Monster Energy Company v Maple Mountain Group Inc

[2023] ATMO 73

TRADE MARKS ACT 1995

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

Re:Opposition by Monster Energy Company to extension of protection to International Registration designating Australia 2113144 (International Registration No. 1546343) –M (Figurative) – held by Maple Mountain Group, Inc

Delegate:

Bianca Irgang

Representation:

Opponent: Siobhan Ryan of Counsel instructed by Davies Collison Cave Pty Ltd

Holder: Ian Horak of Counsel instructed by HWL Ebsworth Lawyers

Decision:

2023 ATMO 73

Trade Marks Regulations 1995 (Cth) – Opposition under reg 17A.33: ss 42(b), 44 and 60 of the Trade Marks Act 1995 (Cth) considered – none established – extension of protection allowed

Background

1. This decision concerns opposition brought by Monster Energy Company (‘Opponent’) to the extension of protection of International Registration Designating Australia (‘IRDA’) 2113144 in the name of Maple Mountain Group, Inc. (‘Holder’). The details are as follows: 

Application Number:

International Registration:

2113144

1546343

Lodgement Date[1]:

1 June 2020

Goods & Services:

Class 3: Dental products, namely, tooth care preparations, oral hygiene preparations, tooth cleaning preparations, preparations for cleaning dentures, non-medicated dental rinse, non-medicated mouth sprays, breath fresheners, breath freshening strips, throat sprays [non-medicated]; toothpaste and mouthwash; household cleaning products and laundry detergent; household cleaning preparations and disinfectants; glass and window cleaner; bathroom and tile cleaner preparations; dish detergents; laundry detergents; hygienic wipes.

Class 5: Nutritional supplements and preparations; healthcare supplements and preparations; dietary supplements and preparations; meal replacement bars; dietary drink mixes for use as a meal replacement, sports enhancement, performance enhancement, weight management, weight loss and weight gain; food supplements; dietary food supplements; vitamins, minerals and antioxidants; supplements for detoxification and anti-aging; air deodorizers.

Class 30: Coffee; coffee products; beverages made from coffee; beverages with a coffee base; coffee substitutes; decaffeinated coffee; extracts of coffee for use as flavours in beverages; tea; iced tea; tea-based beverages; cold tea; herb teas and infusions; chocolate-based beverages; cocoa; cocoa-based beverages; energy bars; cereal based bars; high-protein cereal bars; chocolate-based meal replacement bars.

Class 32: Non-alcoholic beverages; fruit juice beverages that containing minerals and vitamins; fruit drinks; fruit juices, slush drinks, syrups and other preparations for making beverages; preparations in the form of powder for making drinks; energy drinks; enhanced mineral water.

Class 35: Advertising; promotional marketing; organisation, operation, management and supervision of sales and of promotional schemes, incentive schemes, benefits and perks schemes, loyalty schemes, promotion programmes and promotional services; retail services connected with the sale of personal healthcare products and preparations, cleaning products, laundry detergent, nutritional supplements, nutritional preparations, healthcare supplements, healthcare preparations, dietary supplements, dietary preparations, meal replacement bars, dietary drink mixes, food supplements, vitamins, minerals, antioxidants, supplements for detoxification, supplements for anti-aging, air fresheners and deodorizers, bags, food and beverages.

Class 41: Instruction services, educational services, training services.

Class 44: Advisory services relating to beauty treatment; advisory services relating to health; advisory services relating to nutrition; advisory services relating to personal healthcare products.

Trade Mark:

(‘Trade Mark’)

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

2.  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.

3.  Following the advertisement of the IRDA for possible protection in the Australian Official Journal of Trade Marks, the Opponent filed its Notice of Intention to Oppose the registration followed by a Statements of Grounds and Particulars on 3 November 2021 (‘SGP’). In terms of Regulations 17A.28 and 17A.34 the SGP raised grounds of opposition under ss 42(b), 44 and 60. The SGP stated that the opposition was only pursued against the Trade Mark being registered in classes 5, 30 and 32 (‘Holder’s goods’). The Holder filed its Notice of Intention to Defend on 17 January 2022. 

Evidence

1. The Opponent filed the following evidence in support of its oppositions:

   ·Declaration by Elizabeth Kate Godfrey, Principal at Davies Collison Cave Pty Ltd, legal representatives of the Opponent, made on 12 April 2022 with Exhibits EKG-1 to EKG-35 (‘Godfrey 1’);

   ·Declaration by Paul J Dechary, Deputy General Counsel of the Opponent, made on 14 April 2022 with Exhibits PJD-1 to PJD-86 (‘Dechary Declaration’); and

   ·Declaration by Emily Maartensz, lawyer employed by Davies Collison Cave Pty Ltd made on 13 April 2022, with Exhibit EEM-1 - Tab 1 to Tab 248(b) (‘Maartensz Declaration’).

