Monster Energy Company v Nathan Darma

[2017] ATMO 4

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 1627674 (25) – Beast Mode - in the name of Nathan Darma

Delegate:	Michael Kirov
Representation:	Opponent: Siobhán Ryan of Counsel, instructed by Davies Collison Cave Applicant: Did not appear or file written submissions
Decision:	2017 ATMO 4 Opposition under s 52 of the Trade Marks Act 1995: ss 42(b) and 60 considered –request to add a further ground refused –trade mark not sufficiently similar to Opponent’s trade marks and/or the reputation of the Opponent’s trade marks insufficient to establish either ground - opposition not established.

Background

1. This is an opposition brought by Monster Energy Company (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below in the name of Nathan Darma (“the Applicant”):

Application Number:        1627674

Filing Date:  10 June 2014

Goods:Class 25: Apparel (clothing, footwear, headgear)

Trade Mark:  Beast Mode  (“the Opposed Mark”)

1. Acceptance of the Opposed Mark for possible registration was advertised in the Australian Official Journal of Trade Marks on 30 October 2014.  The Opponent filed a Notice of Intention to Oppose on 22 December 2014, followed by a (revised)[1] Statement of Grounds and Particulars (“SGP”) on 5 February 2015 raising opposition grounds corresponding to ss 42(b) and 60 of the Act. The Applicant filed a Notice of Intention to Defend on 11 February 2015.

   [1] The Opponent had filed an essentially similar SGP on 21 January 2015 which was considered by the Registrar to lack sufficient information.

2. I heard the matter as a delegate of the Registrar of Trade Marks on 22 July 2016 in Canberra.  Siobhán Ryan of Counsel, instructed by Elizabeth Godfrey of Davies Collison Cave, appeared for the Opponent.  Ms Ryan’s oral submissions were supplemented by written submissions emailed to both the Applicant and me on11 July in accordance with my directions.  The Applicant, who is self-represented, had earlier advised via email that he would not attend the hearing or file submissions and would rely solely on the evidence in answer he had filed.

Grounds of Opposition and the Registrar’s Power to Amend

1. As mentioned, the SGP lists grounds corresponding to ss 42(b) and 60 of the Act. However some two weeks before the scheduled hearing, on 6 July, the Opponent urgently requested amendment to the SGP so as to add a ground of opposition based on s 44. While the request was properly made pursuant to reg. 5.12(1)(c) of the Trade Marks Regulations 1995 (“the Regulations”), the stated justification for its late inclusion was that, “It was intended at all times before and during the opposition that the section 44 ground be included.”  However, “It was only when a brief to Counsel was prepared, sent and reviewed by Counsel that the error was identified.”

2. I wrote to the Opponent’s attorneys on 8 July refusing the request.  I pointed out that reg. 5.12(1)(c) was subject to reg. 5.12(3)(b), which precludes the Registrar from adding a new ground of opposition unless “satisfied that the…addition relates to information of which the opponent could not reasonably have been aware at the time of filing the statement.”  Clearly the omission of a s 44 ground from the original SGP was not because the Opponent could not have known of its own earlier trade mark application (which it now says underpins its putative s 44 ground).

3. Ms Ryan nevertheless sought to press the s 44 ground at the hearing, submitting:

   22. Notwithstanding that the Opponent’s application to add s 44 to [the SGP] was refused, it is submitted that the ground can (and ought to) be considered by the Delegate outside of the SGP.

   23. The SGP invokes the Registrar’s discretion, as follows:

   Registration of the trade mark ought to be refused in the exercise of the Registrar’s discretion, by reason of the conduct of the applicant and/or the nature of the mark and/or its use and/or on such other grounds as the Registrar or the court on appeal, may see fit to allow.

   …

   25. The Opponent’s application to amend its SGP was diligent but not strictly necessary.  In other cases, Delegates have refused registration on grounds of opposition which were available on the evidence but were not nominated in the Notice of Opposition.

4. Ms Ryan went on to cite three instances where delegates of the Registrar, in the particular circumstances before them, had considered a ground not included in the original notice of opposition filed in the proceedings, being Home Shopping Network, Inc v TV Shopping Network Limited,[2] Danjaq LLC v Resource Capital Australia Pty Ltd[3] and Next Retail Limited v Marlin Australia Pty Ltd.[4]

   [2] (1998) 40 IPR 639.

   [3] (2004) 61 IPR 651.

   [4] [2010] ATMO 117.

