Monster Energy Company v Northern Innovations Holding Corp

[2023] ATMO 65

TRADEMARKSACT1995

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

Re:Opposition by Monster Energy Company to registration of trade mark applications 2101980 and 2101981 (5, 32) – M (Figurative) and M MUSCLETECH (Figurative) – in the name of Northern Innovations Holding Corp.

Delegate:

Nicholas Smith

Representation:

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

Applicant: Roseanne Mannion of Spruson & Ferguson

Decision:

2023 ATMO 65

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 oppositions brought by Monster Energy Company (‘Opponent’) to the registration of the trade marks which are the subject of the applications detailed below in the name of Northern Innovations Holding Corp. (‘Applicant’):

Application

Number:

2101980

FilingDate1:

8 July 2020

Goods:

Class 5: Dietary supplements; liquid nutritional and dietary supplements, including, ready to drink sports supplements; dietary and nutritional supplements, including, protein supplements formed and packaged as bars; dietary supplements, namely, protein powders; nutritional supplement meal replacement bars; powders, and shakes for boosting energy; powdered nutritional supplement drink mixes containing protein; Dietary food supplements.

Class 32: Non-alcoholic beverages, including, sports drinks

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

(‘Applicant’s Goods’)

TradeMark:

(‘M Mark’)

Application

Number:

2101981

FilingDate:

8 July 2020

Goods:

Applicant’s Goods

TradeMark:

(‘Muscletech Mark’)

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 applications’ acceptance for possible registration in the Australian Official Journal of Trade Marks, the Opponent filed Notices of Intention to Oppose the registrations followed by Statements of Grounds and Particulars on 2 March 2021 (‘SGPs’). The SGPs raised identical grounds of opposition under ss 42(b), 44, 60 and 62A however there are differences in the particulars between the two SGPs. The Applicant filed Notices of Intention to Defend on 12 May 2021.

Evidence

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

·Declaration by Elizabeth Kate Godfrey, principal at Davies Collison Cave, legal representatives of the Opponent, made on 12 August 2021 with Exhibits EKG-1 to EKG-35 (‘Godfrey 1’);

·Declaration by Paul J Dechary, Deputy General Counsel of the Opponent, made on 11 August 2021 with Exhibits PJD-1 to PJD-76 (‘Dechary Declaration’); and

·Declaration by Emily Maartensz, lawyer employed by Davies Collison Cave made on 5 August 2021, with Exhibit EEM-1 (Tab 1 to Tab 79 (‘Maartensz Declaration’).

5.     Exhibited to the Godfrey and Dechary Declarations 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 (‘Roberts Declaration’) with Exhibits DJR-1 to DJR-48; and

·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 1 August 2017 with Exhibits SAP-1 to SAP-38 (‘Pontrelli Declaration’); and

·     Declaration made by Sam Peter Thiele dated 11 August 2017 (Thiele Declaration’) with Exhibits SPT-1 and SPT-32.

6. The Applicant filed the following evidence in answer:

·Declaration by Jo-Ann Heikkila, Director of Trademark & Corporate Affairs of Iovate Health Sciences International Inc., the licensee of the Trade Marks from the Applicant, made on 4 November 2022, with Annexures 1 to 19 (‘Heikkila Declaration’); and

·Declaration by Shannon Fati, a Registered Trade Mark Attorney of Spruson & Ferguson, the representative of the Applicant, made on 9 November 2021,with Annexures SF-1 to SF-9 (‘Fati declaration’).

1. The Opponent filed the following evidence in reply:

·Declaration by Elizabeth Kate Godfrey made on 24 September 2021 (‘Godfrey 2’).

8. 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 7 September 2022 the

Applicant requested an oral hearing. The matter was set down for a hearing on 18 April 2023 and the matter was allocated to me. In line with usual practice, a notice was sent to the parties on 30 January 2023 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 4 April 2023 (‘Opponent’s Submissions’). The Applicant filed written submissions on 11 April 2023 (‘Applicant’s Submissions’). At the hearing Siobhan Ryan of Counsel represented the Opponent, instructed by Elizabeth Godfrey of Davies Collison Cave, and Roseanne Mannion of Spruson & Ferguson represented the Applicant.

