Monster Energy Company v Disney Enterprises, Inc

[2017] ATMO 2

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 1502514 (3, 9, 14, 16, 18, 20, 21, 24, 25, 28, 29, 30, 41) - MONSTERS UNIVERSITY - in the name of Disney Enterprises, Inc.

Delegate:	Jock McDonagh
Representation:	Opponent: Stephen Rebikoff of Counsel instructed by Davies Collison Cave. Applicant: Written submissions by Sean McManis of Shelston IP.
Decision:	2017 ATMO 02 Trade Marks Act 1955; s52 opposition to registration; grounds under sections 42 and 60; reputation of Opponent's Trade Marks; ideas of trade marks quite distinct from each other; grounds not established.

Background

1. In these proceedings under section 52 of the Trade Marks Act 1995 (Cth) (‘the Act’) Monster Energy Company (‘the Opponent’) opposes registration of a trade mark (relevant details[1] which appear below) filed in the name of Disney Enterprises, Inc (‘the Applicant’):

   [1] The opposition is pressed only in relation to those goods which fall in Classes 25, 29 and 30 and not in relation to those goods and services which are classified in Classes 3, 9, 14, 16, 18, 20, 21, 24, 28, and 41.

Application No:           1502514
Priority Date:               17 July 2012

Goods:Class 25: Clothing; footwear; headgear; athletic shoes; baby wear; bandanas; baseball caps; bathing suits; beach cover-ups; beachwear; belts; bibs; bikinis; blazers; boots; bow ties; bras; caps; cardigans; chaps; cloth bibs; coats; dresses; ear muffs; exercise suits; fancy dress costumes; gloves; golf shirts; Halloween costumes; hats; head bands; head wear; hosiery; infant wear; jackets; jeans; jerseys; jogging suits; kerchiefs; leotards; leg warmers; mittens; neckties; neckwear; night shirts; night gowns; overalls; pyjamas; pants; panty hose; polo shirts; ponchos; rainwear; robes; sandals; scarves; shirts; shoes; skirts; shorts; slacks; slippers; sleepwear; socks; stockings; sweaters; sweat pants; sweat shirts; swimming costumes; swimsuits; tank tops; tights; track suits; track pants; T-shirts; underwear; vests; wrist bands; bolo ties with precious metal tips

Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; processed foods; compotes; processed fruits and vegetables; ready-to serve meals and semi-cooked meals; beverages in this class; cheese; cheese and cracker combinations; cheese spread; candied fruit; chips; chocolate milk; dairy products excluding ice cream; dips; dried fruits; drinking yoghurts; flavoured milk drinks, milk shakes, and yoghurt drinks; french fries; frozen meals consisting primarily of meat, fish, poultry or vegetables; fruit preserves; fruit-based snack food; fruit chips; fruit sauces; jams; jellies; milk beverages with high milk content; meats; nuts; peanut butter; potato chips; potato-based snack foods; powdered milk; raisins; snack mix consisting primarily of processed fruits, processed nuts and/or dried fruit including raisins; sauces; soup; soup mixes; vegetable chips; yoghurt;  flavoured, sweetened gelatin desserts

Class 30: Breakfast cereals; preparations made from cereals; bagels; bakery and frozen dairy desserts; bakery goods; bases for making milkshakes; beverages in this class; biscuits; bread; breakfast cereal; preparations made from cereal; bubble gum; cakes; cake mixes; candied fruit snacks; candies; cake decorations made of candy; cereal bars; cereal-based snack bars; chewing gum; chocolate; chocolate-based beverages; cocoa-based beverages; cones for ice cream; confectionery; cookies; corn-based snack foods; corn chips; crackers; deli sandwiches; edible decorations for cakes; frozen confections; frozen meals consisting primarily of pasta or rice; frozen yoghurt; fruit gummy candies; gingerbread; honey; ice cream; ice milk; ketchup; liquorice; lolly pops; macaroni; marshmallows; mayonnaise; muesli; muesli bars; muffins; muffin bars; mustard; noodles; oatmeal; pancakes; pancake mixes; pasta; pastries; pancake syrup; peanut  brittle; peppermint candy; pies; pizza; popcorn; popsicles; pretzels; puddings; ready-to-serve meals and semi-cooked meals; rice; rolls; salad dressings; sandwiches; sauces; sauces (condiments); sherbets; sorbets; spaghetti; spices; sweets; table syrup; tarts; tortillas; treacle; waffles; tea.
(‘the Goods’)

Trade Mark:                MONSTERS UNIVERSITY

(‘the Trade Mark’)

1. The Trade Mark was examined as prescribed by section 31 of the Act and advertised as accepted for possible registration on 18 July 2013 in the Australian Official Journal of Trade Marks.