5. Ms Ryan’s submissions notwithstanding, I confirm my decision to refuse the Opponent’s request to rely on s 44. In this regard I note s 52(4) of the Act states:

   The registration of a trade mark may be opposed on any of the grounds specified in this Act and on no other grounds.

6. It accordingly does not in my view advance the Opponent’s argument merely to rely on “[invocation of] the Registrar’s discretion” because the SGP broadly impugns “the conduct of the applicant” or “the nature of the mark” or similar as set out in paragraph 6 above.  The Registrar’s “discretion” is not itself a ground of opposition.

7. Moreover (and quite apart from other distinguishing facts), the three cases cited by Ms Ryan were all decided before the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the RTB Act”) came into force on 15 April 2013. The RTB Act amended, inter alia, s 66 of the Act, which until then provided that the Registrar “may…amend an application…, a notice or other document [including a Notice of Opposition]…if the Registrar is of the opinion that it is fair and reasonable in all the circumstances of the case to do so.” Following the changes made by the RTB Act, however, s 66(2) was inserted, expressly providing that the Registrar’s discretion to amend documents “does not apply to a notice of opposition filed…under section 52.”

8. Section 66 as amended does bear a note stating that, “Regulations made for the purposes of subsection 231(3) may make provision in relation to amendment of documents filed in relation to an opposition.” However the regulations made pursuant to s 231(3) relevant to the Opponent’s request here are, as already canvassed in my letter to the Opponent’s attorneys on 8 July last, reg. 5.12(1)(c) and reg. 5.12(3)(b). For the reasons stated in that letter and again briefly summarized in paragraph 5 above I am not, in terms of reg. 5.12(3)(b), “satisfied that the amendment or addition relates to information of which the opponent could not reasonably have been aware at the time of filing the [SGP].” That must end the matter in my view.

Onus and Standard of Proof

1. Accordingly, to succeed in its opposition the Opponent bears the onus of establishing at least one of the two grounds based on ss 42(b) and 60 raised in the original SGP. The relevant standard of proof required is the ordinary civil standard based on the balance of probabilities.[5]  The relevant date for assessing the registrability of the Opposed Mark is the 10 June 2014 filing date of the application (“the Filing Date”). [6]

   [5] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Telstra Corporation Limited v Phone Directories Company Pty Ltd (2015) 116 IPR 207 at [132]-[133] where the Full Federal Court (Besanko, Jagot & Edelman JJ) affirmed Gyles J’s approach.

   [6] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, Kitto J at 595.

The Evidence

1. For their evidence the parties rely on the following declarations, made pursuant to the Act and reg. 21.6 of the Regulations:

Evidence in Support

▪ Rodney Cyril Sacks made 15 May 2015, with Exhibits RCS-1 to RCS-52(a)   (“Sacks 1”)
▪ Elizabeth Kate Godfrey made 21 May 2015, with Exhibits EKG-1 to EKG-3 (“Godfrey”)

[The three Exhibits to Godfrey are copies of the following Statutory Declarations, the originals of which were filed in connection with an unrelated opposition to Australian trade mark application (now registration) 1424890 (32) for a stylised rendition of the letter “M”:

▪ Rebecca Lee Dunbar made 8 August 2012, with Exhibits RLD-1 to EKG-20   (“Dunbar”)
▪ Danielle Jade Roberts made 9 July 2012, with Exhibits DJR-1 to DJR-48   (“Roberts”)
▪ Adrian Heath Hunter made 11 October 2012, with Exhibits AH-1 to AH-19b   (“Hunter”)]

Evidence in Answer

▪ Nathan Darma made 19 August 2015, with Exhibits 1 and 2 (“Darma”)

Evidence in Reply

▪ Rodney Cyril Sacks made 3 November 2015 (“Sacks 2”)

Overview of the Evidence

1. It is convenient to commence with an overview of the parties’ evidence.  Rodney Sacks is the Chairman and Chief Executive of both the Opponent and of the Opponent’s parent company, Monster Beverage Corporation (collectively “Monster”).  He says that:

   3. Monster is in the business of designing, creating, developing, producing, marketing and selling non-alcoholic beverages, including carbonated drinks, natural sodas, fruit juices, energy drinks, energy sports drinks, smoothies, lemonades and iced teas.

2. Monster’s principal product is an energy drink aimed mainly at young adults aged around 18 to 34 years.  Monster’s original energy drink (“the original energy drink”) was launched in the United States in 2002 and over the years the range of Monster’s energy drinks has expanded to include variants described as “lo-carb” or “zero sugar” or “extra strength” or the like (“the variants”).  Like Mr Sacks, I will refer to both the original energy drink and the variants collectively hereafter as “the MONSTER ENERGY drinks”.