9. 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

1. 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.

2. As much of the evidence put on by the Opponent in this matter is identical to that filed in Monster Energy Company v PepsiCo2, I extract the delegate’s summary of the evidence in that matter below:

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

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

(‘MONSTER Trade Marks’)

·     MONSTER

·     MONSTER ENERGY (‘MONSTER ENERGY Trade Mark’)

^·   (‘Claw Device’)3

·   (‘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

³ I note that in the SGPs the Claw Device is referred to as the M Icon.

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:

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	16 July 2010	5, 32
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	8 January 2015	5, 32

ABSOLUTELY ZERO
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

12.     In addition, I note that the Opponent is the owner of the Trade Mark MUSCLE MONSTER (‘Muscle Monster Mark’) in Australia4. The Maartensz Declaration, that was not part of the evidence in Monster Energy Company v PepsiCo, provides evidence of the use of the Monster Trade Marks and in particular the Claw Device in various video-games and online catalogues. Godfrey 2 primarily consists of submissions on the extracts of the Register extracted in the Fati declaration.

The Applicant

13.     The relevant claims/statements in the Heikkilya Declaration can be summarised as follows:

·     The Applicant is the owner of the Trade Marks, which it licenses to Iovate Health Sciences International. It exercises control over the use of the Trade Marks and hence all use by Iovate and other entities is use by the Applicant.

·     The Applicant has used the Muscletech brand since 1996 internationally focusing on supplements for improved human performance. The Muscletech brand has been used continuously in Australia since 2000. The Applicant has a significant global reputation in the Muscletech brand and has extensively promoted the brand.

·     The Trade Marks were designed in 2020 as an evolution of the Muscletech brand and were first used in Australia in March 2021. These marks are used on a range of protein and supplement products and have been promoted by the Applicant in Australia.

⁴ TM numbers 1326143, 1664310, 2038631 registered for a variety of goods in classes 5, 30 and 32

·     The declarant is not aware of any confusion between the Applicant’s products and the Opponent’s products.

14.     The annexures to the Heikkilya Declaration include the trade mark licence agreement between the Applicant and Iovate and examples of use (including advertising and sales figures) of the Trade Marks in the current form and the earlier use of the Muscletech brand.

15.     The Fati Declaration contains a series of extracts from the Trade Marks Register in respect of registrations containing the single letter ‘M’ in classes 5 and 32. In addition the Fati Declaration contains extracts from the Applicant’s website, and third party websites that supply nutritional supplements and protein powder. The results of those searches indicate the terms ‘monster’ and ‘muscle’ are commonly used for various products in that market.

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above, in the SGPs the Opponent nominated grounds of opposition under ss 42(b), 44, 60 and 62A however in its written submissions it indicated that it did not press the s 62A ground of opposition. To successfully oppose the applications the Opponent needs to establish one of the nominated grounds.

^17.       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 (both applications having the same filing date), which is also the priority date for the purposes of ss 44 and 60.7

Discussion

Section 44

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).

1. 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.

19.     To successfully oppose the applications 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 by a person other than the Applicant:

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

·     is substantially identical with or deceptively similar to the Trade Marks (‘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’).

1. In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the applications (or allow them 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 Marks, that there are other circumstances which would make registration of the Trade Marks proper, or that the Applicant has continuously used the Trade Marks beginning before the priority date of the Opponent’s relied upon marks.

1. The Opponent has particularised this ground of opposition in the SGP filed against trade mark 2101980 by reference to a variety of Trade Marks registered in classes 5 and 32 comprised of or featuring the Claw Device. The Opponent has particularised this ground of opposition in the SGP against trade mark 2101981 by reference to the same trade marks with the addition of trade marks featuring the words MUSCLE MONSTER. Each of the trade marks particularised in the SGPs has a priority date that is earlier than the priority date of the Trade Marks.