2. On 18 September 2013, the Opponent filed Notice of Intention to Oppose followed, on 18 October 2013, by a Statement of Grounds and Particulars which detailed grounds under sections 42 and 60 of the Act.

3. Thereafter, on 24 December 2013, the Applicant filed a Notice of Intention to Defend.

4. The parties have filed evidence in support, evidence in answer, and evidence in reply which I further discuss below.

5. Both parties were informed of their right to be heard or to make written submissions; the Opponent elected to be heard and the Applicant filed written submissions.

6. The hearing was before me in Canberra on 10 August 2016.  Stephen Rebikoff of Counsel instructed by Davies Collison Cave appeared for the Opponent; the Applicant’s written submissions were prepared by Sean McManis of Shelston IP.

Evidence

1. The evidence is comprised of the following declarations:

   In Support

   Rodney Cyril Sacks, Chairman and Chief Executive Officer of Monster Beverage Corporation, the Opponent and Monster Energy Au Pty Ltd, made on 2 April 2014 with Exhibits RCS-1 to RCS-80; and

   Elizabeth Kate Godfrey, practitioner of the Supreme Court of Victoria and a Senior Associate of Davies Collison Cave made on 4 April 2014 with Exhibits EKG-1 to EKG-3 which comprise the declarations of:

   Rebecca Lee Dunbar, a Librarian employed by the firm of Davies Collison Cave, made on 8 August 2012 with Exhibits RLD-1 to RLD-20;

   Danielle Jade Roberts, a Lawyer employed by Rudstein Kron Lawyers (previously employed by Davies Collison Cave Law Pty Ltd) made on 9 July 2012 with Exhibits DJR-1 to DJR-48; and

   Affidavit of Adrian Heath Hunter, a Department Manager of KTM Motorcycles, made on 11 October 2012 with exhibits AH-1 to AH-19.[2]

   In Answer

   Kevin Daley, Principal Counsel for the Applicant, made on 28 September 2015 with Annexures A to E.

   In Reply

   Elizabeth Kate Godfrey made on 10 December 2015 with Exhibit EKG-4.

   [2] This is mis-identified as a statutory declaration by Ms Godfrey in her first declaration.

The Opponent & Opponent’s Trade Marks

1. The Opponent was previously called Hansen Beverage Company and owns and uses the trade mark MONSTER in relation to, inter alia, carbonated energy drinks (‘the Opponent’s Goods’). While the Opponent has a number of registered trade marks in Australia which comprise or consist of the word ‘monster’ in relation to ‘carbonated energy drinks’ and which Mr Sacks lists in his declaration, these registrations are not relevant to this matter because in the grounds under sections 42 and 60 the Opponent relies on the use, rather than the registrations, of its trade marks in Australia.

2. The Opponent first used its MONSTER and MONSTER ENERGY trade marks (‘the Opponent’s Trade Marks’) in the USA in 2002 and sales grew rapidly: sales of the Opponent’s Goods under the Opponent’s trade mark occupied approximately 35% of the market for similar goods in the USA at the time when Mr Sacks made his declaration.

