Monster Energy Company v A&E Television Networks LLC

Monster Energy Company opposed the registration of trade mark application number 1952096, "MONSTER MOTOR CHALLENGE," in class 41, by A&E Television Networks LLC. The opposition was heard by Tracey Berger, Hearing Officer and Delegate of the Registrar of Trade Marks.

The legal issues before the Hearing Officer were whether the proposed use of the trade mark by the applicant would contravene provisions of the Australian Consumer Law (ACL), specifically section 18 (misleading or deceptive conduct) and section 29(1)(h) (false or misleading representation of sponsorship, approval, or affiliation), and whether such use would amount to passing off. The onus was on the opponent to establish, on the balance of probabilities, that the applicant's use of the trade mark would be contrary to law.

The Hearing Officer reasoned that the onus on the opponent to establish contravention of sections 18 and 29 of the ACL was stricter than the test for deception or confusion under section 60 of the *Trade Marks Act 1995* (Cth). Having found that the use of the trade mark was not likely to deceive or confuse under section 60, the Hearing Officer concluded that the opponent had failed to meet the higher threshold required for the ACL provisions. Furthermore, the Hearing Officer noted that where a trade mark does not contravene section 18 of the ACL, it is unlikely to amount to passing off, citing precedent that the scope of section 52 of the *Trade Practices Act 1974* (Cth), the antecedent to section 18, was broader than that of passing off. Consequently, the Hearing Officer found that the grounds of opposition under section 42(b) of the *Trade Marks Act 1995* (Cth) had not been established.

The Hearing Officer ordered that trade mark application number 1952096 may proceed to registration one month from the date of the decision, unless a notice of appeal was served on the Registrar, in which case registration would be stayed pending the appeal. The Hearing Officer also awarded costs against the opponent in favour of the applicant.