Monster Energy Company v Cheng Shin Rubber Ind. Co., Ltd

[2022] ATMO 187

TRADE MARKS ACT 1995

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

Re:Oppositions by Monster Energy Company to registration of trade mark application number 2064464 (class 12) -  - trade mark application number 2064465 (class 25) -  - and trade mark application number 2108252 (class 35) -  - in the name of Cheng Shin Rubber Ind. Co., Ltd.

Delegate:

Timothy Brown

Representation:

Opponent: Stephen Rebikoff of Counsel instructed by Davies Collison Cave Pty Ltd.

Applicant: Paul Wyk of A.P.T Patent and Trade Mark Attorneys.

Decision:

2022 ATMO 187

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

Background

1. This is a decision on the oppositions by Monster Energy Company (‘Opponent’) to the registration of trade mark applications 2064464, 2064465 and 2108252 (‘Applications’) filed by Cheng Shin Rubber Ind. Co., Ltd (‘Applicant’) for the following trade mark:

   (‘Trade Mark’)

2. The Applications were made in respect to the following good and services:

   Trade Mark Number:      2064464

   Class 12:  Tires; tire tubes for vehicles; inner tubes for vehicle tires; tire valves for vehicle tires; tire inflators; tire repair patches; tire liners; tire retreading caps; spare tire covers; vehicle wheels; bicycle wheels; balance weights for vehicle wheels; brakes for vehicles; bicycle brakes; derailleurs for bicycles; saddles for bicycles; bicycle seats; chains for cycles; bicycle water bottle cages; baskets adapted for bicycles; antitheft devices for vehicles; electric cigarette lighters for land vehicles; shaped or fitted car seat covers; covers for vehicle steering wheels; automobiles; electric cars; bicycles; electric bicycles; motorcycles; electric motorcycles; all-terrain vehicles; boats; aircraft; fork lift trucks; water scooters; electric golf caddies; motors and engines for land vehicles; baby strollers; belts for land vehicle transmissions; gearboxes for land vehicles; rear view mirrors for automobiles; safety seats for infants and children for vehicles; carts; mudguards for automobiles, motorcycles and bicycles; wheelchairs; windscreen wipers; bicycle handlebar grips; drive shafts for land vehicles; grocery carts

   Trade Mark Number:     2064465

   Class 25: Coats; dress; jackets(clothing); trousers; t-shirts; skirts; moisture-wicking sports shirts; moisture-wicking sports pants; sports shirts; vests; athletic pants; athletic shirts; cycling shorts; cyclists' jerseys; rain wear; motorcycle jackets; riding coats; leisure suits; cycling shoes; motorcyclist boots; shoes; footwear; athletic shoes; boots; riding shoes; leisure shoes; riding boots; neckties; bow ties; pocket squares(clothing); ear warmers; hats; caps being headwear; head scarves; headbands; neckerchieves; scarves; baseball caps; headbands against sweating; socks; mittens; gloves as clothing; ski gloves; fingerless gloves; bicycling gloves; riding gloves; belts for clothing; leather belts(clothing); money belts; eyeshades as headwear

   Trade Mark Number:     2108252

   Class 35: Promotion of goods and services through sponsorship of sports events; retail store services featuring tires and clothing; online retail store services featuring tires and clothing; wholesale store services featuring tires and clothing; sales promotion for others; promoting sports competitions and events of others; promoting sports competitions for others

   (Collectively, ‘Applicant’s Goods and Services’)

3. Trade mark numbers 2064464 and 2064465 were filed on 23 January 2020, and trade mark number 2108252 was filed on 31 July 2020. As nothing turns on the differences in the respective filing dates, I shall refer to them collectively as the ‘Relevant Dates’.

4. As required by the Trade Marks Act 1995 (Cth)[1], the Trade Marks were examined and accepted for registration. Trade mark numbers 2064464 and 2064465 were advertised for opposition on 24 June 2020 and trade mark number 2108252 was advertised for opposition on 1 January 2021.

