Monster Energy Company v Lukasz Grzegolec

[2024] ATMO 147

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 2150045 (25) – BEASTHAMMER – in the name of Lukasz Grzegolec

Delegate:

Nicholas Smith

Representation:

Opponent: Stephen Rebikoff, Senior Counsel, instructed by Davies Collison Cave Pty Ltd

Applicant: Phillip Orth of Wynnes Patent and Trade Mark Attorneys Pty Ltd

Decision:

2024 ATMO 147

Trade Marks Act 1995 (Cth) - section 52 opposition: ss 42(b), 44 and 60 considered – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Monster Energy Company (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Lukasz Grzegolec (‘Applicant’): 

Application Number:	2150045
Filing Date[1]:	20 January 2021
Goods:	Class 25: Jackets (clothing); Jerseys (clothing); Jump suits (clothing); Kerchiefs (clothing); Layettes (clothing); Knitwear (clothing); Mantles (clothing); Mitts (clothing); Money belts (clothing); Motorists' clothing; Muffs (clothing); Occupational clothing (other than for protection against accident or injury); Ready-made clothing; Slips (clothing); Thermally insulated clothing (not specifically adapted for protection against accident or injury); Three piece suits (clothing); Waterproof clothing; Water-resistant clothing; Weather resistant outer clothing; Weatherproof clothing (not specifically adapted for protection against accident or injury); Women's clothing; Woollen clothing; Wristlets (clothing); Arm warmers (clothing); Articles of clothing made from wool; Articles of clothing made of leather; Articles of waterproof clothing; Articles of water-resistant clothing; Articles of weatherproof clothing; Articles of windproof clothing; Athletic clothing; Casual clothing; Children's clothing; Clothes; Clothing; Clothing for gymnastics; Clothing for sports; Clothing for surfing; Clothing of leather; Clothing, not being protective clothing, incorporating reflective or fluorescent elements or material; Collars (clothing); Cowls (clothing); Cyclists' clothing; Dance clothing; Denims (clothing); Headbands (clothing); Ladies clothing; Leather belts (clothing); Men's clothing; Playsuits (clothing); Sports clothing (other than golf gloves); Belts (clothing); Boys' clothing; Gabardines (clothing); Gloves (clothing); Halters (clothing); Motorcyclists' clothing (other than for protection against accident or injury); Ski clothing (other than for protection against injury); Stuff jackets (clothing); Wraps (clothing); Clothing for swimming; Ear muffs (clothing); Girl's clothing; Pants (clothing); Clothing incorporating electronic sensors; Smart clothing (clothing which incorporates digital components); Clothing incorporating digital components; Smart garments (clothing which incorporates digital components); Clothing incorporating LEDs; Smart clothing with built-in digital components; Thermal clothing; Gym suits; Gym shorts; Swimming shorts; Athletics shorts; Bermuda shorts; Denim shorts; Short pants; Short-sleeve shirts; Boxer shorts; Sweat-absorbent underwear; Thermal underwear; Jackets for men; Jackets for women; Rugby tops; Tank tops; Top hats; Track tops; Vest tops; Halter tops; Polo tops; Wind resistant tops; Chemise tops; Beach hats; Beach robes; Beach wraps; Beach caps; Beach dresses; Beach clothes; Beach clothing; Leggings (leg warmers); Leg warmers; Party hats (headgear, not of paper); Wristbands (clothing); Wristbands (sweatbands); Tracksuits; Hoods (clothing); Detachable hoods; Swimming caps; T-shirts; Printed t-shirts; Polo shirts; Sports shirts; Cardigans; Sports jackets; House coats; Leather coats; Sheepskin coats; Suit coats; Tail coats; Car coats; Coats; Half-coats; Weatherproof coats; Riding coats; Jumper suits; Jumper dresses; Polo neck jumpers; Sports jumpers; Hooded sweatshirts; Sweatshirts; Tennis clothing; Dungarees; Trousers; Trouser shorts; Casual trousers; Leggings (trousers); Ski trousers; Hockey shorts; Rugby shorts; Shorts; Surf shorts; Surfing shorts; Bras; Adhesive bras; Ski pants; Shapewear (slimming underwear); Slimming underwear; Disposable underwear; Underwear; Jockstraps (underwear); Briefs; Swim briefs; Thongs (clothing); Swimming trunks; Bathing trunks; Sock suspenders; Slipper socks; Socks; Sports socks; Footless socks; Thermal socks; Swimwear; Beachwear; Sarongs; Swimsuits; Rash vests; Wetsuits for surfing; Wetsuits for surface watersports; Eye masks; Waterproof headgear; Eye shields (headgear); Sports headgear (other than helmets); Active wear; Athletics vests; Athletics hose; Balaclavas; Bandanas (neckerchiefs); Bands (for wear); Sweat bands; Baseball caps; Baseball shirts; Bath robes; Bath suits; Bathing suits; Bathing suit cover-ups; Bathing wraps; Bath wraps; Bathing jackets; Bike pants; Bikinis; Blazers; Blouses; Blousons; Body suits; Bonnets (headwear); Breeches for wear; Bushjackets; Business suits; Caps being headwear; Jackets for casual wear; Casual jackets; Casual shirts; Casualwear; Cycling knicks; Dancewear; Denim wear; Driving gloves; Embroidered clothing; Exercise wear; Water repellent gloves for use by motor cyclists; Gloves for cyclists; Gloves for skiers; Gymnastic suits; Gymwear; Latex clothing; Leather garments; Leisure wear; Motorcycle riding suits; Neckwear; Neck gaiters; Overalls; Jumpers (pullovers); Pullovers; Quilted jackets; Raincoats; Rash guards; Shirt jackets; Shoulder wraps; Ski gaiters; Ski gloves; Ski jackets; Ski suits; Wet suits for water-skiing; Ski wear; Skull caps; Slumber caps; Snowsuits; Sports caps; Sportswear (other than golf gloves or helmets); Sportswear; Suits made of leather for wear by motorcyclists; Sun hats; Sun visors (headwear); Sweat pants; Jumpers (sweaters); Sports sweaters; Polo sweaters; Sweaters; Sweatpants; Swimming costumes; Swimming robes; Swimming suits; Track pants; Underclothes; Underclothing; Underclothing for women; Underclothing for men; Slips (underclothing); Sweat-absorbent underclothing; Corsets (underclothing); Teddies (underclothing); Bodies (underclothing); Uniforms for athletes; Waistbands; Riding waistcoats; Waistcoats; Waterpolo caps; Waterproof suits for motorcyclists; Weatherproof jackets; Wet suits for windsurfing; Windproof jackets; Sleeveless tops; None of the aforesaid being athletic footwear or athletic shoes. (‘Applicant’s Goods’)
Trade Mark:	BEASTHAMMER	(‘Trade Mark’)