3. The MONSTER ENERGY drinks are sold in the United States, Australia and elsewhere in the world in cans.  As Mr Sacks explains, the cans (and their associated advertising and promotional materials) feature two categories of trade marks.  The first and most prominent category, comprises what he (and I hereafter) refer to as “the MONSTER Marks”, being the following three marks:

   (1)        (2) MONSTER         (3) MONSTER ENERGY

4. Mr Sacks says that:

   6. …Since the launch of the original MONSTER ENERGY drink [in the United States] in 2002, [Monster] has used the [the MONSTER Marks] on every one of the billions of cans of MONSTER ENERGY drinks it has sold [and] in connection with promoting its MONSTER ENERGY products.

5. Relevant to this opposition is however the second category of trade marks, being tag lines, which also appear, albeit less prominently, on “most”[7] of the MONSTER ENERGY drinks’ cans and in some associated promotional material.  This category comprises what Mr Sacks (and I hereafter) refer to as “the BEAST Marks”, being:

   UNLEASH THE BEAST!

   REHAB THE BEAST!

   UNLEASH THE NITRO BEAST!

   UNLEASH THE ULTRA BEAST!

   [7] This is the word used by Mr Sacks.  See paragraph 22 below.

   PUMP UP THE BEAST!

6. As will be seen, both of the Opponent’s grounds of opposition are based on the claimed similarity of the Opposed Mark to one of the BEAST Marks.  Accordingly all of the Opponent’s evidence is ultimately aimed at establishing that the BEAST Marks have garnered a substantial reputation amongst relevant Australian consumers such that use of the Opposed Mark is likely to mislead or deceive these consumers into believing that the Applicant’s clothing is in some way connected to Monster, or at the very least might cause confusion amongst such consumers by causing them to wonder whether this might be the case.  As explained below, however, it is apparent that it is the reputation of the tagline UNLEASH THE BEAST! (“the Original Tagline”) in particular, (being the tagline specifically used on the cans of the original energy drink), on which the opposition principally depends.

7. In this regard Mr Sacks says that:

   5. …Since the launch of the original MONSTER ENERGY drink [in the United States] in 2002, [Monster] has continuously used UNLEASH THE BEAST! on most of the MONSTER [ENERGY] drinks and in connection with promoting its MONSTER ENERGY products.  Over time, [Monster] has expanded its family of BEAST Marks, and now[8] uses [the other BEAST Marks] on the cans of [the variants].

   [8] Mr Sacks’ declaration was made on 15 May 2015, some 11 months after the Filing Date

8. I note Mr Sacks thereafter almost invariably refers to the MONSTER ENERGY drinks generally and to the BEAST Marks collectively, without specifying what proportion of sales or advertising might be attributable to the variants or what proportion of cans sold bore a particular BEAST Mark.  My understanding, nevertheless, is that a substantial majority of sales and promotion both in Australia and internationally was of cans bearing one of the BEAST Marks, the overwhelming majority of which being for the original energy drink bearing the Original Tagline.

9. Monster first started selling the original energy drink in Australia in July 2009 under one or more of the MONSTER Marks and I infer from Mr Sacks’ evidence as a whole that just over three quarters of the cans sold here since then have borne one of the BEAST Marks.[9]  In this regard Mr Sacks says (my emphasis added in bold):[10]

   25. Millions of cans of MONSTER [ENERGY] drinks bearing one or more[11] of the BEAST Marks are sold each year in Australia.  From February/March 2009 to July 2009 Monster sold approximately 7,200-9,600 cans of “M” ENERGY drinks in Australia, which prominently displayed the UNLEASH THE BEAST! mark.  Over the remainder of 2009, more than 9.5 million cans of MONSTER [ENERGY] drinks (displaying the BEAST Marks) were sold in Australia.  This amounted to retail sales of more than AU$28.5 million in that year.  Total retail sales of the MONSTER [ENERGY] drink range in Australia in 2010 exceeded AU$36 million from sales of more than 12 million cans.  Of those 12 million cans, 9.4 featured a BEAST Mark.  In Australia, in 2011, Monster sold approximately 22.3 million cans of MONSTER [ENERGY] drinks amounting to retail sales of approximately AU$66 million.  Of those 22.3 million cans, 17.3 million featured a BEAST Mark.  In Australia, in 2012, Monster sold approximately 19.5 million cans of MONSTER [ENERGY] drinks, amounting to retail sales of approximately AU$58 million.  Of those 17.3 million cans, more than 14.5 million featured a BEAST Mark.