3. Mr Sacks states:

   Today, my Company sells its MONSTER energy drinks to consumers throughout the United States, and approximately 114 nations and territories throughout the world, including:

   Australia, French Polynesia (including Tahiti), New Zealand, New Caledonia, Wallis and Futuna, Angola, Botswana, Kenya, Lesotho, Mauritius, Madagascar, Mozambique, Namibia, Reunion, Seychelles, South Africa, Swaziland, Tanzania, Uganda, Panama, Belize, Bolivia, Brazil, Chile, Colombia, Costa Rica, Ecuador, El Salvador, French Guiana, Guatemala, Guyana, Honduras, Nicaragua, Panama, Paraguay, Peru, Suriname, Venezuela, Uruguay, Antigua, Barbados, Bahamas, Bermuda, Cayman Islands, Dominica, French Guiana, Grenada, Guadeloupe, Jamaica, Martinique, Netherlands Antilles (including Aruba, Curacao, and Saint Maarten), Puerto Rico, St. Lucia, St. Maarten, Trinidad/Tobago, U.S.A. Virgin Islands, Albania, Andorra, Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Gibraltar, Greece, Greenland, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Macedonia, Malta, Monaco, Netherlands, Norway, Poland, Portugal, Romania, San Marino, Serbia, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey, Ukraine, the United Kingdom, Canada, Mexico, Azerbaijan, Georgia, Russia, Slovenia, Guam, Hong Kong, India, Japan, Korea, Macau, Philippines, Singapore, Afghanistan, Kuwait, and United Arab Emirates. In the United States, my Company’s MONSTER energy drinks are sold to consumers in all 50 states through more than 300,000 retail stores and outlets, and extensively through the Internet.

4. Concerning the use of the Opponent’s Trade Marks in Australia in relation to the Opponent’s Goods, Mr Sacks states:

   MONSTER energy drinks were first sold in Australia in 2006 by an Australian company named Bickford’s Australia Pty Ltd. Commencing in 2006, Bickford’s undertook advertising and marketing activities, including a media campaign, for MONSTER brand energy drinks and secured extensive distribution and sales of MONSTER brand energy drinks throughout Australia, including in Coles chain of retail stores, in "On the Run" convenience stores (Adelaide), and in Woolworths chain of stores. I do not have a full report of Bickford’s sales of MONSTER brand energy drinks, but did receive a report from Bickford’s that from June 2006 through February 2007, they sold more than 480,000 cans of MONSTER brand energy drinks in Australia. As the result of an agreement between Monster (then Hansen Beverage Company) and Bickford’s reached in December 2008, Monster acquired from Bickford’s all of Bickford’s rights in the MONSTER trade mark, including all trade mark applications lodged by Bickford’s for the MONSTER trade mark. Bickford’s first lodged trade mark applications to register the MONSTER trademark in Australia in May 2005. As a result of Monster's acquisition from Bickford’s of the MONSTER brand, Monster is also entitled to the benefit of all sales made and reputation developed through Bickford’s sales and marketing of MONSTER brand energy drinks from April 2006 through April 2009.

5. I note that the reputation in Australia of the Opponent’s Trade Mark is discussed in Hansen Beverage Company v Bickfords (Australia) Pty Ltd[3] and Hansen Beverage Co v Bickfords (Australia) Pty Ltd[4].  I also note that the reputation in Australia of the Opponent’s Trade Marks in relation to the Opponent’s Goods is not disputed by the Applicant and is extensive.

   [3] [2008] FCA 406.

   [4] [2008] FCAFC 181; (2008) 171 FCR 579; (2008) 251 ALR 1; (2008) 79 IPR 174.

The Applicant and the Applicant’s Trade Mark

1. In his declaration Mr Daley explains:

   The Disney Group is an American diversified multinational mass media and entertainment conglomerate. The origins of the Disney Group date back to 16 October 1923 when Walt Disney and Roy O Disney founded Disney Brothers Studio. The Disney Group is currently one of, if not the, best known producers of motion picture films. In addition, it is well known for its broadcast television network ABC and cable television networks such as Disney Channel, ESPN, A+E Networks and ABC Family, as well as being well known for its theme parks and resorts, and merchandising activities.

2. Concerning the genesis of the Trade Mark, Mr Daley states:

   In 2001, Pixar Animation Studios produced a computer-animated comedy film called MONSTERS INC. which, was released and promoted by the Disney Group. This premiered in the United States on 28 October 2001, was widely released on 2 November 2001 and was released in Australia on 26 December 2001. The film centres on two monsters, "Top Scarer," James P. "Sulley" Sullivan (voiced by John Goodman) and his one-eyed partner and best friend Mike Wazowski (voiced by Billy Crystal), who are employed at Monsters Inc. The film was widely acclaimed by critics and proved to be a major box office success with international revenue of over US$560 million and estimated Australian box office was over US$13 million.