[1] Also known in this decision as the ‘relevant date’.

1. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2. Following the advertisement of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars on 30 August 2022 (‘SGP’).  The SGP raised grounds of opposition under ss 42(b), 44, 60 and 62A.  The Applicant filed a Notice of Intention to Defend on 29 September 2022. 

   Evidence

3. The parties filed the following evidence in this matter:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support
Elizabeth Kate Godfrey, principal at Davies Collison Cave, legal representatives of the Opponent (‘Godfrey 1’)	22 December 2022	EKG-1[2]
Paul J Dechary, Deputy General Counsel of the Opponent (‘Dechary declaration’)	11 December 2019	PJD-1 to PJD-5[3]
Sam Anthony Pontrelli, Senior Vice President of Marketing for the Opponent (‘Pontrelli Declaration’)	1 August 2017	SAP-1 to SAP-38
Sam Peter Thiele, Country Manager, Oceania or Monster Energy AU Pty Ltd (Thiele Declaration’)	11 August 2017	SPT-1 to SPT-32
Evidence in answer
Philipp Orth, Attorney at Wynnes Patent and Trade Marks Attorneys (‘Orth declaration’)	30 February 2023	PSO-01 to PSO-04
Evidence in reply
Elizabeth Kate Godfrey (‘Godfrey 2’)	5 June 2023

[2] The Dechary declaration is exhibit EKG-1 to Godfrey 1 however, while it technically is an exhibit, given its size (over 2000 pages) it makes sense to list it as a second declaration.  It was also filed by the Opponent in connection with an opposition (now resolved) to Trade Mark Application No. 1969206 BLACK BEAST.

[3] The Pontrelli and Thiele declarations are exhibits PD-2 and PD-3 to the Dechary declaration however, while they are technically exhibits, given their sizes it makes sense to list them as declarations.  These declarations were filed by the Opponent in connection with an opposition to Trade Mark Application No. 1762086 REAL BEAST.

1. Once the time allowed for filing evidence had ended, the parties were given an opportunity to request a hearing in this matter or a decision without hearing. The parties requested an oral hearing in this matter.  The matter was set down for a hearing in Canberra on 2 July 2024 and the matter was allocated to me.  In line with usual practice, a notice was sent to the parties on 7 May 2024 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 18 June 2024 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 25 June 2024 (‘Applicant’s Submissions’).  At the hearing Stephen Rebikoff of Counsel (instructed by Davies Collison Cave Pty Ltd) represented the Opponent and Philipp Orth of Wynnes Patent and Trade Mark Attorneys Pty Ltd represented the Applicant, both appearing by video-conference.

2. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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. 

   In doing so I take account of   the written record comprised of the materials mentioned in the preceding paragraphs and any oral submissions made by the parties.

   The Opponent

3. The Opponent formerly known as Hansen Beverage Company, is a subsidiary of the Monster Beverage Corporation, and is primarily in the business of making and selling energy drinks.

4. The Opponent is the owner of the trade marks listed below.  As each trade mark is identical and only covers different goods and services, for the purposes of this decision I treat them as a single trade mark (‘Opponent’s Trade Mark’).  The goods and services for which the Opponent’s Trade Mark is registered are collectively referred to as the ‘Opponent’s Goods and Services’.  The Opponent provides evidence of ownership of additional registered trade marks however these trade marks, not being clearly particularised in the SGP, have no relevance to the present proceeding.