   [9] From 2006 to 2008 an unrelated Australian company sold energy drinks in this country under the trade mark MONSTER but it did not use any of the Beast Marks.  Following litigation the company assigned all its rights in the MONSTER trade mark in Australia to the Opponent in 2009.

   [10] I note the sales and advertising figures disclosed by Mr Sacks are not claimed to be confidential.

   [11] Mr Sacks’ phraseology notwithstanding, there is no evidence before me that any of the cans sold in Australia bore more than one of the BEAST Marks.

10. In Qantas Airways Limited v Edwards[12] (“Qantas”) Yates J indicated that where an opponent relies on several similar marks to establish a reputation in an element common to them all, (here the element BEAST appearing in each of the BEAST Marks), “It is necessary to bear in mind that each of the [marks] is a separate mark for the purpose of considering the operation of s 60 of the Act.[13] In the present matter I believe it is sufficient to consider the reputation of the Original Tagline only and I will limit my discussion accordingly. This is because the Original Tagline is on the face of it the most similar of the BEAST Marks to the Opposed Mark and it appears from the evidence to be the tagline that has enjoyed by far the most use and accordingly able to claim the most significant reputation. Indeed, there is almost no evidence before me showing specific use of any of the BEAST Marks other than the Original Tagline. Thus if the Opponent is unable to succeed on its s 60 (or s 42(b)) ground based on the reputation of the Original Tagline, then I consider it must also necessarily fail based on the reputation of any of the other BEAST Marks.

    [12] [2016] FCA 729 at [160].

    [13] I am unaware of any reason why this would not also be relevant to the Opponent’s s 42(b) ground.

11. It is apparent from Mr Sacks’ evidence as a whole that the Original Tagline is rendered on the cans of the original energy drink and almost invariably in associated promotional material in the stylised manner shown below (“the Stylised Tagline”):

1. The positioning of the Stylised Tagline on the can and its size relative to the MONSTER Marks can be seen from the three images below (with the Stylised Tagline appearing about two thirds of the way down on the third image):

1. Mr Sacks says that the MONSTER ENERGY drinks have been distributed in Australia by Schweppes Australia Pty Ltd since July 2009 and as at the Filing Date had been sold through over 4,000 outlets, including the major grocery chains, convenience stores and petrol stations, pubs and bars, cafes, milkbars and take-away food outlets.  Many millions of cans have been sold in Australia since 2009 and the revenue generated from these sales has also been correspondingly substantial.

2. Mr Sacks describes the marketing strategy used for the MONSTER ENERGY drinks as “not conventional in that Monster does not use direct television or radio advertising to promote its products.  Rather, it “allocates the majority of its marketing, advertising and promotional budget on athlete endorsements and sponsoring athletic competitions and other events.”  He subsequently devotes the major part of Sacks 1 to providing details of Monster’s sponsorship of athletes, teams and events.  Most of this sponsorship concerns activity outside Australia, although several of the events he mentions, (such as Formula One motor racing, the MotoGP for motorcycles and the Dakar rally), do enjoy significant television coverage in Australia.

3. In particular, Mr Sacks says:

   Monster has widely advertised, marketed and promoted its MONSTER [ENERGY] drinks through: the sponsorship of athletes and athletic competitions around the world (which includes vast media and Internet coverage); apparel and merchandise distributed in retail outlets bearing the MONSTER marks and/or BEAST marks; magazines; the MONSTER ENERGY and other Internet websites; social media such as Monster’s Facebook page; publications; the sponsorship of the Las Vegas monorail; the sponsorship of music festivals, music events, and musicians; and the distribution of point of sale (“POS”) and promotional materials.  Some of Monster’s advertising and promotion includes the BEAST Marks. Annexed hereto and marked Exhibit “RCS-8” are copies of other promotional materials with the BEAST Marks that Monster uses to promote the MONSTER energy drinks in Australia.  The annexed photographs are from a sales promotion we did in Australia in 2010.

I note that Exhibit RCS-8 is a single page containing six images showing the Stylised Tagline, three being of POS material and one each of a T-shirt, a condom packet and the can of the MONSTER ENERGY drink itself.

1. Mr Sacks also attaches as Exhibit RCS-9(a) “examples of [the Stylised Tagline] or other BEAST Marks on clothing or similar apparel.”  The Exhibit consists of eight pages showing T-shirts apparently bearing the Stylised Tagline, or people wearing such T-shirts at various outdoor events, although as with use of the tagline on the cans themselves, this usage does seem to me to be very much dwarfed by the abundance of other material displayed.