   Substantially identical and/or deceptively similar

22.     The Opponent has particularised a large number of Trade Marks in both the SGPs however these trade marks essentially consist of the Claw Device, the Claw Device with additional elements that operate to further distinguish the mark(s) from the Trade Marks, and in respect of Trade Mark 2101980, the words Muscle Monster. It is not necessary to compare the Trade Marks to the marks that consist of the Claw Device with additional elements; were I to find that the marks were not similar to the Claw Device I would reach

the same conclusion with the marks with additional elements.8 The Trade Marks and the relevant trade marks particularised by the Opponent are set out below:

TM 2101980

TM 2101981

MUSCLE MONSTER

1. The Opponent does not submit that the Trade Marks are substantially identical to any of the Opponent’s relied upon trade marks and for completeness I confirm that I have reached the same conclusion. 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.9

⁸ The Opponent submits that I should have special regard to trade mark number 1785924 which consists of the word HYDRO within a rectangular frame superimposed over the outer leg of the Claw Device.. I do not accept the submission; the word Hydro in trade mark 1785924 renders 1785924 less similar to either mark than the marks consisting of the Claw Device. Equally I do not consider it relevant to consider the difference between marks featuring the Claw Device and the Claw Device at a slant; this is de minimus. The mere fact that the Claw Device in Trade Mark 1912868 is at an angle does not render it more similar, in any material way, to the Trade Marks than the Claw Device depicted above.

⁹ [1963] HCA 66, [12].

24.     On a side-by-side comparison there are clear differences which mean that a total impression of dissimilarity emerges from a comparison of each of the Trade Marks and the Opponent’s trade marks particularized. I move then to consider whether the Trade Marks and trade marks particularized are deceptively similar.

25.     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].10

26.     Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths11 at [49]; Australian Woollen Mills12 at 658.

Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s13 at

[73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

¹⁰ Ibid [13].

¹¹ Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

¹² Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

¹³ Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at

[43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating14 at 594 – 595.

Sixth, 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 the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, 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: Crazy Ron’s at [100].15

^27.       In the recent High Court case of Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, the Court noted the following:16

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"17. 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 mark18, 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 mark19. Consideration of the context of those surrounding circumstances does not "open

¹⁴ Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

¹⁵ [2012] FCA 1022, [37]-[46].

¹⁶ Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [33] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

¹⁷ New South Wales Dairy Corporation v Murray-Goulburn Co-operative Co Ltd [1989] FCA 124; (1989) 86

ALR 549 at 589 (emphasis added), approved in Henschke (2000) 52 IPR 42 at 62 [44], Hashtag Burgers [2020] FCAFC 235; (2020) 385 ALR 514 at 532 [64], Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] FCAFC 8; (2021) 157 IPR 230 at 238 [27], PDP Capital Pty Ltd v Grasshopper Ventures
Pty Ltd (2021) 285 FCR 598 at 622 [97] (see also 626 [111]) and Swancom (2022) 168 IPR 42 at 56 [73].
¹⁸ TM Act, s68
¹⁹ New South Wales Dairy [1989] FCA 124; (1989) 86 ALR 549 at 589.

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 mark20

1. When comparing the M Mark and the Claw Device the Applicant’s Submissions, which I reproduce below, set out the differences between the respective marks:

This mark is a highly stylised letter M in block capitals. The left-hand side of the mark has a stylised striped pattern of intersecting lines. The right-hand side of the mark is a black block. As a whole, the overall impression of the Applicant’s Mark is a stylised and patterned letter M.

On the other hand, the overall impression of the Opponent’s M Icon is of three vertical slashes or tears.

1. While each mark does consist of a device that evokes the letter M, the marks are otherwise utterly visually dissimilar, with the Claw Device being a highly distinctive device evoking slashes or tears while the M Mark is a highly stylized version of M. The conceptual similarity does exist, in that they both refer to the letter M, but the Claw Device also has the conceptual element of a claw or tearing or slashes, which does not exist in the M Mark. The marks are aurally identical but this is less relevant given the surrounding circumstances of the purchase of the Applicant’s Goods. The Opponent submits that the Applicant’s Goods, especially the class 32 goods, are often purchased from a fridge at a retailer and indeed the Opponent provides numerous examples of the display of its products in a fridge with the Claw Device prominently displayed. Unlike alcoholic beverages they are less likely to be ordered by a ‘bar call’ and as such the aural identity is less relevant than the fact that the marks are visually dissimilar.