   […]

   The prequel film to MONSTERS INC., called MONSTERS UNIVERSITY, was released in the United States on 8 June 2013 at the Seattle Film Festival and was released in Australia on 20 June 2013[5] at the Sydney Film Festival. Similar to its predecessor MONSTERS INC., it is a computer-animated comedy film, although MONSTERS UNIVERSITY was produced in 3D. It was again produced by Pixar Animation Studios and released and distributed by Walt Disney Pictures group. The main characters were again James P. "Sulley" Sullivan and Mike Wazowski, the two monsters that appeared in the Monsters Inc. movie.

   [5] This date is after the relevant date.

3. Mr Daley also provides examples of marketing in relation to both of the movies referred to above.

Onus

1. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[6]

   [6] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132]-[133].

2. The relevant date at which the grounds under section 52 of the Act must be considered is the filing date of the opposed application[7].

   [7] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

Section 60

1. In its Statement of Grounds and Particulars, the Opponent asserts:

   Reference is made to the details of the Opponent's reputation set out in the particulars in (1) above. [That:

   The Opponent's MONSTER trade marks are well known in Australia, the United States and internationally in over 80 countries for energy drinks and related goods, including nutritional supplements.

   The Opponent has sold more than 8 billion cans of MONSTER energy drinks worldwide and now sells more than 1.5 billion cans per year. Sales of the Opponent's MONSTER energy drinks have generated more than US$17 billion in total retail revenues worldwide, with estimated retail sales exceeding US$9 billion per year.][8]

   As a result of the Opponent's extensive reputation in Australia (as a result of significant exposure and/or use of one or more of the MONSTER trade marks in Australia since as early as 2004) and internationally in the MONSTER trade marks and the MONSTER brand, consumers are likely to be deceived or confused into believing that the goods sold under the "MONSTERS UNIVERSITY" trade mark are the Opponent's goods, somehow associated or affiliated with the Opponent or endorsed by or sponsored by the Opponent, when that is not the case.

   [8] Text within the square parentheses is imported from the section 42 ground.

2. Section 60 of the Act provides:

   60Trade 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.

   Note:For priority date see section 12.

3. Accordingly, the Opponent needs to establish to the Registrar’s satisfaction that the Opponent’s Trade Marks had a reputation in Australia before the priority date such that the use of the Trade Mark in Australia by the Applicant would deceive or cause confusion.  Although the reputation of the Opponent’s Trade Marks in Australia is conceded by the Applicant, for the sake of completeness I make the following remarks.

4. The meaning of the word ‘reputation’ within section 60 was discussed by Kenny J in McCormick & Company Inc v McCormick[9] (‘McCormick’):

   What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation  ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

   Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

   [9] [2000] FCA 1335; (2000) 51 IPR 102 at [81]-[82].

5. In order to establish reputation in Australia it is not necessary for the business of the Opponent to be conducted in Australia.  Lockhart J stated in Conagra Inc v McCain Foods (Aust) Pty Ltd[10] that “there must be evidence of local reputation, but business activities need not be carried on within the forum”.  On the same page, he continued:

   It is no longer valid, if it ever was, to speak of a business having goodwill or reputation only where the business is carried on. Modern mass advertising through television (which reaches by satellite every corner of the globe instantaneously), radio, newspapers and magazines, reaches people in many countries of the world. The international mobility of the world population increasingly brings human beings, and therefore potential consumers of goods and services, closer together and engenders an increasing and more instantaneous awareness of international commodities. This is an age of enormous commercial enterprises, some with budgets larger than sovereign states, who advertise their products by sophisticated means involving huge financial outlay. Goods and services are often preceded by their reputation abroad. They may not be physically present in the market of a particular country, but are well known there because of the sophistication of communications which are increasingly less limited by national boundaries, and the frequent travel of residents of many countries for reasons of business, pleasure or study.

   ... it is still necessary for a plaintiff to establish that his goods have the requisite reputation in the particular jurisdiction, that there is a likelihood of deception among consumers and a likelihood of damage to his reputation. But reputation 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 (see for example C and A Modes, Orkin and Midas).

   [10] [1992] FCA 159; (1992) 33 FCR 302 at page 342.

