Monster Energy Company v Mixi, Inc

This matter concerned an opposition by Monster Energy Company (the Opponent) to the registration of an International Registration Designating Australia (IRDA) by Mixi, Inc (the Holder). The Opponent sought to prevent the extension of protection of the IRDA to Australia, relying on its own registered trade marks and use of the MONSTER and MONSTER ENERGY trade marks in relation to carbonated energy drinks. The Opponent argued that the proposed registration would be likely to cause confusion among consumers and that the Holder's application was an attempt to trade on the Opponent's reputation.

The primary legal issue before the Hearing Officer was whether the grounds of opposition, particularly those relating to sections 42 and 60 of the *Trade Marks Act 1995* (Cth), had been established. Section 42 concerns the registration of trade marks that are identical or deceptively similar to earlier trade marks, while section 60 addresses the use of trade marks that are likely to cause confusion due to prior use and reputation. The critical question was whether the Opponent's use and registration of its MONSTER trade marks in Australia, prior to the priority date of the IRDA, established grounds for opposition.

The Hearing Officer found that the Opponent had not established the grounds on which the IRDA was opposed. While the Opponent demonstrated significant use and registration of its MONSTER trade marks in the USA and had commenced sales and marketing activities in Australia from 2006, acquiring rights from Bickford's Australia Pty Ltd in 2008, the evidence did not establish that the grounds of opposition were met. Regulation 17A.34N of the *Trade Marks Regulations 1995* (Cth) requires the Registrar to decide whether to refuse or extend protection based on the established grounds of opposition.

Consequently, the Hearing Officer decided to extend protection to the IRDA, subject to any appeal. The Hearing Officer also awarded costs against the Opponent in favour of the Holder, as the Holder was the successful party.