   [1] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’). Each reference to a regulation in these reasons is a reference to a section of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

5. The Opponent filed notices of intention to oppose trade mark numbers 2064464 and 2064465 on 24 August 2020. The Opponent filed its notice of intention to oppose trade mark number 2108252 on 24 February 2021. Statements of Grounds and Particulars (‘SGPs’) were filed in relation to trade marks 2064464 and 2064465 on 15 September 2020, and 2108252 on 18 March 2021.

6. The Applicant filed notices of intention to defend the oppositions to trade mark numbers 2064464 and 2064465 on 3 January 2021, and trade mark number 2108252 on 27 June 2021.

7. The Opponent filed evidence in support of the oppositions to trade mark numbers 2064464 and 2064465 on 2 April 2021, and trade mark number 2108252 on 23 September 2021. The Applicant filed evidence in answer to the oppositions to trade mark 2064464 and 2064465 on 6 July 2021, and trade mark number 2108252 on 28 December 2021. The Opponent filed evidence in reply for the oppositions to trade mark numbers 2064464 and 2064465 on 7 September 2021, and trade mark number 2108252 on 1 March 2022.

8. On 23 May 2022, the Opponent requested to amend the SGPs for the oppositions trade mark numbers 2064464 and 2064465 to correct an error or omission in the grounds of opposition under reg 5.12(1)(a) and (d). The SGPs were subsequently amended on 1 July 2022 to include references to two additional trade mark registrations.

9. Following the conclusion of the evidence stages, both parties requested to be heard. The matter was heard before me, as a delegate of the Registrar of Trade Marks, on 21 July 2022. The Opponent was represented by Stephen Rebikoff of Counsel, instructed by Elizabeth Godfrey of Davies Collison Cave Pty Ltd. The Applicant relied on its written submissions made by Paul Wyk of A.P.T Patent and Trade Mark Attorneys.

Grounds, Onus and Relevant Dates

1. The grounds of opposition nominated in the SGPs were sections 42(b), 44, and 60.

2. The Opponent bears the onus of establishing one or more of the grounds of opposition.[2] The required standard of proof is on the balance of probabilities.[3] The date at which the rights of the parties will be determined is the priority date of the Applications, being the Relevant Dates.

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

   [3] Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

Evidence

1. The following evidence was filed:

   Evidence in Support

   ·Declaration of Paul Dechary, Senior Vice President of the Opponent, made on 30 March 2021 (‘Dechary Declaration’) with Exhibits PJD-1 to PJD-74.

   ·Declaration of Elizabeth Kate Godfrey made on 30 March 2021 (‘Godfrey Declaration’) with Exhibits EKG-1 to EKG-18.

   ·Declaration of Emily Elizabeth Maartensz made on 2 April 2021 (‘Maartensz Declaration’) with Exhibits EEM-1.

   ·Declaration of Elizabeth Kate Godfrey made on 14 September 2021 (‘Second Godfrey Declaration’) with Exhibits EKG-1 to EKG-3.

   Evidence in Answer

   ·Declaration of Yun Hwa Chen, President of the Applicant, made on 28 June 2021 (‘Chen Declaration’) with Annexes YWC1 to YWC-17.

   ·Declaration of Yun Hwa Chen, President of the Applicant, made on 24 December 2021 with Annex YWC-1 to YWC-20.

   Evidence in Reply

• Declaration of Elizabeth Kate Godfrey made on 3 September 2021 with Exhibits EKG-19 to EKG-21.

• Declaration of Elizabeth Kate Godfrey made on 1 March 2022 with Exhibits EKG-1 to EKG-6.