6. In McCormick[11] Kenny J explained the assessment of reputation:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 ("Gymboree"), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 ("Nettlefold"), in which Heerey J relied upon the public visibility of the applicant's marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

   [11] Op cit at [86].

1. Further, the particular marketplace within which the Opponent’s Trade Marks have their reputation must be considered – in Le Cordon Bleu B.V. v Cordon Bleu International Ltee[12] Heerey J said (albeit in relation to paragraph 28(a) of the now repealed Trade Marks Act 1995) that the reputation required to be demonstrated was:

   … one of which a significant number of persons were aware … What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.

   [12] [2000] FCA 1587; (2000) 50 IPR1.

2. Here the marketplace for the Opponent’s Goods is (because the goods are energy drinks) amongst those who are in their mid-teens and older: the target market for the Opponent’s Goods is not amongst children who might be less discriminating in their purchases[13].

   [13] M Sacks states that the target market Opponent’s Goods is young adults, primarily males, aged 28 to 34.

3. The assessment of the likelihood of deception or confusion is informed by the factors discussed in Registrar of Trade Marks v Woolworths[14] by French J (with references to deceptive similarity omitted):

   (i) […] it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question […] must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

   "...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

   [14] [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at [50].

4. Additionally, the terms ‘confusion’ and ‘deception’ refer to two difference mental states: in Pioneer Hi-Bred Corn Co v Highline Chicks Pty Ltd[15] Richardson J, said in the New Zealand Court of Appeal:

   ‘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.

   [15] [1979] RPC 410, at 423.

5. In Radio Corp Pty Ltd v Disney[16] Rich J said of the word 'confusion':

   In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it is shown that the name "Walt Disney" summons up a picture of "Mickey Mouse" and the picture of Mickey Mouse reminds them of "Walt Disney". The foundation of this is authorship no doubt. But somehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of "Mickey Mouse" with "Walt Disney". This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion. It is no part of our duty to state in definite terms precisely how the public will be misled or what kind of connection they will impute. Confusion involves indefiniteness of ideas.

   [16] [1937] HCA 38; (1937) 57 CLR 448 at 454,

6. The assessment of the likelihood of deception or confusion also involves the balancing of a number of factors: in Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi[17] the Registrar’s delegate observed that:

   The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.

   [17] [2012] ATMO 124 at [40]

7. In evidence and submissions the Opponent draws the Registrar’s attention to the various brand extensions by the Opponent into goods other than the Opponent’s Goods such as a low calorie/carbohydrate drink under the trade mark LO-CARB MONSTER ENERGY or one based on the Opponent’s Goods combined with fruit juice sold under the trade mark MONSTER RIPPER and also X-PRESSO MONSTER – a coffee-based energy drink:

   coffee + energy, a product combining an espresso-based energy drink with nitrous oxide to create a smoother texture that was released in Australia in July 2010.

8. In submissions Mr Rebikoff also drew attention to the various declarations and exhibits demonstrating the Opponent’s brand extension into clothing:

   Since 2005 the Opponent has also licenced the sale of clothing, headgear and protective equipment in Australia bearing the MONSTER trade marks, including caps, beanies, t-shirts, sweatshirts, pants, hooded coats, short-sleeved and longsleeved shirts, wrist bands, pads and gloves: See Sacks Declaration at [173]-[175] and exhibit RCS-65, Hunter Declaration at [22]-[23] and [30] and exhibits AH-9 and AH- 16. See also Sacks Declaration, exhibit RCS-80 at exhibit EJL-7.

   These products are licenced by the Opponent as a way of creating further exposure for the MONSTER brand and enabling consumers to connect more closely with the brand. See Sacks Declaration at [33] and [173]. For the same reason, the Opponent also licenses products such as replica racing suits and helmets, which are marketed extensively in Australian magazines and sold to Australian consumers who wish to emulate their sporting heroes sponsored by MONSTER. See Sacks Declaration, exhibit RCS-80 at exhibit SG-4, and Dunbar Declaration, exhibits RLD-2 and RLD-16.

9. The sporting heroes (and events) referred to by Mr Rebikoff include an F1 racing team, motorcycle racing events and teams, a team that contests in the Dakar Rally, and various powered watersports events in which the Opponent’s Trade Marks appear on uniforms, vehicles, banners, signage, and so forth.