1. Both parties cited various decisions issued by this office that they say support their position. Noting that each case is to be decided on its own merits, I find that the two decisions referred to below are the most helpful in considering deceptive similarity in this case.

1. In the decision in Contract Resources Pty Ltd v CQMS Pty Ltd21, the Hearing Officer, when considering whether highly stylised devices featuring the letters CR were deceptively similar,

²⁰ Swancom (2022) 168 IPR 42 at 59 [89]. See also Henschke (2000) 52 IPR 42 at 62 [44].

²¹ [2023] ATMO 2 (Hearing Officer Butson).

made the statement set out below. While each case is decided on the merits; my conclusion regarding the nature of the Claw Device and the Trade Marks is similar.

Regardless as to whether consumers would read the Opponent’s CR Device as the letters CR, in my view, the distinctiveness and impression in the Opponent’s CR Device resides heavily in the stylisation, rather than the simply the letters. Even when considering the doctrine of imperfect recollection,22 I would think these rather significant visual differences between each parties’ CR Devices, would be sufficiently recalled in the mind of the relevant consumer rather than just the letters CR. For the sake of completeness, I note that some of each parties’ trade marks also feature additional elements which are likely to further differentiate them.23

1. In the decision at Monster Energy Company v Cheng Shin Rubber Ind. Co., Ltd24 this office

   was asked to consider whether   was deceptively similar to the Claw Device. I

   do note the Opponent’s Submissions that this case is less relevant as the goods the subject of this case were not as close as the present case; however the Hearing Officer’s conclusion about the nature of the Claw Device and whether consumers would be confused with another device that amounts to a stylized M is relevant as it is made essentially independently of consideration of the goods. I extract the relevant portion of this decision, noting that the analysis below is made independent of any consideration of the goods for which the applied- for mark was sought to be registered or the circumstances surrounding the purchase of those goods:

In my view, the impression conveyed by the trade marks cannot be distilled down to the impression of an elongated ‘M’. While the trade marks resemble the letter ‘M’, each trade mark is comprised of distinctive visual features that serve to distinguish the trade marks. The three vertical jagged lines present in the Opponent’s Trade Marks resemble a downwards tear or slash. Consumers who see the Opponent’s Trade Marks are, in my view, likely to recall this distinctive manner of representation, not just that the device resembles the letter ‘M’. Although the Trade Mark is also comprised of three vertical lines, the chevron present at the top of the Trade Mark and the absence of any jagged

²² Re Rysta Ltd’s Application (1943) 60 RPC 87, 108 (Luxmoore LJ).

²³ Contract Resources Pty Ltd v CQMS Pty Ltd [2023] ATMO 2, [34] (Hearing Officer Butson).

²⁴ [2022] ATMO 187 (Hearing Officer Brown).

lines or stylization that otherwise resembles a tear or claw mark are clear points of differentiation between the trade marks. Even allowing for imperfect recollection, I am not convinced that a consumer upon viewing the Trade Mark and the Opponent’s Trade Marks would be caused to wonder whether the relevant goods or services derive from the same trade source. Accordingly, I do not consider the Trade Mark to be deceptively similar to any of the Opponent’s Trade Marks.25

1. My conclusion is the same as the hearing officer’s above . The impression of the Claw Device is a distinctive one, as is the impression created by the very stylized M Mark. While both marks do refer to the letter ‘M’, even allowing for imperfect recollection and considering the surrounding circumstances I do not consider that there is a real tangible danger of deception or confusion. Accordingly, I do not consider the M Mark to be deceptively similar to the Claw Device or any of the Opponent’s marks that consist of or incorporate the Claw Device in any form.