1. Also exhibited to the Dechary and Godfrey Declarations are the following declarations (previously filed on behalf of the Opponent in earlier proceedings before this office):

• Statutory Declaration of Rebecca Lee Dunbar (‘Dunbar Declaration’) made on 8 August 2012 and Exhibits RLD-1 to RLD-20;

• Statutory Declaration of Danielle Jade Roberts made on 9 July 2012 (‘Robert Declaration’) and Exhibits DJR-1 to DJR-48; and

• Statutory Declaration of Adrian Heath Hunter made on 11 October 2012 (‘Hunter Declaration’) and Exhibits AH-1 to AH-19;

  ·    Declaration of Sam Anthony Pontrelli made on 7 August 2017 and Exhibits SAP-1 to SAP-38 (‘Pontrelli Declaration’); and

  ·    Declaration of Sam Peter Thiele made on 11 August 2017 (‘Thiele Declaration’) and Exhibits SPT-1 and SPT-32.

Opponent

1. The Opponent is a subsidiary of the Monster Beverage Corporation and is in the business of selling energy drinks and various other beverages, including sodas, fruit juices, smoothies and iced tea.

2. The Opponent is the owner of a number of trade marks, including registrations for:

• MONSTER;

• MONSTER ENERGY;

• (‘M Claw Trade Mark’)

• (Collectively, ‘MONSTER Trade Marks’)

1. The Opponent first began selling energy drinks in the USA in April 2002. The Opponent’s energy drinks are now sold in over 140 countries and are the best selling energy drinks in the USA, and the second best selling energy drinks by dollar value globally. The worldwide retails sales of the Opponent’s energy drinks are estimated to be more than 5 billion cans annually.

2. The Opponent’s energy drinks were first sold in Australia in 2006 by the company Bickford’s Australia Pty Ltd (‘Bickford’). In 2008 the Opponent acquired all rights in Bickford’s ‘MONSTER’ trade marks. In July 2009, the Opponent began selling its own energy drinks in Australia bearing the MONSTER Trade Marks. Sales figures for the Opponent’s beverages featuring the M Claw Trade Mark in Australia have been provided from 2009 through to 2020. I note that by any measure the sales figures provided are very substantial and demonstrate continuous growth and sales of the Opponent’s products in Australia.

3. On 5 August 2008 the Opponent incorporated its Australian subsidiary, Monster Energy AU Pty Ltd. The role of this entity was to market and promote the Opponent’s energy drinks in Australia. Exhibited to the Dechary Declaration is the Opponent’s marketing expenditure in Australia from July 2009 to December 2020. This expenditure was also very substantial.

4. In addition to its energy drinks, the Opponent has also used its trade marks on a variety of products, including dietary products, clothing, merchandise and in relation to the sponsorship of various live sporting and music events. The Maartensz, Dunbar, Roberts and Dechary Declarations exhibit examples of the use of the M Claw Trade Mark in relation to vehicle wheels and rims, racing motorbikes, protective clothing, a variety of vehicle racing video games and point of sale material, including signage, stationary, aprons, decals, stickers and bags.

5. The Dechary Declaration explains that the Opponent does not use direct television or radio advertising to promote its goods but rather focuses on non-conventional marketing methods, such as athlete endorsement and sponsorship of athletic, racing, music, e-sports and live events.  Some of the Opponent’s sponsorship activities include sponsorship of well-known events, such as F1 Racing, MotoGP, Supercross, UFC, X Games and Soundwave Festival Australia. Details of these events, including the number of attendees, viewers, the Opponent’s specific sponsorship activities are included in the evidence. The Opponent has also sponsored various renown individuals, including Lewis Hamilton, Jenson Button, Valentino Rossi, Tiger Woods, Conor McGregor as well as a variety of Australian athletes, surfers, skaters, mountain bikers and racers.

6. The Opponent has used and licensed use of its M Claw Trade Mark on clothing and merchandise since 2002 in the USA and since early 2005 in Australia. The Opponent sells and distributes clothing through point-of-sale programs offered to retailers and distributors. Examples of use the M Claw Trade Mark on clothing and various items of merchandise are provided in the Dechary, Maartensz, Hunter, and Dunbar Declarations.

