Monster Energy Company v Fernbrew Pty Limited

Monster Energy Company (the opponent) opposed the registration of a trade mark by Fernbrew Pty Limited (the applicant) in relation to beverages. The opposition was brought under section 60 of the *Trade Marks Act 1995* (Cth), which allows for opposition if an earlier trade mark has acquired a reputation in Australia, and the use of the applicant's mark is likely to deceive or cause confusion due to that reputation. The opponent relied on its "MONSTER ENERGY" trade marks and various "BEAST" taglines.

The court was required to determine whether the opponent had established that its trade marks had acquired a reputation in Australia prior to the applicant's priority date of 1 April 2016. It also had to assess whether, by reason of any such reputation, the use of the applicant's trade mark would be likely to deceive or cause confusion among the relevant public. The court noted that section 60 does not require the goods or services to be similar, nor the trade marks to be substantially identical or deceptively similar, although in this instance, both parties were dealing with beverages.

The Hearing Officer found that the opponent had not established the necessary reputation in Australia for any of its trade marks prior to the priority date. Consequently, the ground of opposition under section 60 was not established. The Hearing Officer applied the principles from *Registrar of Trade Marks v Woolworths*, which state that confusion is likely if a number of persons are caused to wonder whether two products come from the same source, considering all surrounding circumstances including the use of the marks and the character of the probable acquirers.

The application for registration of the trade mark was permitted to proceed to registration one month from the date of the decision, unless an appeal was filed. The opponent was ordered to pay the applicant's costs.