Number	Trade Mark	Priority Date	Goods or Services
1645422	UNLEASH THE BEAST!	5 Sept 2014	Class 25: Clothing, including, tops, shirts, long-sleeved shirts, t-shirts, hooded shirts and hooded sweatshirts, sweat shirts, jackets, pants, bandanas, socks, sweat bands and gloves; headgear, including, hats and beanies
1954237	UNLEASH THE BEAST!	14 Mar 2018	Class 41: Entertainment services in the nature of sporting events and competitions, electronic sporting events and competitions, and music performances and events
2062356	UNLEASH THE BEAST!	14 Mar 2018	Class 35: Promoting goods and services in the sports, motorsports, electronic sports, and music industries through the distribution of printed, audio and visual promotional material; promoting sports, electronic sports and music events, performances and competitions for others

1. The Opponent’s EIS consists of a series of declarations that nest within each other, filed in respect of a variety of opposition proceedings the Opponent has been part of through the years.  Some of them are close to 7 years old.  Much of the material annexed relates to the use of trade marks that consist of or contain the word ‘Monster’ or  (‘Claw device’), rather than showing any use of any mark that corresponds to the Trade Mark in any way.  While I accept that the Opponent’s Trade Mark is a common tag-line used in connection with beverages sold or advertised under the  Monster-formative marks or the Claw device and hence the evidence of the history and sale of the Opponent’s beverage products (many of which bear the Opponent’s Trade Mark) is relevant, the Opponent has filed hundreds of pages of material that shows no use of the Opponent’s Trade Mark or any other mark corresponding to the Trade Mark whatsoever.  This evidence, showing use of the Monster-formative marks or Claw device is not any way relevant to any of the particularised grounds of opposition. 

2. Furthermore, even to the extent that such evidence is potentially relevant, the Opponent’s evidence is of such volume and repetitiveness to be excessive and unnecessary and I fail to identify any purpose in filing this evidence other than increasing the costs of the Applicant (or other parties against whom this material is filed).  An example of material that is of borderline relevance and utterly unnecessary is paragraph 88 to the Dechary declaration extracted below:

   At the 2018 X Games, Monster sponsored athletes won 15 medals, including 7 gold, 3 silver, and 5 bronze. At the 2018 Winter X Games, Monster sponsored athletes won 17 medals, including 10 gold, 3 silver, and 4 bronze. At the 2017 X Games, Monster sponsored athletes won 14 medals, including 4 gold, 7 silver and 3 bronze. At the 2017 Winter X Games, Monster sponsored athletes won 10 medals, including 3 gold, 3 silver and 4 bronze. At the 2016 X Games, Monster sponsored athletes won 19 medals, including 6 gold, 8 silver, and 5 bronze. At the 2016 Winter X Games, Monster sponsored athletes won 13 medals, including 7 gold, 5 silver, and 1 bronze. At the 2015 Summer X Games, Monster sponsored athletes won 19 medals, including 7 gold, 4 silver, and 8 bronze. At the 2015 Winter X Games, Monster- sponsored athletes won 11 medals, including 2 gold, 6 silver, and 3 bronze, and including Monster-sponsored athlete Tucker Hibbert’s 100th Pro National Snocross victory. At the 2015 Summer X Games, Monster sponsored athletes won 19 medals, including 7 gold, 4 silver, and 8 bronze. At the 2014 Winter X Games, Monster sponsored athletes won 15 medals, including 5 gold medals. At the 2014 Summer X Games, Monster sponsored athletes won 9 medals, including 3 gold medals. At the 2013 Winter X Games, Monster sponsored athletes won 16 medals, including 3 gold medals. The Summer X Games held in 2013 consisted of events held in Foz do Iguacu, Brazil (April 18-21), Barcelona, Spain (May 9-12), Munich, Germany (June 27-30) and Los Angeles, California (August 1-4). In Brazil Monster athletes won 14 medals, including 6 gold medals, 4 silver medals and 4 bronze medals. In Barcelona, Monster athletes won 10 medals, including 3 gold medals, 3 silver medals and 4 bronze medals. In Munich Monster athletes won 12 medals, including 5 gold medals, 5 silver medals and 2 bronze medals. In Los Angeles, Monster athletes won 16 medals, including 5 gold medals, 7 silver medals and 4 bronze medals.

3. On Page 58 of the Dechary declaration, the Opponent provides a page and a half of evidence (supported by several pages of exhibits) of its sponsorship of a single monorail train in Las Vegas, commencing in 2003 and concluding in 2009.  While such material may technically be relevant to establishing reputation in the Opponent’s Trade Mark, as the train bore the Opponent’s Trade Mark, the decision to include evidence about a single transport sponsorship, in another jurisdiction (albeit one frequented by tourists) that apparently concluded 12 years before the relevant date, appears to be a further example of filing evidence for evidence’s sake rather than material that could rationally affect the probability of the Registrar being satisfied that a requirement of a ground of opposition is established.  The Opponent’s decision to include the same evidence, a second time, in paragraph 96 to 100 of the Thiele declaration is clearly unnecessary. 

4. Numerous statements in the Dechary declaration regarding the history of the Opponent and use of the Opponent’s various trade marks are repeated, almost verbatim, in the Thiele and Pontrelli declarations.

5. It is unclear why the Opponent has chosen to file vast amounts of evidence that is either irrelevant, repetitive or unnecessary.  This practice has provided it with no forensic advantage and would undoubtedly have increased the costs incurred by the Applicant in reviewing and responding to this evidence. 