7. It is also evident that the Opponent’s M Claw Trade Mark receives significant exposure through television and internet coverage of the sporting events, and from the Opponent’s own promotion via the Opponent’s website, Facebook page, Twitter account, Instagram and YouTube channel.

Applicant

1. The Applicant was established on 19 December 1969 in Taiwan and was initially a producer of bicycle tyres. At present, the Applicant produces a range of different tyres and tubes for bicycles, motorcycles, trucks, forklifts, all-terrain vehicles and a variety of agriculture and lawn equipment.

2. Mr Chen explains that the Applicant operates two house brands, ‘CST’ and ‘MAXXIS’. The Trade Mark was chosen as a reflection of its MAXXIS brand, being a stylized letter ‘M’. Mr Chen declares that first use of the Trade Mark was in August 2016 at a mountain bike event in Whistler Canada. Since that date the Applicant has used the Trade Mark in Italy, Taiwan, and the United States. Annexed to the Chen Declaration are examples of the Trade Mark in use at various bicycle and motor cycle shows, bike competitions, and racing events from 2016 to 2020.

3. The Trade Mark is also promoted via third party print and online publications, Facebook, brand ambassadors, and US based online stores.

4. Mr Chen declares that the Trade Mark is registered in the United States of America.

Discussion and Reasons

Section 44

1. Section 44 relevantly provides:

   (1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

   (a)the applicant's trade mark is substantially identical with, or deceptively similar to:

   (i)a trade mark registered by another person in respect of similar goods or closely related services; or

(ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b)the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

(2)Subject to subsections (3) and (4), an application for the registration of a trade mark  (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

(a)    it is substantially identical with, or deceptively similar to:

(i)  a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)  a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b)    the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

1. To succeed under this ground of opposition the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of a person other than the Applicant, in respect of goods or services that are similar to the Applicant’s Goods or Services, or goods and services that are closely related to the Applicant’s Goods or Services.

2. The Opponent relies on the following trade mark registrations:

Trade Mark No.	Trade Mark	Priority Date	Class(es)
1350831	16 March 2010	5, 9, 16, 18 and 25
1694311	18 May 2015	9, 16, 18 and 25
1924998	8 May 2018	5, 9, 12, 14, 16, 18, 25 and 32
2024913	23 July 2019	12
2024916	23 July 2019	25
2024919	23 July 2019	35

(‘Collectively, ‘Opponent’s Trade Marks’)

1. Each of the Opponent’s Trade Marks has a priority date that is earlier than the Relevant Dates and is held in the name of party other than the Applicant.

Comparison of Trade Marks

1. The Opponent did not assert that the trade marks were substantially identical. I am also satisfied that on a side-by-side comparison the differences between the trade marks are clear enough that there would not be an overall impression of resemblance.

2. Section 10 of the Act defines ‘deceptively similar’ as:

   For the purposes of this Act, 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.

1. The approach for assessing whether trade marks are deceptively similar was outlined by Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd:

   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 [mark].[4]

   [4] [1963] HCA 66, [13].

2. For trade marks to be considered deceptively similar there must be a real or tangible danger of deception or confusion occurring.[5] 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.[6] The basis for any deception or confusion is the impression or recollection of the trade marks that is carried away and retained by the ordinary consumer.[7] Accordingly, an allowance is made for imperfect recollection of the trade marks.[8] The impression derives from the trade marks in their entirety,[9] and is informed by the look, sound and ideas conveyed by the trade marks.[10]

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

   [6] Ibid.

   [7] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).

   [8] Crazy Ron's Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [77] (Moore, Sackville, and Emmett JJ).

   [9] Clarke v Sharp (1898) 15 RPC 141, 146 (Byrne J).

   [10] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

3. The Opponent contends that there is a real and tangible danger of confusion between the Trade Mark and the Opponent’s Trade Marks because the trade marks share essential and distinguishing features comprised of three parallel marks that combine to form the appearance of an elongated ‘M’. The Opponent submits that the similar overall composition of the trade marks creates the same essential impression of an elongated ‘M’.