   5.     Exhibited to Godfrey 1 and the Dechary Declaration are the following declarations (previously filed on behalf of the Opponent in earlier unrelated proceedings before this office):

   ·     Declaration of Rebecca Lee Dunbar (‘Dunbar Declaration’) dated 8 August 2012 with Exhibits RLD-1 to RLD-20;

   ·     Declaration of Danielle Jade Roberts dated 9 July 2012 with Exhibits DJR-1 to DJR-48;

   ·     Declaration made by Adrian Heath Hunter dated 11 October 2012 (‘Hunter Declaration’) with Exhibits AH-1 to AH-19;

   ·     Declaration made by Sam Anthony Pontrelli dated 7 August 2017 with Exhibits SAP-1 to SAP-35; and

   ·     Declaration made by Samuel Peter Thiele dated 11 August 2017 with Exhibits SPT-1 and SPT-32.

   6.  The Holder did not file any evidence in these proceedings.

   7.  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.  On 26 August 2022 the Opponent requested an oral hearing.  The matter was set down for a hearing on 6 April 2023 and the matter was allocated to me. The Opponent filed written submissions on 23 March 2023.  The Holder filed written submissions on 30 March 2023.  At the hearing Siobhan Ryan of Counsel represented the Opponent, instructed by Elizabeth Godfrey of Davies Collison Cave, and Ian Horak of Counsel instructed by HWL Ebsworth Lawyers represented the Holder.

   8.  I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by reg 17A.34N which provides that, unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a)to refuse protection in respect of all of the goods or services listed in the IRDA; or

   (b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

   having regard to the extent (if any) to which any ground on which the IRDA 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

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

3. As much of the evidence put on by the Opponent in this matter is identical to that filed in numerous earlier opposition proceedings such as Monster Energy Company v PepsiCo[2] and Monster Energy Company v Northern Innovations Holding Corp[3]. I extract the delegates’ summary of the evidence in those matters below:

   [2] [2021] ATMO 85 (Hearing Officer Brown).

   [3] [2023] ATMO 65 (Hearing Officer Smith)

   The Opponent owns a number of trade marks comprising of the word MONSTER, most notably:

   (‘MONSTER Trade Marks’)

   ·     MONSTER

   ·     MONSTER ENERGY (‘MONSTER ENERGY Trade Mark’)

   ·       (‘Claw Device’)

   ·           (‘Composite MONSTER ENERGY Trade Mark’)

   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.

   I note that the Opponent wishes the details of its gross retail sales of goods bearing the MONSTER Trade Marks to remain confidential. As such, I will only note that the amounts detailed in the Dechary Declaration from 2009 to 2018 are substantial and reflect a ubiquitous presence in the energy drink marketplace. Energy drinks bearing the MONSTER Trade Marks are sold in over 4000 retail outlets across Australia.

   In addition to a range of energy drink products, the Opponent has also used its trade marks on dietary supplements, and mixes of energy drinks with other beverages, namely juice or coffee. Use of the MONSTER Trade Marks on these other products is often in conjunction with other trade marks. The Pontrelli Declaration provides examples, such as MONSTER ENERGY LO-CARB, MONSTER REHAB, MUSCLE MONSTER, and JUICE MONSTER PIPELINE PUNCH.  The Hunter and Dunbar Declarations also demonstrate use of the MONSTER Trade Marks on merchandise, such as various articles of clothing. 

   The Dechary Declaration explains that the Opponent does not utilise conventional marketing methods, but instead focuses on athlete endorsement and sponsorship of athletic competitions and other live events. For example, the exhibits to the Dechary Declaration demonstrate use of the MONSTER Trade Marks in connection with sponsored athletes and various motor sports events. Although the Opponent’s marketing does not primarily involve television and radio advertising, it is evident that its 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 Hunter Declaration, Dunbar Declaration and Dechary Declaration also demonstrate promotion of the MONSTER Trade Marks on licensed clothing products, and point of sale material, including signage, fridges, stickers and various merchandise.

   The Opponent’s estimated expenditure on marketing and promotion of the MONSTER Trade Marks is outlined in the Dechary Declaration. The figures cover July 2009 through to 31 December 2018, with a significant amount of expenditure in Australia.