2. Finally Mr Sacks also provides details of Monster’s social media presence, principally via its websites at < < and < its various Facebook^® pages and its dedicated YouTube^® channel.  I note that the traffic from Australia attracted by these websites prior to the Filing Date was on the face of it considerable and that Monster’s Facebook^® pages had also recorded a large number of “likes” from Australia over a similar period.  I note too that the Stylised Tagline can be seen on some of the website and Facebook^® pages, albeit once again very much dwarfed by the abundance of other material displayed.  From the screenshots provided I am unable to gauge the extent of exposure the Stylised Tagline may have enjoyed via the YouTube^® channel.

1. I turn now to the declaration of Elizabeth Godfrey, who is a legal practitioner and Senior Associate with the Opponent’s Australian attorneys.  She exhibits three declarations made and originally filed in 2012 in support of an opposition to an application by the Coca-Cola Company to register the trade mark  (being a stylised rendition of the letter “M”) for energy drinks and other beverages in Class 32.  As such the three declarations principally concern use of the MONSTER Marks rather than any of the BEAST Marks per se, although some incidental use of the Stylised Tagline can be seen in some of their exhibits.  The three declarations were made by a librarian employed by the Opponent’s Australian attorneys, by a legal practitioner formerly employed by those attorneys and by the then Manager of the Opponent’s Australian subsidiary.  As Ms Ryan explains in her written submissions:

   Whilst these declarations focus on the use by Monster of its MONSTER and “M” trade marks, which was relevant to that opposition, the information relating to brand exposure equally relates to Monster’s UNLEASH THE BEAST! and other BEAST Marks given Mr Sack’s evidence that these marks are integral to the sales and marketing of Monster products.

   [Original underlining retained.]

2. The foregoing is but a brief overview of the most relevant material in the declarations of Mr Sacks and Ms Godfrey, together comprising the evidence in support which, it must be said, at more than 2,300 pages is particularly voluminous and contains a great deal of extraneous and irrelevant material.  In a nutshell, nevertheless, the evidence indicates that the MONSTER ENERGY drinks had enjoyed very substantial sales through multiple outlets across Australia in the five or so years leading up to the Filing Date.  I accept that more than two thirds of the cans of the beverages sold bore the Stylised Tagline, albeit that its placement two thirds of the way down the back of the can and its relatively smaller size render it considerably less prominent than the MONSTER Marks on the cans’ front.  Advertising and promotion of the MONSTER ENERGY drinks, while also substantial, is somewhat unconventional in that it relies primarily on sponsorship of well known athletes attractive to target consumers and of prominent sports and other events.  These sports and events often attract television coverage, by means of which the MONSTER Marks in particular generally receive wide and valuable incidental exposure.  The MONSTER Marks also receive significant exposure via Monster’s websites and social media activities, incidental to which the Stylised Tagline is also promoted to some extent.

3. While not of direct relevance to the present opposition, I am satisfied based on their use that each of the MONSTER Marks would have had a significant reputation in Australia as at the Filing Date. The position is however less clear as far as the BEAST Marks are concerned given their use is much less prominent both on the MONSTER ENERGY drinks’ cans and in Monster’s advertising and promotional materials generally. The Stylised Tagline aside, the evidence does not satisfy me that any of the other BEAST Marks had sufficient reputation in Australia to enliven the Opponent’s s 60 or s 42(b) grounds.

4. While in my view borderline, in the case of the Stylised Tagline I am nevertheless prepared on balance to accept that there is likely to have been sufficient “threshold awareness” amongst relevant consumers in Australia at the Filing Date to bring s 60 into play.

5. In contrast to the evidence in support, the evidence in answer consists only of a four paragraph declaration by the Applicant, with two exhibits reproduced on a single page.  As Ms Ryan noted at the hearing the declaration is in the nature of submissions rather than evidence.  Nevertheless I note for the record that the Applicant characterizes (and not necessarily unfairly) the three declarations exhibited with Godfrey as (mostly) “irrelevant” because “the majority…includes scanned pages of magazines where the Monster ‘M Claw’ logo is displayed.”

6. The Applicant is likewise critical of the evidence in Sacks 1, suggesting the Opponent is not in a position to claim a monopoly in relation to Class 25 goods on any trade mark which happens to contain the word “beast” simply because the word appears in the “slogans” on its energy drink cans.  He suggests that the word is “generic” and adds that none of the BEAST Marks “contain[s] the term ‘Beast Mode’” in any event.