4. The Opponent emphasises that where two trade marks convey the same essential idea, and are used in respect of the same or similar goods and services, consumers are likely to conclude that the goods or services come from the same source. Furthermore, that where the trade marks are comprised solely of graphical elements, there is an increased likelihood that the trade marks may be requested or described the same way by consumers.[11]

   [11] See: Polo/Lauren Co LP v Phillip (2012) 97 IPR 1, [41]-[44] (Hearing Officer Thompson).

5. The Applicant contends that the trade marks do not share a similar idea, submitting that the Opponent’s Trade Marks conveys the idea of a claw or claw swipe because of the three jagged lines in the Opponent’s Trade Marks. In contrast, the Trade Mark is immediately recognizable as the letter ‘M’ with a chevron placed on top of it.  The Applicant has also cautioned against giving the Opponent a monopoly over the use of the letter ‘M’, or a broad range of stylisations of the letter ‘M’.

6. There are a myriad of decisions involving comparisons of trade marks that consists of stylized single letters. For example, the Opponent referred me to Clarendon Lawyers Pty Ltd v Cornwalls Lawyers Pty Ltd[12], which involved a comparison between the following trade marks:

   [12] [2020] ATMO 192 (Hearing Officer Smith).

1. In this decision, the delegate of the Registrar of Trade Marks concluded that the trade marks were deceptively similar because each trade mark was comprised of a series of partially concentric circles that formed the letter ‘C’.[13]

   [13] Ibid [27].

2. The Applicant distinguished the present case from Monster Energy Company v Peter Balthazar[14], a decision determined under section 60 that involved a comparison between the Opponent’s M Claw Trade Mark and the following trade mark:

   [14] [2020] ATMO 123 (Hearing Officer McDonagh).

3. In this decision, the delegate of the Registrar of Trade Marks concluded that the opposed trade mark was conceptually similar to the Opponent’s M Claw Trade Mark with both designs sharing ‘three lines (as opposed to the usual four animal claws) in parallel with a jagged or wavy appearance’[15].

   [15] Ibid [35].

4. In my view, the impression conveyed by the trade marks cannot be distilled down to the impression of an elongated ‘M’. While the trade marks resemble the letter ‘M’, each trade mark is comprised of distinctive visual features that serve to distinguish the trade marks. The three vertical jagged lines present in the Opponent’s Trade Marks resemble a downwards tear or slash. Consumers who see the Opponent’s Trade Marks are, in my view, likely to recall this distinctive manner of representation, not just that the device resembles the letter ‘M’. Although the Trade Mark is also comprised of three vertical lines, the chevron present at the top of the Trade Mark and the absence of any jagged lines or stylization that otherwise resembles a tear or claw mark are clear points of differentiation between the trade marks. Even allowing for imperfect recollection, I am not convinced that a consumer upon viewing the Trade Mark and the Opponent’s Trade Marks would be caused to wonder whether the relevant goods or services derive from the same trade source. Accordingly, I do not consider the Trade Mark to be deceptively similar to any of the Opponent’s Trade Marks.

5. I note that the SGPs refer to additional trade mark registrations, namely trade mark numbers 1924999, 2023401, 1521480, and 1788449. I do not consider it necessary to consider these trade marks any further. Noting my conclusion in relation to the Opponent’s Trade Marks, I would arrive at the same conclusion for any of those trade marks that specify similar goods or services to the Trade Mark given that they incorporate the word MONSTER and have additional elements to further differentiate them from the Trade Mark.

6. The section 44 ground of opposition is not established.

Section 60

1. Section 60 provides:

   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.

2. To establish this ground of opposition, the Opponent must establish:

• A reputation existing in another trade mark in Australia before the Relevant Dates; and

• That because of the reputation of the other trade mark, use of the Trade Mark would be likely to deceive or cause confusion.

Reputation

1. Reputation, in the context of section 60, refers to the ‘recognition of [the mark] by the public generally’.[16] It is not a factor that is assumed and must be established by the Opponent as a matter of fact.[17]

   [16] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’).