   The Opponent is also the owner of the following registered trade marks in Australia:[4]

   [4] Ibid [10]-[17].

Trade Mark No.	Trade Mark	Priority Date	Classes
1896558	MONSTER MEAL DEAL	28 June 2017	29, 30, 43
1664310	MUSCLE MONSTER	12 December 2014	5, 30, 32
1429533	MONSTER REHAB	8 June 2011	5, 30, 32
1756840	MONSTER ENERGY ZERO ULTRA	4 March 2016	30
1823136	MONSTER REHAB	1 February 2017	30, 32
1073748	MONSTER	5 September 2005	32
1073749	MONSTER ENERGY	5 September 2005	32
1103490	MONSTER ENERGY	14 March 2006	5, 32
1115681	MONSTER ENERGY	26 May 2006	32
1357441	MONSTER ENERGY	22 April 2010	5, 32
1117842	JAVA MONSTER	8 December 2005	32
1404211	MONSTER GIRL	17
1326143	MUSLCE MONSTER	15 October 2009	5, 32
1357440	MONSTER	22 April 2010	32
1357441	MONSTER ENERGY	22 April 2010	5, 32
1404860	LOCA MOCA JAVA MONSTER	20 January 2011	5,32
1534709	JUICE MONSTER	9 January 2013	5, 32
1563599	MONSTER ENERGY ULRA RED	12 June 2013	5, 32
1565856	MONSTER ENERGY ULTRA BLUE	2 January 2013	5, 32
1647461	JAVA MONSTER	1647461	32
1657567	MONSTER ENERGY ULTRA BLACK	11 November 2014	5, 32
1661152	MONSTER ENERGY ZERO ULTRA	27 November 2014	5, 32
1663555	MONSTER ENERGY ULTRA	12 June 2014	5, 32
1668232	MONSTER ENERGY ABSOLUTELY ZERO	8 January 2015	5, 32
1780796	MONSTER ENERGY ULTRA SUNRISE	1 July 2016	32
1840421	MONSTER HYDRO	15 December 2016	32
1875097	MONSTER BAD APPLE	30 March 2017	32
1899975	JUICE MONSTER	12 Jan 2018	32
1905287	MONSTER CLAW	7 February 2018	32
1931964	6 June 2019	32
1945997	MONSTER GIRL	3 August 2018	32
1948339	JUICE MONSTER	15 August 2018	32
1948340	MONSTER ENERGY ULTRA RED	15 August 2018	32
1948341	MONSTER ENERGY ULTRA BLUE	15 August 2018	32

11.     The Maartensz Declaration was not part of the evidence in Monster Energy Company v PepsiCo but did form part of the evidence in Monster Energy Corporation v Northern Innovations Holding Corp. It provides evidence of the use of the Opponent’s Monster Trade Marks and in particular the Claw Device in various video-games and online catalogues. 

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44 and 60. To successfully oppose the IRDA the Opponent needs to establish one of the nominated grounds.

   13.     The onus of proof in an opposition rests upon the Opponent.[5]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[6] 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.[7]

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

   [6] 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).

   [7] 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

2. 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.

   15. To successfully oppose the IRDA 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 a trade mark whose registration is sought by a person other than the Holder:

   ·     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 Holder’s Goods (‘the third requirement’).

3. 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 Holder has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon marks.

4. The Opponent has particularised this ground of opposition in the SGP filed against trade mark 2113114 by reference to a variety of trade marks registered in classes 5, 30 and 32 comprised of the Claw Device.  Each of the trade marks particularised in the SGPs has a priority date that is earlier than the priority date of the Trade Mark. 

   Substantially identical and/or deceptively similar

   18.     The Opponent has particularised a number of trade marks in the SGP however these trade marks essentially consist of the Claw Device. It is not necessary to compare the Trade Mark to the marks in the Opponent’s evidence that consist of the Claw Device with additional elements; were I to find that the mark is not similar to the Claw Device I would reach the same conclusion with the marks with additional elements. The Trade Mark and the Claw Device particularised by the Opponent are set out below:

Claw Device Trade Mark

1. I am not satisfied that the respective trade marks are substantially identical. 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.[8]

   [8] (1963) 109 CLR 407, 414.

   20.   It is clear the Trade Mark is not substantially identical with the Claw Device when compared side-by-side according to the test set out above by Windeyer J.

   21.   Deceptive similarity is defined by s 10. The determination of deceptive similarity requires a comparison of the impression which persons of ordinary intelligence and memory would have upon recalling the Claw Device, to the impression that they would form from the Trade Mark[9]. The likelihood of deception must be finite and non-trivial[10] and the trade marks are not to be considered side by side.