6. On 6 October 2022 this office issued a direction to the Opponent as follows: ‘If more than 50 pages of evidence are submitted by a party, a summary of the evidence, referring back to the grounds set out in the filed Statement of Grounds and Particulars and the relevant page number within the documents filed, must be provided with the party’s written summary of submissions to be relied on at the hearing.’ The Opponent has not complied with this direction, further reinforcing my concern with the manner in which the Opponent’s evidence has been prepared.[4]

   [4] When I raised this issue with Counsel for the Opponent at the oral hearing, he acknowledged that the direction had not been complied with.  Subsequently, by e-mail sent on 2 July 2024 the solicitors for the Opponent wrote to this office, relevantly stating ‘Although the Opponent did not provide a summary of evidence in a separate document, the Opponent’s written submissions at [49] to [73] summarise the evidence (with paragraph and exhibit numbers) under the Section 60 section of the written submissions.’.  While the Opponent did provide detailed written submissions that refer to the evidence, this did not amount to compliance with the direction, which specifically directed the provision of a separate document, referring back to each of grounds set out in the filed SGP and the relevant page numbers, to be filed at the same time as the submissions.  This direction has a specific purpose and merely referring to evidence (no matter how detailed) in a party’s submissions does not amount to compliance with such a direction.

7. The relevant claims/statements in the Dechary declaration can be summarised as follows:

   ·     The Opponent promotes its energy drinks under a variety of marks including its Monster-formative marks, Claw device, and various marks that feature the word ‘Beast’ such as ‘Rehab the best!’, ‘Hydrate the Beast’ and Opponent’s Trade Mark (‘Beast Marks’) (Collectively ‘MONSTER Trade Marks’).  

   ·     Energy drinks bearing the above trade marks were first launched in the United States of America in April 2002. In 2003 the Opponent began selling energy drinks outside of the United States, and at present, sells its energy drinks to consumers in more than 120 countries. Energy drinks bearing the MONSTER Trade Marks are the second best-selling energy drink by dollar value worldwide.

   ·     The Opponent’s energy drinks were first sold in Australia in 2006 by the company Bickford’s Australia Pty Ltd (‘Bickford’). In December 2008 the Opponent acquired all the 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 are significant and have grown consistently since 2009.

   ·     The Opponent does not utilise conventional marketing methods, but instead focuses on athlete endorsement and sponsorship of athletic competitions and other live events. Although the Opponent’s marketing does not primarily involve television and radio advertising, it is evident that MONSTER Trade Marks receive significant exposure through television and internet coverage of the sporting events, and from its own promotion via the Opponent’s website, Facebook page, Twitter account, Instagram and YouTube channel.  

   ·     The Opponent also promotes the MONSTER Trade Marks on licensed clothing products, and point of sale material, including signage, fridges, stickers and various merchandise.

   ·     The Opponent’s spending in respect of the marketing and promotion of the MONSTER Trade Marks is significant, with a large amount of expenditure in Australia.

1. The Exhibits to the Dechary declaration demonstrate use of the MONSTER Trade Marks, in connection with sponsored athletes and various sports events and on its social media pages, in third party articles.  The Thiele and Pontrelli declarations merely repeat much of the material in the Dechary declaration, including the history of the Opponent, its ownership of its marks and provide further examples of their usage.  I note that the Exhibits to the Dechary declaration indicate significant use of the Opponent’s Trade Mark as a tag-line in connection with the Monster-formative and claw marks, including on the Opponent’s canned energy drinks and marketing materials, while the evidence of use of the other Beast Marks is much less significant.

2. Finally Godfrey 1 and 2 provide additional evidence of use of the Opponent’s Trade Marks on the Opponent’s Facebook and Instagram pages, attach two photos, apparently in 2012, of a single baseball cap that includes the Opponent’s Trade Mark in its swing tag, and make submissions and references to the Register that are unnecessary to summarise in this decision.

3. Following my review of the 2000 pages that comprise the EIS, I reach the same conclusion asthe delegate in Monster Energy Company v USA Nutraceuticals Group Inc[5], namely that the Opponent is an extraordinarily successful company and the Opponent’s Trade Mark is a trade mark which has acquired a significant reputation in connection with the MONSTER brand.  I consider that the reputation is linked to energy drinks and, in the absence of any evidence of apparel sales, does not extend to clothing.  The Opponent (at paragraph 176 of the Dechery declaration and repeated at paragraph 45 of the Thiele declaration) asserts sales of clothing in Australia but provides no evidence of this ever occurring or the quantum of sales.  The Opponent also asserts extensive distribution of promotional apparel in Australia bearing the Opponent’s Trade Mark or the Beast Marks however it provides no evidence of the quantum of apparel distributed – rather its evidence of reputation appears to be mostly sponsored athletes and other individuals engaged by the Opponent wearing apparel that contains a number of MONSTER Trade Marks including the Opponent’s Trade Mark.  In the absence of any documentary evidence of clothing sales, the mere distribution of promotional apparel among its own employees and recipients of sponsorship is manifestly insufficient in establishing a reputation in the Opponent’s Trade Mark in Australia in respect of apparel.

   [5] [2017] ATMO 22, [53] (Hearing Officer Wilson).

4. I note in the Opponent’s Submissions, the Opponent refers to two cases in which it is submitted that the Opponent’s reputation extends to apparel, being Monster Energy Company v Peter Balthazar[6] and Rodney Jane Racing Pty Ltd v Monster Energy Company[7].  The latter merely states that the Opponent has a ‘strong reputation as a sponsor of motorsports, including teams and individual drivers and riders. It is also associated with motorsport clothing and equipment.’  It does not conclude that the Opponent’s Trade Mark has a reputation in apparel.  The former reaches its conclusions in respect of marks concerning or consisting of the Claw device, which are used in a much more distinctive manner than the Opponent’s Trade Mark which is, in essence, a tag-line.

