claims to have a reputation in Australia, as a result of the significant exposure of the Opponent’s Marks in Australia and internationally, in relation to:

   a.energy drinks, beverages, nutritional supplements, clothing, headgear, and related goods; and

   b.sponsorship of sporting (including motorsports), music and gaming events;

   such that use of the Trade Mark for the Applicant’s Services is likely to deceive or confuse consumers into assuming those services are those of, associated or affiliated with, the Opponent.

   40.     On my assessment of the Opponent’s evidence, the Opponent has developed a strong reputation in Australia in the MONSTER Marks for energy drinks.  However, the Opponent predominantly uses the word ‘Monster’ in the form of MONSTER ENERGY, the Stylised MONSTER Mark and/or in combination with the Claw Device.  Although the Opponent sponsors numerous entertainment events, sports and athletes and publicises these endorsements and sponsorships on its websites, it does so to promote its energy drinks and I expect that consumers understand this to be the case.  Moreover, there is little, if any, evidence that MONSTER solus is used in relation to motor sports, the athletes involved in these sports or entertainment content about motor sports and the sponsored athletes. 

   41.     The word MONSTER is a common English word and, in my opinion, is not distinctive in the field of entertainment services where it may have descriptive reference to the subject matter of entertainment services as being about monsters/brutes, monster trucks or something large.  I am not satisfied that the reputation in the Monster Marks is so extensive or that the Opponent is so closely associated with entertainment services or motor sports, that consumers will be caused to wonder whether the Applicant’s Services provided under the Trade Mark are associated with the Opponent.

   42. I find that the Opponent has failed to establish a ground of opposition under s 60.

   Section 42

   43.     Pursuant to s 42(b), a trade mark must be rejected if its use would be contrary to law.

1. The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[15]  The relevant time for assessing whether an application is contrary to law is at the Relevant Date.

   [15] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

   45. The Opponent claims that the Applicant’s use of the Trade Mark in offering or advertising entertainment services would contravene s 18 of the Australian Consumer Law (‘ACL’), give rise to a false or misleading representation that the Applicant or its services have a sponsorship, approval or affiliation that they do not have in contravention of ss 29(1)(h) of the ACL and amounts to passing off.

   46. Unlike s 60, ss 18 and 29 of the ACL cannot be established by demonstrating use of the opposed trade mark would merely give consumers cause to wonder. Several cases confirm that more is required to establish a likelihood of misleading or deceptive conduct under the ACL than is the case with trade marks likely to deceive or cause confusion under s 60.[16] Having found that use of the Trade Mark is not likely to deceive or confuse under s 60, consequently I find that under the stricter test posited by the ACL,[17] the Opponent has also failed to establish that the Applicant’s use of the Trade Mark would be contrary to ss 18 or 29 of the ACL.

   [16] See, eg , Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 209-10 (Mason J).

   [17] See, e.g, Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36] (Hearing Officer Williams); Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).

   47. Where a trade mark does not contravene s 18 of the ACL, it is unlikely to amount to passing off.[18]  Justice Hill noted in Re Equity Access Pty Ltd v Westpac Banking Corporation that:

   [18] Monster Energy v USA Nutraceuticals Inc [2017] ATMO 22, [58] (Hearing Officer R. Wilson).

   The scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail. [19]

   [19] [1989] FCA 506, [40].

   48. Sections 52 and 53 of the Trade Practice Act 1974 (Cth)were the antecedents of ss 18 and 29 of the ACL. Given my findings in relation to ss 18 and 29 of the ACL, I am also satisfied that use of the Trade Mark would not constitute passing off.

   49.     For the above reasons, the ground of opposition under s 42(b) has not been established.

   Decision

   50.     The Opponent has not established any of the nominated grounds of opposition.  Accordingly, trade mark number 1952096 may proceed to registration one month from the date of this decision.

   51.     If the Registrar is served with a notice of appeal before the registration of the Trade Mark, I direct that the registration of the Trade Mark not occur until the appeal has been decided or discontinued, and that any disposition of the application be in accordance with the Court’s orders or direction.

   52.     The Applicant has sought an award of costs.  As costs usually follow the event, I award costs against the Opponent under s 221 in accordance with the amounts detailed in Schedule 8 of the Regulations.

   Tracey Berger
   Hearing Officer

   Delegate of the Registrar of Trade Marks

   13 June 2023