   [9] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, per Windeyer J at 415 ‘Shell’

   [10] Registrar of Trade Marks v Woolworths Limited 45 IPR 411, per French J at [43]

   22.   According to the authorities[11] any consideration of whether trade marks are deceptively similar must take into account that consumers may have an imperfect recollection of a trade mark. As a general principle one needs to estimate the impression consumers are likely to form of each trade mark as a whole. Confusion may result if a trade mark incorporates the distinguishing features of another’s trade mark. Similarities in ideas are also a possible source of confusion although the fact that the trade marks have similar ideas is not conclusive in itself. In Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd[12] the High Court stated:

   [11] Clark v Sharp (1898) 15 RPC 141 at 146; Re Application by the Pianotist Co Ltd (1906) 23 RPC 774; Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641; Aristoc Ltd v Rysta Ltd (1943) 60 RPC 87; Cordova v Vick Chemical Co (1951) 68 RPC 103; Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536; Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411

   [12] [1952] HCA 15; (1952) 86 CLR 536.

   "But it is obvious that trademarks, especially word marks, could be quite unlike and yet convey the same idea of the superiority or some particular suitability of an article for the work it was intended to do. To refuse an application for registration on this ground would be to give the proprietor of a registered trademark a complete monopoly of all words conveying the same idea as his trademark. The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive. As Lord Parker said in the passage cited, you must consider the nature and kind of customer who would be likely to buy the goods."

   23.   Justice French in Registrar of Trade Marks v Woolworths Ltd[13] observed in relation to the expression “likely to deceive or cause confusion”:

   [13] Registrar of Trade Marks v Woolworths [1999] FCA 1020, [43]

   … The use of the word “likely” in this context does not import a requirement that it be more probable than not that the mark has that effect. The probability of deception or confusion must be finite and non-trivial. There must be a “real tangible danger of its occurring” …

   24.   The concepts ‘deceive’ and ‘cause confusion’ were considered in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd[14] where it was stated:

   ‘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.

   25.   The impression that the respective trade marks give is quite different. I do not believe that the use of the Trade Mark for any of the Holder’s claimed goods would result in a tangible danger of confusion or deception. In coming to this decision it is important that the trade marks are considered in their entirety -‘it is the whole mark as used which is the subject of comparison with the registered mark[15].

   26.   The Opponent has argued that the  Trade Mark is deceptively similar to the Claw Device due to the fact that both trade marks share the letter M. While I do agree that the respective trade marks are both indexed on the Register as stylised letter ‘M’s, this is where all similarities end.

   27.   In comparing the trade marks it becomes apparent that there are very significant differences between them, namely the Claw Device is three rough parallel lines linked and rendered in such a way that they depict a claw scratch while the Trade Mark resembles some mountains or lines within a square border. Both of the respective trade marks are striking and unique depictions of the letter ‘M’ and indeed, it is not immediately clear from the representation of the Trade Mark that it is a letter ‘M’ instead of a picture graphic device. The stylizations of the respective trade marks are completely different and one must bear in mind that it is the trade marks as wholes that must be compared. The striking and memorable differences in the respective devices makes it unlikely that consumers will be confused between the Opponent’s Claw Device and the opposed Trade Mark.

   28. As such, I am not satisfied the parties’ trade marks are deceptively similar. The ground of opposition under s 44 is therefore not established.

   Section 60 Ground - Reputation in Australia

   Section 60

   [14] (1979) RPC 410 at 423

   [15] Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182, 218 (Allsop J).

1. 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.

2. 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.

3. In McCormick & Co Inc v McCormick[16], 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’.[17]  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 …[18]

   [16] [2000] FCA 1335.

   [17] Ibid, [81].

   [18] (1992) 33 FCR 302, 343.

4. On the subject of reputation Kenny J also referred to the Hugo Boss decision, 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.[19]

   [19] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

5. 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[20] 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.[21]

   [20] (2000) 50 IPR 1.

   [21] Ibid 20. Heerey J’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).

6. The Opponent has particularised the ground of opposition in the SGP in respect of the Trade Mark in the manner set out below: 

   The M Claw Icon trade marks are well known in Australia in relation to beverages, including energy drinks and range of other goods as well as in relation to sponsoring major sporting, music and gaming events and athletes or teams participating in those events. Based on this extensive reputation and use since before the priority date of the Opposed Mark, consumers are likely to be deceived or confused as to the origin of the Applicants goods in classes 5, 30 and 32 believing that they originate from the Opponent or are somehow associated or affiliated with the Opponent, when that is not the case. The likelihood of consumers being deceived or confused is increased because the M Claw Icon trade marks and the Opposed Mark consist of the letter "M" and the Opponent's and the Applicant's goods in classes 5, 30 and 32 are identical or largely identical and therefore the Opponent and the Applicant will very likely have the same, or largely the same, target market.