   [6] [2020] ATMO 123, [29] (Hearing Officer McDonagh).

   [7] [2019] FCA 923, [149] (O’Bryan J).

   The Applicant

5. The Orth declaration provides very little evidence about the Applicant, rather it makes submissions regarding the risk of confusion and contains a number of extracts from the Register of Trade Marks, overseas trade mark registries and Google in support of those submissions. It is not necessary to summarise the submissions made in the Orth declaration as they are essentially repeated in the Applicant’s Submissions.

   Grounds of Opposition, Onus and Standard of Proof

6. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 60 and 62A however in its written submission indicates that it does not press the s 62A ground.  To successfully oppose the application the Opponent needs to establish one of the nominated grounds.  

7. The onus of proof in an opposition rests upon the Opponent.[8]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[9]  The date at which the rights of the parties are to be determined is the relevant date, which is also the priority date for the purposes of ss 44 and 60.[10]

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

   [9] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [10] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J), see also s 29(1) Trade Marks Act 1995 (Cth).

   Discussion

   Section 44

8. The relevant provisions of s 44 are reproduced below:

   Section 44 - Identical etc. trade marks

   (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)it 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.

   Note 1: For deceptively similar see section 10.

   Note 2: For similar goods see subsection 14(1).

   (2)…

   (3)If the Registrar in either case is satisfied:

   (a)that there has been honest concurrent use of the 2 trade marks; or

   (b)that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

   Note:  For limitations see section 6.

   (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

   (a)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)             the similar goods or closely related services; or

   (ii)            the similar services or closely related goods; and

   (b)ending on the priority date for the registration of the applicant's trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2: For predecessor in title see section 6.

   Note 3: For priority date see section 12.

   Section 10 - Definition of deceptively similar

   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.

9. To successfully oppose the application pursuant to s 44 the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies, being a trade mark registered or sought to be registered by a person other than the Applicant:

   ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar goods, and/or services which are closely related to, the Applicant’s Goods (‘the third requirement’).

10. In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark.  In the present case as the Applicant has provided no evidence of use prior to the relevant date or other circumstances that would make registration of the Trade Mark proper it is not necessary to consider these provisions.

11. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Mark which has a priority date that is earlier than the priority date of the Trade Mark and is registered for the same goods (clothing) as the Applicant’s goods.  The first and third requirements are satisfied. 

    Substantially identical and/or deceptively similar

12. I will now consider whether the Trade Mark is substantially identical to the Opponent’s Trade Marks.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

    In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[11]

    [11] [1963] HCA 66, [12].

13. The Trade Mark and the Opponent’s Trade Marks are set out below:

    BEASTHAMMER             UNLEASH THE BEAST!

14. On a side-by-side comparison there are clear differences which mean that a total impression of dissimilarity emerges from a comparison of the Opponent’s Trade Mark and the Applicant’s Trade Mark.  Indeed the only common element is the shared use of the word ‘beast’.  I move then to consider whether the Trade Mark and Opponent’s Trade Mark are deceptively similar.

15. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

    On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. 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].[12]

    [12] Ibid [13].

16. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[13] conveniently stated the relevant principles, which may be summarised as follows:

    [13] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

    (a)the resemblance between the two marks must be the cause of the likely deception or confusion;[14]

    [14] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ).

    (b)in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[15]

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

    (c)the marks should not be compared side by side;[16]

    (d)the effect of spoken description must be considered; if a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods (or services), then similarities both of sound and of meaning may play an important part;[17]

    (e)the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[18]

    (f)the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[19]

    (g)the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[20]

    (h)“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers; [21]

    (i)the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[22]

    (j)it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[23]

    (k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[24] and

    (l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[25]

    [16] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).

    [17] Ibid.

    [18] Ibid.

    [19] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ).

    [20] Shell (n 8), 415.

    [21] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).

    [22] Campomar Sociedad Limited v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

    [23] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] (‘Woolworths’) (French J) restating principles from Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-595 (Kitto J).

    [24] Australian Woollen Mills Ltd (n 15).

    [25] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) citing Australian Woollen Mills (n 15), 657.

17. Furthermore the Court, in the same case, noted the following[26]:

    In considering the likelihood of confusion or deception, "the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit"[27]. In addition to the degree of similarity between the marks, the assessment takes account of the effect of that similarity considered in relation to the alleged infringer's actual use of the mark[28], as well as the circumstances of the goods, the character of the likely customers, and the market covered by the monopoly attached to the registered trade mark[29]. Consideration of the context of those surrounding circumstances does not "open the door" for examination of the actual use of the registered mark, or, as will be explained, any consideration of the reputation associated with the mark[30]

    [26] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [33] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

    [27] New South Wales Dairy Corporation v Murray-Goulburn Co‑operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549, 589 (emphasis added), approved in Henschke (2000) 52 IPR 42, 62 [44], Hashtag Burgers [2020] FCAFC 235; (2020) 385 ALR 514, 532 [64], Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] FCAFC 8; (2021) 157 IPR 230, 238 [27], PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 285 FCR 598, 622 [97] (see also 626 [111]) and Swancom (2022) 168 IPR 42, 56 [73].

    [28] Act, s 68.

    [29] New South Wales Dairy [1989] FCA 124; (1989) 86 ALR 549, 589.

    [30] Swancom (2022) 168 IPR 42 at 59 [89]. See also Henschke (2000) 52 IPR 42, 62 [44].