   [17] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).

2. There are a variety of ways the reputation of a trade mark may be established, including by demonstrating a significant number of people have been exposed to the trade mark,[18] or providing evidence of high volume of sales,[19] advertising expenditure or other promotion of goods or services to which the trade mark applies.[20] There are also qualitative aspects to the reputation of a trade mark, which concern the value or esteem that the public hold for the trade mark.[21]

   [18] Ibid [118].

   [19] McCormick (n 10) [86].

   [20] Ibid.

   [21] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [83] (O’Bryan J).

3. Generally, the reputation relied on by the Opponent must be amongst a significant or substantial number of persons.[22] What amounts to a significant or substantial number of people is informed by the relevant market and the nature of the goods or services in question.[23]

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

   [23] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).

4. In support of this ground, the Opponent relies on the reputation of the Opponent’s Trade Marks, particularizing this ground in the SGPs as follows:

   The Claw Icon trade marks are well known in Australia in relation to beverages, including energy drinks, apparel and related goods and services as well as in relation to sponsoring athletes and major sporting events. Based on this extensive reputation, the Applicant should therefore have been aware of the Opponent and its trade mark rights at the time of filing the application for directly overlapping goods.

1. The Opponent adduced a substantial amount of evidence demonstrating use of the Opponent’s Trade Marks in Australia. The Applicant acknowledges the extensive use of the Opponent’s Trade Marks in relation to energy drinks but challenges the assertion that the reputation of these trade marks extends to clothing, clothing accessories, and wheel rims. The Applicant refers me to the following passages from Rodney Jane Racing Pty Ltd v Monster Energy Company[24]:

   The evidence shows, and there is no dispute, that MEC has a strong reputation in Australia in its device marks which consist of the M-icon on its own or used in conjunction with the stylised depiction of the words “Monster Energy”. That reputation is as a producer of energy drinks and as a sponsor of extreme sports including motorsports. . . .[25]

   …

   I infer from the evidence that at least some wheels bearing the M-icon on the hubcap were sold in Australia (through Bob Jane T-Marts) before the priority date. However, there is no evidence as to the quantity of those sales, beyond the 4 invoices referred to above and the Facebook post. Further, there was no evidence that MEC had licensed any wheel manufacturer to produce or sell wheels bearing the M-icon on the hubcap in Australia. It is therefore not clear whether the Crossfire wheels that were sold in Australia were imported from North America; nor is it clear whether MEC approved the use of the M-icon on the wheel hubcaps for sale in Australia. Given the absence of any licensing arrangements for the sale of MEC branded wheels in Australia, it is unsurprising that there was also no evidence that MEC had ever promoted itself as a producer or supplier of automotive wheels in Australia. Overall, the evidence concerning the sale of MEC branded wheels in North America or Australia has no material bearing on the reputation of the MEC marks in Australia.[26]

   …

   First, the evidence establishes that there is a very strong reputation in MEC’s device marks which consist of the M-icon on its own, and the M-icon together with the stylised depiction of the words “Monster Energy”. The primary reputation is as a producer and seller of energy drinks. However, through its extensive marketing and promotional activities, those marks are also associated with various extreme sports including motorsports. In my view, the type of association in the minds of consumers would be as a sponsor of events, teams and individuals. Some consumers would also associate those marks with a range of merchandise bearing those marks, from apparel through to motorsport equipment such as gloves and helmets. However, the evidence does not establish a reputation in Australia in connection with the sale of automotive wheels.[27]

   …

   MEC has no reputation in respect of alloy wheels. It does have a strong reputation as a sponsor of motorsports, including teams and individual drivers and riders. It is also associated with motorsport clothing and equipment. However, that reputation does not carry across to alloy wheels.[28]

   [24] [2019] FCA 923 (O’Bryan J).

   [25] Ibid [75].

   [26] Ibid [114].

   [27] Ibid [116].

   [28] Ibid [149].