7. The Opponent’s evidence in reply is a brief second declaration by Rodney Sacks addressing what was said in the Applicant’s declaration.  Mr Sacks notes that Godfrey “includes numerous examples of use of my Company’s marks, including the BEAST Marks in Australia.”  He adds that, “The word BEAST is not descriptive in any manner of clothing, nor is it generic in this context.”  Finally, he emphasizes that Monster “has used its BEAST marks…in relation to clothing and apparel in Australia since as early as March 2010, and possibly earlier, which predates the [Filing Date].”

8. I move on now to consider the specific grounds of opposition pressed at the hearing. It is convenient to begin with the s 60 ground, as Ms Ryan did in her submissions.

Discussion

Section 60

1. Section 60 of the Act is reproduced below:

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.

Note: For priority date see section 12.

1. The ground based on s 60 is particularised in the SGP as follows:

   Reference is made to details of the Opponent’s reputation set out in the Particulars for [the s 42(b) ground].[14]  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 trade marks prior to the [Filing Date]) and internationally in the BEAST trade marks and the BEAST brand, consumers are likely to be deceived or confused into believing that the goods sold 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.

   [14] As to which see paragraph 55 below.

2. As mentioned, I am prepared to accept that amongst the BEAST Marks generally the Stylised Tagline in particular is on balance likely to have enjoyed sufficient reputation in Australia to enliven the Opponent’s s 60 ground and I will accordingly limit this discussion to that tagline only. Taking the reputation of the Stylised Tagline into account, then, I must consider whether notional use of the Opposed Mark in a normal and fair manner would be likely to deceive or cause confusion amongst relevant consumers. While s 60 is no longer predicated on a finding that the parties’ marks be “deceptively similar”,[15] as Yates J noted in Qantas[16] “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.”

   [15] As defined in s 10 of the Act.

   [16] Qantas at [142].

3. Nor, as his Honour noted,[17] is it necessary that “the ‘other’ mark “have acquired a reputation in Australia that is specific to the goods or services which are the subject of the opposed application.”  Nevertheless, significant difference between the parties’ relevant goods or services is on the face of it likely to be a further important consideration in assessing the likelihood of confusion or deception.

   [17] Qantas at [143].

4. Another relevant factor is, as Ms Ryan submitted, the degree of distinctiveness of the element or elements shared by the parties’ respective trade marks under comparison, in this case the element BEAST.

5. Bearing these factors in mind, the likelihood of relevant deception or confusion is in my view low for the following reasons.  Firstly there are the immediately obvious visual, aural and semantic differences between the parties’ marks when considered as wholes.  The marks as wholes do not look alike at all, nor do they sound alike, in my estimation.  The Stylised Tagline contains more words and twice the number of syllables.  Unlike the Opposed Mark it forms a self contained and relatively coherent phrase.  Moreover the somewhat unusual manner in which the Stylised Tagline is rendered and the addition of an exclamation mark further distinguish it from the Opposed Mark.  I agree with Ms Ryan’s submission that it is important to consider possible notional use of the Opposed Mark, that is to consider “what the [A]pplicant can do if registration is obtained.”[18]  However there is no evidence before me suggesting the Applicant’s intention is to mimic the manner in which the Stylised Tagline is rendered and judicial commentary in this regard indicates I must assume use of an opposed mark in a “fair and reasonable” manner”[19] and “by reference to the use to which [the Applicant] can properly put [his] trade mark”[20] rather than assume the likelihood of use apparently based on bad faith.

   [18] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, Kitto J at 595.

   [19] As Evershed J put it in Smith Hayden & Co Ltd’s Application (1946) 63 RPC 97 at 101.

   [20] As Mason J put it in Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353 at 362.

6. When spoken, I believe the phrase “unleash the beast!” and the words “beast mode” are also readily distinguishable on the face of it.  It is generally accepted, I think, that the first word of a trade mark tends to be the most readily recalled and in the present case the word “beast” is the last word of the phrase “unleash the beast!” and the first word of the Opposed Mark.  To the extent that the Stylised Tagline would be “imperfectly recollected” by consumers I do not think it is likely to be recollected by the word “beast” alone.  In this regard I do not agree with Ms Ryan that the word “beast” alone “is clearly the essential and memorable element of both marks” when the marks are considered as wholes.