18. As stated above, for the purposes of considering deceptive similarity, the reputation of the Opponent’s Trade Mark is not a relevant factor.[31]

    [31] See Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [93] (Yates, Abraham and Rofe JJ) and, albeit in the s120(1) context Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [49] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

19. Justice French (as he then was) expressed the view in Registrar of Trade Marks v Woolworths Ltd[32] (‘Woolworths’) that the determination of whether, and to what degree, an applicant’s goods or services are similar to, or closely related to, the relevant goods or services of the earlier trade mark owner is “logically antecedent to” assessing the similarity of the parties’ trade marks. In particular, French J explicitly approved the observation in Wilcox J’s first instance decision in the Woolworths matter that, ‘[t]he closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive’.[33]

    [32] Woolworths (n 22), [39].

    [33] Ibid. See also Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512, [33] (Charlesworth J).

20. Before I commence my discussion of the submissions and conclusions I note that there have been three prior decisions of this office (‘Earlier decisions’) in which the Opponent has sought to rely on the Opponent’s Trade Mark and/or the Beast Marks in opposition to a mark that consists of or contains the word ‘Beast’.  They were:

    ·Monster Energy Company v Nathan Darma[34], in which the Opponent was unsuccessful in opposing the trade mark 1627674 BEAST MODE, sought to be registered for goods in class 25, under ss 42(b) and 60.

    ·Monster Energy Company v USA Nutraceuticals Group Inc[35]  in which the Opponent was unsuccessful in opposing the trade mark 1639191 BEAST, sought to be registered for goods in class 5, under ss 42(b), 44 and 60.

    ·Monster Energy Company v Fernbrew Pty Limited[36]  in which the Opponent was unsuccessful in opposing the trade mark 1762086 REAL BEAST, sought to be registered for goods in class 33, under ss 42(b), 44 and 60.

    I note in particular that some of the material filed in the REAL BEAST opposition was also filed in this matter and hence there are obvious similarities with the present proceeding.

    [34] [2017] ATMO 4 (Hearing Officer Kirov).

    [35] [2017] ATMO 22 (Hearing Officer Wilson).

    [36] [2018] ATMO 125 (Hearing Officer Irgang).

21. In the present case the key similarity between the Trade Mark and the Opponent’s Trade Mark is the shared word ‘beast’.[37]  The marks are otherwise visually and aurally dissimilar, one being a single compound word beginning with ‘beast’, and the second being a three-word exhortation ending with the word ‘beast’.  Equally, the marks are conceptually dissimilar, with the Trade Mark evoking the concept of a hammer used by a beast or (in the Applicant’s Submissions) ‘a bloody big hammer being a weapon or tool’, while the Opponent’s Trade Mark being an exhortation to the viewer to ‘unleash the beast!’ (which I understand from manner of use to be the ‘beast’ inside you, rather than an exhortation to allow animals to run free).   A finding of deceptive similarity in this case would in effect infer that the Opponent has a monopoly on the use of the term ‘beast’ in respect of clothing and other similar goods and closely related clothing.  The Opponent does not have such a monopoly; it is not the case that the mere use of the term ‘beast’ in respect of clothing would cause a real, tangible danger of deception or confusion occurring and indeed this office made a similar finding (albeit one relating to class 5 goods) in two of the Earlier decisions (s 44 not being a ground of opposition in the third Earlier decision). 

    [37]

1. As an aside, the Opponent submitted, by reference to a mark registered by the Applicant in the United Kingdom, that I should consider, in determining the likelihood of confusion, the possibility that the Applicant would seek to use the Trade Mark alongside a device that would further increase the possibility of confusion.  In considering the likelihood of confusion arising from the Trade Mark (which is a word mark) I have considered the notional use of the word mark and I decline the Opponent’s invitation to speculate about possibilities of adding additional styling or devices in a way that would maximize the risk of confusion.

2. The Opponent made extensive submissions, in writing and orally, that the term ‘beast’ is the essential feature of the Opponent’s Trade Mark and that its reproduction in the Trade Mark, notwithstanding the addition of the suffix ‘hammer’ is a sufficient basis to find deceptive similarity.  The Opponent provides various examples of decisions where the reproduction of an essential feature was sufficient to find that marks were deceptively similar. The Applicant referred to numerous other registrations on the Register that contain the word ‘beast’.

3. I note the Opponent made the exact same submissions in two of the Earlier decisions, and I adopt the reasoning of the delegate in Monster Energy Company v USA Nutraceuticals Group Inc who stated ‘The Applicant’s submissions in this case are, overall, more compelling than the Opponent’s. The Opponent’s Trade Mark is likely to be interpreted and remembered as expressions which include the word BEAST, but that word is not so prominent or striking that it is likely to be seen as an essential or distinguishing feature. The various expressions which constitute the Opponent’s Trade Mark convey visual, aural, and conceptual impressions which are significantly different to those conveyed by the single word BEAST. I am not satisfied that the Applicant’s Trade Mark so nearly resembles the Opponent’s Trade Mark that it is likely to deceive or cause confusion.’[38]

   [38] [2017] ATMO 22, [36] (Hearing Officer Wilson). While I note that the trade mark the subject of that case was sought to be registered for different goods to those sought to be registered in the present case, I also consider that it was significantly closer to the Opponent’s Trade Mark than the current case. In any event the similarity of the marks or goods and services does not impinge on the conclusion, which I adopt, that the element ‘Beast’ is not the essential feature of the Opponent’s Trade Mark but rather the Opponent’s Trade Mark is to be considered as a whole.