2. In Monster Energy Company v Mixi Inc[29] Stewart J also stated:

   In the result, the evidence does not support a conclusion that the MONSTER word mark on its own had any particularly significant reputation in Australia at the relevant time. Any reputation of the word MONSTER is derived from the M claw, stylised MONSTER and the MONSTER ENERGY. It is these that create the association in the minds of consumers.[30]

   [29] [2020] FCA 1398.

   [30] Ibid [151].

3. The Opponent has sold a substantial number of energy drink beverages both worldwide and in Australia. These sales are supported by extensive marketing expenditure and promotional activities, which in my view indicate that a substantial proportion of the Australian public would be aware of the Opponent’s Trade Marks. Accordingly, I am satisfied that as of the Relevant Dates the Opponent’s Trade Marks held a significant reputation in respect of energy drinks. I recognise that through the Opponent’s promotional activities, which focus heavily on sponsorship of sporting, music and gaming events and personas in those industries, awareness of the reputation of the Opponent’s Trade Marks would likely extend to sports, music, retail and merchandise. However, I am not convinced that the Opponent’s Trade Marks have any standalone reputation for clothing, vehicles products, or wheel rims. In my view, use of the Opponent’s Trade Marks for these goods would only be associated in the minds of consumers with the reputation of the Opponent’s energy drinks products.

Likelihood of Deception or Confusion

1. The existence of a reputation does not necessarily mean use of the Trade Mark would be likely to deceive or cause confusion. The Opponent needs to establish a causal connection between the reputation of the Opponent’s Trade Marks and the likelihood that use of the Trade Mark will deceive or cause confusion.

2. The concept of ‘deceive’ and ‘cause confusion’ was explained by Richardson J in the New Zealand decision of Pioneer Hi-Bred Corn Co v Hy-line Chicks Pty Ltd[31]:

   ‘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.[32]

   [31] [1979] 19 RPC 410.

   [32] Ibid 423.

3. The test for deception or confusion turns on whether use of the Trade Mark would result in a reasonable number of people being caused to wonder whether the Applicant’s Goods or Services derive from the same trade source as another trade mark.[33] Factors relevant to this determination include the strength of the reputation of the other trade mark, the similarity between the Applicant’s Goods and the goods or services associated with the reputation of the other trade mark, and the degree of similarity between the relevant trade marks.[34] As a delegate of the Registrar of Trade Marks explained in Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd:

   Confusion can not arise solely from the reputation of one trade mark.  There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be.  The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.[35]

   [33] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50] (French J).

   [34] Qantas Airways Limited v Edwards [2016] FCA 729, [142] (Yates J).

   [35] [2010] ATMO 5 (Hearing Officer Lyons).

4. With regards to the similarity of the goods or services, the Applicant’s Goods and Services are fields in which the Opponent has engaged in extensive sponsorship and distribution activities. The Opponent’s evidence demonstrates that they promote the ‘MONSTER’ brand through the sale of clothing and vehicle equipment, such as wheel rims, featuring the Opponent’s Trade Marks. Similarly, the Opponent has engaged in extensive sponsorship activities for a wide range of events, the same sort of events the Applicant’s services in Class 35 cover. Accordingly, I am satisfied that there is a nexus between the Applicant’s Goods and Services and the goods and services associated with the reputation of the Opponent’s Trade Marks. Consumers of the Applicant’s Goods and Services would likely recognise the Opponent’s Trade Marks and be aware their reputation for energy drinks.