7. Ms Ryan argued that the common element BEAST was nevertheless “highly distinctive in the context of apparel” and for that reason was “the common, dominant and essential feature (or idea) of each of the marks.”  At first blush one might indeed think the word “beast” highly distinctive for Class 25 goods, at least based on its inherent, ordinary meaning.  I am nonetheless mindful of the fact that there were already numerous registrations in separate ownership in Class 25 for trade marks containing (or in one case consisting of) the word “beast” as at the Filing Date and, notwithstanding its inherent character, it is accordingly difficult to agree that it was then particularly distinctive in relation to apparel.  These earlier third party registrations in Class 25 include, by way of example:

   805264           BEASTMASTER

   863999           BOOT BEAST

   926668[21]        BRING OUT THE BEAST

   1224962         BEAST

   1380142         Boy vs Beast, and

   1522140         BODY BEAST

   [21] I note registration 926668 BRING OUT THE BEAST in Classes 25, 32 and 41, which dates from 2001 (thus pre-dating any use by Monster), also covers, inter alia, “energy drinks” in Class 32.  The mark is apparently used, since the Trade Marks Register indicates Monster has on two occasions unsuccessfully applied for its removal from the Register for non-use.

8. In addition to the registrations mentioned above, registration 1512490 is on the face of it particularly notable given the tagline it bears.  Owned by an Australian company apparently unrelated to Monster[22] and dating from 2012, it covers, inter alia, “Apparel (clothing, footwear, headgear)” in Class 25.  The mark itself is reproduced below:

[22] The Register indicates that the Opponent opposed the registration.

1. The Opposed Mark does not to me appear to be any more similar to the Stylised Tagline than is the Opponent’s tagline to several of these marks registered for Class 25 goods by third parties before the Filing Date.

2. As far as their apparent “meaning” is concerned, the Stylised Tagline to my mind conveys an exhortation to release, say, unbridled energy, whereas the Opposed Mark in the context of Class 25 goods suggests to me the branded apparel is likely to be unconventional in some way, fashionably “edgy” or rebellious perhaps.  I thus consider the parties’ marks are likely to leave quite distinct impressions on the minds of relevant consumers.

3. Finally, as I have noted, the evidence satisfies me that because of the use they have enjoyed the MONSTER Marks in particular and indeed the MOSTER ENERGY drinks themselves are likely to be well known amongst the target cohort of actual and potential energy drink consumers in Australia. The evidence indicates that the Stylised Tagline is very rarely used other than in very close proximity to the MONSTER Marks, whether that be on the cans in which the energy drinks are sold or in just about all of the advertising and promotional material produced by Monster. It is for that reason, (indeed so Ms Ryan submitted), that I was prepared to accept that the Stylised Tagline might have sufficient reputation in its own right to bring the s 60 ground into play. While there is some evidence, albeit not a great deal, of use of the Stylised Tagline (and at least one example of the unstylised Original Tagline) as a slogan on T-shirts and caps, this usage appears to me primarily incidental to the promotion of the MONSTER ENERGY drink rather than use for a line of clothing per se.  There are, for example, no figures provided in the Opponent’s evidence for actual sales of apparel of any kind, whether in Australia or elsewhere.  I thus believe the reputation of the Stylised Tagline is likely to be primarily associated in the minds of relevant consumers with the Opponent’s energy drink rather than with goods in Class 25 as such.

4. Given the consistent and reinforcing nature of Monster’s use of the Stylised Tagline in conjunction with the MONSTER Marks and, in turn, with the MONSTER ENERGY drinks, relevant consumers are thus all the more unlikely in my view to be deceived or confused by use of the Opposed Mark for Class 25 goods in circumstances where that use is not associated with Monster’s particular branding cues and the MONSTER Marks themselves.

5. 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.

6. The Opponent has accordingly not established its ground of opposition under s 60.

Section 42(b)

1. Section 42(b) of the Act is reproduced below:

Trade mark scandalous or its use contrary to law

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

(a) …

(b) its use would be contrary to law.

1. The ground is particularised in the SGP as follows:

   The Opponent is the owner in Australia, the United States and internationally in approximately 115 countries of the Trade Marks

   1.        UNLEASH THE BEAST!

   2.        

   3.        REHAB THE BEAST!

   4.        UNLEASH THE ULTRA BEAST!

   in relation to energy drinks and related goods, including nutritional supplements (“the BEAST marks”).

   The Opponent has sold more than 13 billion cans of MONSTER energy drinks worldwide and now sells more than 2 billion cans per year.  The UNLEASH THE BEAST! trade mark is featured on nearly every can of MONSTER energy drinks.  Sales of the Opponent’s MONSTER energy drinks have generated more than US$24 billion in total retail revenues worldwide, with estimated retail sales exceeding US$5 billion per year.  The Opponent also uses one or of the BEAST marks extensively on promotional and related materials including clothing, hats, caps and merchandise.