10. Turning to the Opponent’s assertions of the similarity of the Trade Mark to the Opponent’s Trade Marks, Mr Rebikoff submits that:

    “There can be no question that the word MONSTERS is the dominant and distinguishing feature of the Opposed Mark.  It appears at the start of the mark and is a striking and distinctive term in the context of beverages, clothing and associated goods in classes 25, 29 and 30: cf Re London Lubricants(1920) Ltd’s Application (1925) 42 RPC 264 at 279. The second element of the Opposed Mark – the word UNIVERSITY – is a descriptive term[18] that does not alter the essential character of MONSTERS as the most prominent and memorable feature of the Opposed Mark.”

    [18] Relying on John Fitton & Company Limited’s Application (1949) 66 RPC 110; Baron Phillipe de Rothschild SA’s Application [1988] IPD 10,096; Polo Textile Industries Pty Ltd v Domestic Textile Corp Pty Ltd (1993) 42 FCR 227; and, Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198.

11. However, Mr Rebikoff does not explain what the word ‘university’ is descriptive of within the Goods; in my view, it is difficult to imagine what the word ‘university’ is actually descriptive of within the Goods and hence why it should be discounted in the comparison of the trade marks.  Moreover, in my consideration the word ‘monsters’ within the Trade Mark will be viewed by nearly all people as qualifying the word ‘university’ such that the Trade Mark will be read by people as a “monsters’ university”: denoting a university for monsters.  This is quite an unusual and novel idea.  As such, the Trade Mark is most likely to be apprehended as having a quite distinct corporate identity and therefore unlikely to be susceptible to the kind of analysis (and consequences) suggested by Mr Rebikoff.

12. In contrast Mr McManis submits (and I agree) that:

    In Australian Homestay Network Pty Ltd v Homestay Network Pty Ltd [2015] ATMO 28 (31 March 2015) Hearing Officer Thompson quoted from the decision of Hearing Officer Kirov in Cars on Demand IP Pty Ltd v Cars on Demand Limited [2014 ATMO 87, where the view was expressed:

    A finding of deceptive similarity in wholly contained trade marks is not automatic and may depend on a number of factors. These include:

    (a) The extent to which the shared element has retained its identity as an essential feature of the trade marks (See: Bulova Accutron Trade Mark [1969] RPC 102 (Ch D).

    (b) The distinctiveness of the common element/s and the distinctiveness of additional element/s. If the additional element changes the idea of the trade mark, this may point towards a finding that the marks are not deceptively similar.

    (c) The nature of the additional element(s) – if the additional element(s) is/are particularly distinctive then the marks will most likely not be deceptively similar, even though they share a common element. And vice versa – if the additional element has a low level of distinctiveness then the marks are more likely to be deceptively similar (See: Application by Coles Myer Ltd, (1993) 26 IPR 577, BRATS: BONZA BRATS)

    (d) The meaning behind the trade marks – where an additional element changes the meaning of the trade mark or the concept behind it then the trade marks are less likely to be deceptively similar.

    (e) The placement, within the trade mark, of the common and non-distinctive elements, including size of text and any other elements may provide a different context and consequently alter the overall impression of the trade mark.

    (f) When both the common element and additional element are distinctive – each case will turn on its own facts. See BAREFOOT: BAREFOOT RADLER. E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934 at 63 per Flick J.

    (g) Consideration must be given to the surrounding context of the goods and services, such as methods of sale and common trade techniques. Are customers purchasing goods by name? How are the goods presented? Who are the consumers? (General or specialist?).