4. Crazy Ron's Communications Pty Limited v Mobileworld Communications Pty Limited[39] warned that that care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different.  Both marks in this case are a composite of multiple terms that taken together provide a particular impression.  In particular the term ‘beast’ is not the sole essential feature of the Opponent’s Trade Mark, rather the impression the Opponent’s Trade Mark makes on the public is as a particular phrase or exhortation taken as a whole. Nor is it the essential feature of the Trade Mark, conjoined as it is with HAMMER.

   [39] [2004] FCAFC 196, [100] (Moore, Sackville and Emmett JJ)

5. I find that the Opponent has failed to establish the ground of opposition under s 44.

   Section 60

6. Section 60 is reproduced below:

   Section 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.

7. 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.

8. Some of the relevant principles of s 60 are summarised in the recent case of Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods as follows:

   The first of these elements calls for a factual inquiry into the extent and nature of the reputation that had been acquired by the existing trade mark – here, the Aachi mark – in Australia. The second element calls for an assessment of the likelihood of deception or confusion arising from use of the new trade mark as a consequence of that reputation.

   The existing trade mark need not even be registered for s 60 to be engaged (Fry Consulting Pty Ltd v Sports Warehouse Inc [2012] FCA 81; 201 FCR 565 (Fry Consulting) at [121] (Dodds-Streeton J); Qantas Airways Ltd v Edwards [2016] FCA 729 (Qantas Airways) at [144] (Yates J)). The classes of goods and/or services in respect of which the existing trade mark has been used, and those in which the new trade mark is intended to be used, may be very relevant to the likelihood of confusion (see Qantas Airways at [143] and GAIN Capital UK Limited v Citigroup Inc (No 4) [2017] FCA 519 at [148] (Markovic J)), but the fact that the classes are not the same cannot be determinative. The reputation of the existing trade mark need not relate specifically to the goods or services that are the subject of the proposed application (Qantas Airways at [143]; Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923 (Rodney Jane Racing) at [87] (O’Bryan J)). The question is simply whether the reputation of the existing trade mark in Australia is such that the use of the new trade mark is “likely” to be deceptive or cause confusion.[40]

   [40] [2023] FCA 487, [20]-[21] (Kennett J)

9. In McCormick & Co Inc v McCormick[41], Kenny J considered what is intended by the word ‘reputation’ as used in s 60.  Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[42]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [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 …[43]

   [41] [2000] FCA 1335.

   [42] Ibid, [81].

   [43] (1992) 33 FCR 302, 343.

10. On the subject of reputation, Kenny J also referred to Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG, where the Registrar’s delegate observed:

    [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

    As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

    It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[44]

    [44] (1999) 47 IPR 423, 436.

11. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered.  The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[45] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955 (Cth). That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’. Nevertheless the words of Heerey J provide some guidance:

    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 … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[46]

    [45] [2000] FCA 1587.

    [46] Ibid [91] (emphasis in original). Justice Heerey’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

12. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

    Reference is made to details of the Opponent's reputation set out in the Particulars for [s42(b)] .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 BEAST marks) prior to the priority date of the Opposed Mark and internationally in the BEAST marks, consumers are likely to be deceived or confused into believing that the goods offered and/or provided under the Opposed 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.

13. I refer to and repeat my conclusion reached in paragraph 18 above that the Opponent is an extraordinarily successful company and the Opponent’s Trade Mark is a trade mark which has acquired a significant reputation in connection with the MONSTER brand.  I consider that the reputation is linked to energy drinks and, in the absence of any evidence of apparel sales, does not extend to clothing; merely distributing promotional materials including apparel to support a line of energy drinks is not a sufficient basis to establish reputation in apparel.  It is not necessarily to consider the reputation of any of the other ‘Beast Marks’ as to the extent that the Opponent can establish reputation in those marks it would be to a lesser degree than the Opponent’s Trade Mark.  Given that the other marks are of a similar level of similarity to the Trade Mark as the Opponent’s Trade Mark, if I find that the opposition under s 60 is not established for the Opponent’s Trade Mark I would reach the same conclusion with the other particularised marks.  Finally, I do not accept that the Opponent has established any particular reputation in BEAST solus; to the extent it is particularised (and it is not clearly particularised). I find that each of the marks used by the Opponent is not substantially identical to BEAST and the requirement under s 60 is to establish a reputation in a mark, not an amalgam of marks.  

14. It is not sufficient that the Opponent merely establish that the Opponent’s Trade Mark had a reputation; I must also be satisfied that, because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion.  Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning trade mark infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

    An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.[47]

    [47] (1937) 58 CLR 641, 658.

15. In Registrar of Trade Marks vWoolworths Ltd French J highlighted the following further matters concerning confusion:

    (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.[48]

    [48] [1999] FCA 1020, [25]. These considerations by French J are based on principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

16. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the 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.[49]

    [49] [2012] ATMO 124, [40] (Hearing Officer Thompson).

17. While it is not necessary to show that the marks are deceptively similar for the purposes of an opposition under s 60, as stated in Qantas Airways Limited v Edwards, ‘the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.’[50]

    [50] [2016] FCA 729, [142] (Yates J).