   Based on the Opponent’s reputation in Australia in relation to energy drinks, nutritional supplements and related goods including apparel consumers are likely to be misled or deceived into believing that the goods sold 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 [O]pposed [M]ark under the [Opposed Mark] also suggests that the trade mark Applicant and its goods/services 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).

2. Ms Ryan’s written submissions in relation to the s 42(b) ground were relatively brief and (with footnotes omitted) are set out below:

   76. Section 42(b) provides that an application for the registration of a trade mark “must be rejected if: ... (b) its use would be contrary to law”.

   77. The application of s 42(b) is to be considered as at the priority date, although looking forward to prospective conduct after registration.

   78. The use of the Opposed Mark by [the Applicant] would be contrary to law by contravening ss 18 and 29 of the Australian Consumer Law, in Schedule 2 to the Competition and Consumer Act 2010 (Cth). Specifically, the use of the marks in trade or commerce in respect of apparel would be misleading or deceptive, or likely to mislead or deceive, and suggests a sponsorship, approval or affiliation with Monster and its goods which Mr Darma does not have.

   79. Monster’s evidence…demonstrates that its use of the BEAST Marks in connection with its energy drinks was well established in Australia by the [Filing Date].

   80. Given the coincidence of the element “BEAST” in the Opposed Mark in circumstances where this element is very strongly associated with Monster and its Monster goods and merchandise, there is a “real or not remote possibility” of a reasonably significant number of Australian consumers being misled or deceived as to an association or sponsorship of the ‘Beast Mode’ goods with Monster and/or its goods.  This scenario points to a level of consumer confusion which meets the criteria set out by Hill J in Equity Access Pty Ltd v Westpac Banking Corp [16 IPR 431 at 440-441].

   81. The ground under s 42(b) is therefore satisfied.

3. Section 18 and, insofar as it is apparently relevant, s 29 of the Australian Consumer Law 2010 (“the ACL”) are set out below:

Section 18: Misleading or deceptive conduct

(1) A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

Section 29: False or misleading representations about goods or services

(1) A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:

…

(g) make a false or misleading representation that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits; or

(h) make a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation.

1. I note that these provisions of the ACL are in essentially identical terms to ss 52 and 53(c) and (d) of the now repealed Trade Practices Act 1974 (“the TPA”) and, as Ms Ryan’s submissions acknowledge, case law under the TPA in this area is also relevant to interpretation of ss 18 and 29 of the ACL.

1. It is generally the case that where an opponent is unsuccessful in establishing its s 60 ground, it would inevitably also be unable to establish the relevant sections of the ACL (or TPA) had been breached in circumstances where the reputation(s) of the very same trade mark or trade marks is relied on. This is such a case in my estimation. For the reasons already discussed in connection with the Opponent’s s 60 ground, based on the evidence before me I would only admit that the Stylised Tagline possibly had the kind of reputation contemplated by ss 18 or 29 of the ACL. There is simply insufficient evidence of an objective, evaluative nature for me to assess the reputation of any of the other BEAST Marks.

2. That said, unlike s 60 of the Act s 18 and ss 29(1)(g) and (h) of the ACL are not concerned with behavior that “would be likely to deceive or cause confusion”. The relevant provisions of the ACL require that I be satisfied there is a likelihood that relevant consumers would be misled or deceived as to the true origin of the Applicant’s apparel or as to its having some connection with Monster, rather than mere confusion or simply being caused to wonder as is the case with s 60 of the Act. More is thus required to establish a likelihood of misleading or deceptive conduct (or, similarly, conduct amounting to the making of false or misleading representations) than is the case with trade marks likely to deceive or cause confusion under s 60.[23]

   [23] See for example Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 1A IPR 684 per Gibbs CJ at 688.

3. In the present matter I consider the reasoning set out earlier in rejecting the Opponent’s case based on s 60 of the Act is no less applicable to its claim that the Applicant’s use of the Opposed Mark as at the Filing Date would have breached the relevant provisions of the ACL. The Opponent has accordingly not established its ground of opposition under s 42(b).

Decision

1. Section 55(1) of the Act provides that unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

   (a)  to refuse to register the trade mark; or
                 (b)  to register the trade mark (with or without conditions or  limitations) in respect of the goods and/or services then
     specified in the application;

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

   application was opposed has been established.

   Note: For limitations see section 6.

2. I have found the Opponent has not established either of the grounds listed in the SGP.  The Opposed Mark may accordingly proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

1. The Applicant not having taken part in the hearing, filed submissions or made a claim for costs, I make no award of costs in this case.

Michael Kirov
Hearing Officer
Trade Marks Hearings
13 January 2017