13. Further, in relation to the latter consideration, in the particular circumstances of this matter, and the close association of the Opponent’s Trade Marks with sporting teams, events and individuals, considerations of the kind associated with the well-known trade marks of sporting teams, events and individuals come into play.  One of these considerations is that sports fans tend to be what the word ‘fan’ suggests: fanatics.  As such they are likely to be well aware of the trade marks associated with the sporting teams, events and individuals that they follow (particularly where these trade marks have a reputation) and consequently less likely to be confused or deceived because of a similarity between those trade marks associated with the sporting teams, events and individuals that they follow and the trade mark of another person.  To adopt the analysis in C A Henschke & Co v Rosemount Estates Pty Ltd[19] concerning ‘involved’ and ‘uninvolved’ consumers, if consumers are involved with a sporting team, event or individual to the extent that they associate and purchase the Opponent’s Goods sold under the Opponent’s Trade Marks because of that association and further seek out goods in Classes 25, 29 or 30 to purchase on the basis of those trade marks, it is less likely that they will confuse the Trade Mark with the Opponent’s Trade Marks.  This is particularly so when the Trade Mark forms a corporate identity or connotation which is distinct from those of the Opponent’s Trade Marks.

    [19] [2000] FCA 1539; [2000] AIPC 91-640; [2001] ATPR 41-793; (2000) 52 IPR 42 at [19]

14. The Opponent has accordingly not satisfied me that the use of the Trade Mark would confuse or deceive because of the reputation of the Opponent’s Trade Marks.

15. The Opponent has not established its ground under section 60 of the Act.

Section 42

1. In its Statement of Grounds and Particulars the Opponent asserts:

   The Opponent's MONSTER trade marks are well known in Australia, the United States and internationally in over 80 countries for energy drinks and related goods, including nutritional supplements.

   The Opponent has sold more than 8 billion cans of MONSTER energy drinks worldwide and now sells more than 1.5 billion cans per year. Sales of the Opponent's MONSTER energy drinks have generated more than US$17 billion in total retail revenues worldwide, with estimated retail sales exceeding US$9 billion per year.

   Based on the Opponent's reputation in Australia in relation to energy drinks, nutritional supplements and related goods, including a range of clothing and headgear, consumers are likely to be mislead or deceived into believing that the goods sold under the "MONSTERS UNIVERSITY" mark particularly the goods specified in classes 25, 30 and 32 of the Opposed mark are those of the Opponent or somehow associated or affiliated with the Opponent in breach of section 18 of the Australian Consumer Law 2010 (Cth). Selling and offering for sale the goods specified in classes 25, 30 and 32 of the Opposed mark under the "MONSTERS UNIVERSITY" mark also suggests that the trade mark Applicant and their goods are associated or affiliated with the Opponent or that the Applicant has obtained the Opponent's sponsorship or approval to use the "MONSTERS UNIVERSITY" trade mark, when that is not the case. This conduct is in breach of section 29 of the Australian Consumer Law 2010 (Cth).

2. Section 42 of the Act relevantly provides:

   42Trade mark scandalous or its use contrary to law

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

   […]

   (b)its use would be contrary to law.

3. The onus is on the Opponent to establish that use of the Applicant’s trade mark would be, rather than could be, contrary to law on the balance of probabilities.[20]

   [20] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

4. In the present matter the Opponent has failed to establish a ground of opposition under section 60 of the Act. As the test for misleading or deceptive conduct under section 18 of the Australian Consumer Law (‘ACL’) is a more stringent test (at the standard ‘mislead or deceive’) than that for ‘deception or confusion’ under section 60,[21] I am satisfied that the Opponent has also failed to establish that the use of the Applicant’s Trade Mark would be contrary to section 18 of the ACL.

   [21] See, eg: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).

5. Where a trade mark does not run afoul of section 18 of the ACL, neither will it run afoul of section 29 of the ACL. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered - in connection with the superseded Trade Practices Act1974 (‘the TPA’) - that ‘the Court’s conclusion on section 52 would necessarily carry with it a conclusion on sections 53(c) and (d)’[22]. Section 53(d) of the TPA is the equivalent provision to section 29(1)(h) of the ACL.

   [22] [2003] FCA 104, [107].

6. The Opponent has not established its opposition under section 42 of the Act.

Decision

1. Section 55 of the Act relevantly provides:

   55Decision

   (1)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.

   Note:For limitations see section 6.

2. The Opponent has not established a ground of opposition.

3. The trade mark application may then proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should be in accordance with the Court’s order or direction.

Costs

1. Both parties requested their costs.  As it was the unsuccessful party, I award costs against the Opponent at the Official Scale set out in Schedule 8 to the Trade Mark Regulations 1995.

Jock McDonagh
Hearings Officer
Trade Marks Hearings
10 January 2017