18. Finally I note that in considering whether there is a likelihood of confusion, I must consider the notional use of the Trade Mark by the Applicant, rather than actual use or any reputation in the Trade Mark held by the Applicant.[51]

    [51] See, for example, McCormick & Company Inc v McCormick [2000] FCA 1335 where it was established that the fact that the Applicant might have been an honest concurrent user is not relevant to the operation of section 60.

19. In the present case I am not satisfied that by reason of the reputation held by the Opponent’s Trade Mark in energy drinks, confusion is likely to arise by reason of the use of the Trade Mark.  I refer to my discussion of the differences in the Trade Marks under the s 44 ground, and note that those differences are not overcome by any reputation acquired by the Opponent’s Trade Mark. Furthermore the prospect of confusion is further limited because the market in which the Opponent’ Trade Mark has established its reputation (energy drinks) is very different to the one in which the Trade Mark is sought to be registered (clothing).

20. The delegate in Monster Energy Company v Nathan Darma[52], was required to consider the applicability of s 60 in respect of the similar trade mark 1627674 BEAST MODE, sought to be registered for the same goods.  He concluded that:

    To conclude, given the differences between the parties’ marks when considered as wholes and taking into account the manner of use and the consequent nature of the reputation Monster might reasonably claim in the Stylised Tagline, I am not satisfied use of the Opposed Mark in a normal and fair manner for “Apparel (clothing, footwear, headgear)” would be likely to deceive, or cause confusion amongst, a significant or substantial number of relevant consumers.[53]

    [52] [2017] ATMO 4 (Hearing Officer Kirov).

    [53] Ibid, [52].

21. I reach the same conclusion with respect to the Trade Mark and find that the Opponent has failed to establish the ground of opposition pursuant to s 60.

    Section 42

22. Section 42 is reproduced below:

    42 - Trade mark scandalous or its use contrary to law

    An application for the registration of a trade mark must be rejected if:
    (a) the trade mark contains or consists of scandalous matter; or
    (b) its use would be contrary to law.

23. The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)).  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.[54]  The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[55]

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

    [55] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353 (Wilcox J).

24. The Opponent has particularised the ground of opposition in the SGP as follows: 

    The Opponent has used and/or is the owner in Australia, the United States and internationally, in approximately 140 countries of the Trade Marks UNLEASH THE BEAST!, PUMP UP THE BEAST!, REHAB THE BEAST!, HYDRATE THE BEAST!, REFRESH THE BEAST! and/or FUEL THE BEAST! in relation to beverages, including energy drinks (“the BEAST marks”). The Opponent has also registered and/or uses the BEAST marks on or in relation to a range of apparel. The Opponent's UNLEASH THE BEAST! mark has been used in relation to major sporting and gaming events and competitions and in relation to sponsoring teams / individual athletes involved at or competing in those events. For example, sponsored athletes or individuals wear apparel featuring the BEAST marks. The Opponent also regularly publishes content on its website and via social media featuring one or more of the BEAST marks.

    The Opponent has sold over 42 billion cans of MONSTER energy drinks worldwide and sells over 6 billion cans per year. A large portion of these cans prominently feature one or more of the BEAST marks. Sales of the Opponent's MONSTER energy drinks, a large portion of which have a BEAST mark, have generated more than US$92 billion in total retail revenues worldwide, with estimated retail sales exceeding US$13 billion per year. Since 2002, Monster has spent over US$9.8 billion in advertising, marketing and promoting its MONSTER energy drinks, including those featuring one or more of the BEAST marks, throughout the world.

    Based on the Opponent's extensive reputation in Australia the goods offered and/or provided under 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 class 25 of the Opposed Mark also suggests that the trade mark Applicant and its goods are associated or affiliated with the Opponent or that the Applicant has obtained the Opponent's sponsorship or approval to use the Opposed Mark, when that is not the case. This conduct is in breach of section 29 of the Australian Consumer Law 2010 (Cth).

    The likelihood or consumers being misled or deceived is increased because the word BEAST is the first and most memorable element of the Opposed Mark. The Opponent also has a history of using BEAST-inclusive marks and the mark BEAST with a number of other words, such that the goods sold under the Opposed Mark will be perceived by consumers as part of or another version of the Opponent's BEAST marks.

1. As previously stated the Opponent has failed to establish a ground of opposition under s 60. The test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘ACL’) is a more stringent one than that for deception or confusion under s 60,[56] and consequently I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark would be contrary to s 18 of the ACL.

   [56] 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).

2. Paraphrasing the statement of the Registrar’s Delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL[57], where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Justice Beaumont considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[58] Sections 52 and 53 of the TPA were, respectively, the equivalent provisions to ss 18 and 29 of the ACL. Justice Hill in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered 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.[59]

   [57] [2014] ATMO 65, [50] (Hearing Officer Wilson).

   [58] [2003] FCA 104, [107] (Beaumont J).

   [59] [1989] FCA 506, [40] (citations omitted).

3. For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law.  Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

   Decision and Costs

4. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application number 2150045 may proceed to registration not less than one month from the date of this decision.  If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

5. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

6. Had the Opponent been successful in this matter, by reason of its conduct in filing large quantities of irrelevant, repetitive and unnecessary evidence and failing to comply with the directions of this office, I would have had a basis upon which to depart from the general rule. That is to say, it is likely that, regardless of the outcome in this decision, the Opponent had by its conduct throughout these proceedings already set itself up to (at very least) bear its own costs. It is therefore doubly appropriate that it pay the Applicant’s costs in this matter.

   Nicholas Smith

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   20 August 2024