7. I am satisfied by the Opponent’s evidence that it holds a very significant reputation in the Claw Device in Australia in respect of energy drinks. This has not been disputed by the Holder. However, in the present case for the reasons set out in respect of the s 44 ground of Opposition I consider that there are significant differences between the Trade Mark and the Claw Device, such that, notwithstanding the reputation held by the Opponent in the Claw Device, I do not consider that the use of the Trade Mark would be likely to deceive or cause confusion. This conclusion is strengthened by the actual circumstances in which the Claw Device is used by the Opponent. The evidence before me is that the Claw Device is used as a visual piece of branding; aurally and conceptually the Opponent’s products are known as ‘Monster’ with the image of the Claw Device reinforcing the ‘Monster’ brand. As such the aural similarities between the Trade Marks and the Claw Device are much less relevant when considering the likelihood of confusion under s 60 then under s 44.

8. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60.

   Section 42

9. 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.

10. The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Marks would be contrary to law (s 42(b)).  The onus is on the Opponent to establish that use of the Trade Marks by the Holder would be, rather than could be, contrary to law.[22]  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’.[23]

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

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

11. The Opponent has particularised the ground of opposition in the SGP in respect of the Trade Mark in the manner set out below: 

    The use of the Trade Mark would be contrary to law and registration of the Trade Mark by the Applicant would be contrary to Subsection 42(b) of the Act. The Opponent's M Claw Icon trade marks (including that depicted below) are well known in Australia, the United States and internationally in approximately 150 countries or territories for non-alcoholic beverages including but not limited to energy drinks and related goods, apparel and accessories. The Opponent also produces and licenses a range of products bearing the M Claw Icon trade marks. The Opponent also has a very well-known reputation in relation to sponsoring high profile sporting events (including motorsports and other sports such as surfing, BMX and motocross), gaming and music events and teams and/or individuals participating in those events.

    The Opponent has sold well over 37.2 billion cans of MONSTER energy drinks worldwide and sells over 5 billion cans per year. Each of those cans prominently features the M Claw Icon. Sales of the Opponent's MONSTER energy drinks, featuring the M Claw Icon, have generated more than US$64 billion in total retail revenues worldwide, with estimated retail sales of about US$10 billion per year. The Opponent's M Claw Icon also features extensively in sponsorship and/or affiliation with major sporting events. Since 2002, Monster has spent over US$8.5 billion in advertising, marketing and promoting its MONSTER energy drinks, which include the M Claw Icon, throughout the world.

    Based on the Opponent's reputation in the M Claw Icon in Australia, consumers are likely to be misled or deceived into believing that the goods offered and sold under the Opposed Mark in classes 5, 30 and 32 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 the Opposed Mark in classes 5, 30 and 32 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 of consumers being misled or deceived is increased because the M Claw Icon trade marks and the Opposed Mark consist of the letter "M" and the Opponent's and the Applicant's goods in classes 5, 30 and 32 are identical or largely identical and therefore the Opponent and the Applicant will very likely have the same, or largely the same, target market.

12. 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,[24] and consequently I find that the Opponent has also failed to establish that the Holder’s use of the Trade Mark would be contrary to s 18 of the ACL.

    [24] 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).

13. Paraphrasing the statement of the Registrar’s delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL[25], 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, Beaumont J considered—in connection with the superseded Trade Practices Act1974 (Cth)(‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[26] Sections 52 and 53 of the TPA were, respectively, the equivalent provisions to ss 18 and 29 of the ACL.

    [25] [2014] ATMO 65, [50] (Hearing Officer Wilson).

    [26] [2003] FCA 104, [107] (Beaumont J).

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

    Decision and Costs

    43.       Regulation 17A.34N provides:

    17A.34NDecision on opposition

    (1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

    (a)to refuse protection in respect of all of the goods or services listed in the IRDA; or

    (b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

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

    (2)The Registrar must tell the International Bureau of his or her decision.

    44.   I find that the Opponent has not established any of its grounds of opposition. Accordingly, I direct that protection of IRDA 2113114 be extended in respect of all the listed goods and services.

    45. The Holder 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 in respect of trade mark number 2113114 against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

    Bianca Irgang

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    5 June 2023