5. In terms of the similarity of the trade marks, the Opponent contends that the trade marks are deceptively similar. I refer to the discussion of the section 44 ground of opposition and my conclusion regarding the similarity of the Trade Mark to the Opponent’s Trade Marks. Although section 60 is not based on a requirement that the trade marks be substantially identical or deceptively similar, the degree of similarity between the trade marks remains a relevant consideration. In my view there are enough differences between the trade marks to render the chances of consumer confusion unlikely. I also note that the Opponent’s Trade Marks are used in a variety of forms, often alongside either the word ‘MONSTER’ or the words ‘MONSTER ENERGY’. Use in this manner reinforces the impression of a claw conveyed by the Opponent’s Trade Marks, and otherwise associates the reputation of the Opponent’s Trade Marks with the impression of ‘MONSTER’ or ‘MONSTER ENERGY’. Even accounting for the extensive reputation of the Opponent’s Trade Marks and the relevant class of consumer, I am not convinced that there would a likelihood of deception or confusion between the trade marks.

6. The ground of opposition under section 60 is not established.

Section 42(b)

1. Section 42(b) provides:

   An application for the registration of a trade mark must be rejected if:

   …

   (b)    its use would be contrary to law.

2. The Opponent relies on sections 18 and 29(1)(g) and (h) of the Australian Consumer Law (‘ACL’) of Schedule 2 of the Competition and Consumer Act 2010 (Cth) and the tort of passing off as the basis for the ground of opposition under section 42(b) of the Act.

3. The Opponent submits that having regard to the reputation of the Opponent’s Trade Marks, particularly in connection with sports and sporting events, its history of brand extension and the similarities between the Opponent’s Trade Marks and the Trade Marks, it is likely that the conduct of the Applicant in offering its goods and services by reference to the Trade Mark would give rise to a representation that the Applicant’s Goods and Services are associated with those of the Opponent.

Australian Consumer Law

1. Section 18(1) of the ACL provides:

   A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

2. Section 29(1) of the ACL relevantly provides:

   A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services: …

   (g) make a false or misleading representation that goods or services have sponsorship approval, performance characteristics, accessories, uses or benefits;

   (h) make a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation;

3. The requirement that the relevant consumer be misled or deceived is one of the main differences between section 18 and 29 of the ACL and section 60. There is no material difference between the expression ‘mislead or deceive’ in section 18 of the ACL and ‘false or misleading’ in section 29 of the ACL.[36] The requirement to mislead or deceive the relevant consumer imports a stricter requirement than section 60 of the Act.[37]

   [36] Australian Competition and Consumer Commission v Coles Supermarkets Australia Pty Ltd [2014] FCA 634, [40] (Allsop CJ).

   [37] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44, [8] (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [32]-[33] (Stewart J).

4. For the reasons outlined in relation to the section 60 ground of opposition, in my view it is not likely that use of the Trade Mark would be likely to mislead or deceive an ordinary or reasonable consumer of the relevant goods or services into believing that the Trade Marks and the Opponent’s Trade Marks are related.

Passing Off

1. Where a trade mark does not contravene section 18 of the ACL, it is unlikely to amount to passing off.[38] Justice Hill  noted in Re Equity Access Pty Ltd v WestpacBanking Corporation [1989] FCA 771 that:

   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: Taco Company of Australia Inc v. Taco Bell Pty Ltd (1982) 42 ALR 177, 206; Telmak Teleproducts (Aust) Pty Ltd v. Coles Myer Ltd (unreported) 21 July 1989 Full Federal Court at p 18.[39]

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

   [39] Re Equity Access Pty Ltd v WestpacBanking Corporation [1989] FCA 771, [40] (French J).

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

2. In consideration of the above reasons, the ground of opposition under section 42(b) has not been established.

Decision

1. Section 55(1) provides:

   Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

2. The Opponent has not established any of the nominated grounds of opposition. Accordingly, trade marks 2064464, 2064465 and 2108252 may proceed to registration one month from the date of this decision.

3. Should the Registrar be served with a notice of appeal before the registration of the Trade Marks, I direct that the registration of the Trade Marks 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.

Costs

1. Both parties sought an award of costs. As the Opponent was not successful in the opposition, I award costs against the Opponent under section 221 of the Act in accordance with the amounts detailed in Schedule 8 of the Trade Mark Regulations 1995 (Cth).

Timothy Brown

Hearing Officer

Delegate of the Registrar of Trade Marks

20 October 2022