1. I note for completeness that the Opponent has submitted that the M Mark reproduces the essential feature of the trade marks particularized by the Opponent, being the letter ‘M’. I reject this submission and note that none of the trade marks particularized by the Opponent consist of or contain the letter M solus in plain form; rather the essential feature of these marks is the Claw Device, which as I have found above is sufficiently distinctive such that deception or confusion would not arise.

1. As I have found that the M Mark is not deceptively similar to the Claw Device, and the Muscletech Mark contains the additional element ‘muscletech’ that further distinguishes it from the Claw Device, I reach the same conclusion in respect of the Muscletech Mark. When comparing the Muscletech Mark with the Muscle Monster Mark I note that the only similarity between the marks is the presence of the word ‘muscle’. There are otherwise numerous differences between the marks including the presence of the ‘tech’ element and ‘M’ device in the Muscletech Mark and the presence of the word MONSTER in the MUSCLE MONSTER Mark. The effect of these differences is that the marks are visually, aurally and conceptually different. Even considering the surrounding circumstances I do not consider there is a real tangible danger of deception or confusion.

²⁵ Ibid, [42].

1. It is not necessary to consider whether any of the trade marks particularised by the Opponent are registered in respect of similar goods and/or services closely related to the Applicant’s Goods; even if I conclude that the respective marks were registered for similar goods and/or closely related services I would not find the marks to be substantially identical or deceptively similar for the reasons set out above.

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

Section 60

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.

1. 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.

1. In McCormick & Co Inc v McCormick26, 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’.27 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

²⁶ [2000] FCA 1335.

²⁷ Ibid, [81].

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 …28

1. 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.29

1. 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 Ltee30 was decided under s 28(a) of the (now repealed) Trade Marks Act 1955. 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

²⁸ (1992) 33 FCR 302, 343.

²⁹ Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

³⁰ [2000] FCA 1587.

outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.31

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

   Reference is made to the details of the Opponent's reputation set out in the particulars in 1 above. As a result of the Opponent's extensive reputation in Australia (as a result of significant exposure of the M Claw Icon trade marks in Australia since as early as 2004) and internationally in the M Claw Icon trade marks, consumers are likely to be deceived or confused into believing that the goods offered and 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.

The likelihood of deception or confusion occurring is increased because the Opponent has an extensive and substantial reputation in the M Claw Icon in relation to identical goods and in relation to goods which directly overlap with those claimed in the classes 5 and 32 of the Opposed Mark.

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

   Reference is made to the details of the Opponent's reputation set out in the particulars in 1 above. As a result of the Opponent's extensive reputation in Australia (as a result of significant exposure of the M Claw Icon trade marks in Australia since as early as 2004) and internationally in the M Claw Icon trade marks, consumers are likely to be deceived or confused into believing that the goods offered and 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.

The risk of consumers being misled or deceived is increased because of the Opponent's history of using M Claw Icon alone and M Claw Icon with the word MONSTER or other words (including M Claw + MUSCLE MONSTER (shown above)) such that the goods sold under the Opposed Mark will be perceived as part of or, a version in, the Opponent's M Claw Icon / MUSCLE MONSTER product range.

1. 
   

   For clarity, the ‘particulars in 1’ mentioned in both SGPs above are the particulars for the s42(b) grounds of opposition that are reproduced later in the decision. Equally the reference in these SGPs to examples of the use of the M Claw Icon/Muscle Monster refer to examples of use in the particulars for the s42(b) ground of opposition reproduced later in the decision.

³¹ Ibid [91]. 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).

1. I am satisfied by the Opponent’s evidence of the reputation of the Claw Device in Australia in respect of energy drinks. While the Applicant rightly notes that much of the Opponent’s branding and marketing involves the Claw Device alongside the word ‘Monster’, the Opponent’s products are so ubiquitous, the sales in Australia over an 11-year period so significant, and the evidence of advertising is so extensive (including advertising featuring the Claw Device solus) that there is no doubt of the significant reputation in the Claw Device. I note that on the cans of the Applicant’s product, the Claw Device is reproduced in as prominent or arguably more prominent position then the word ‘Monster’ and operates as a separate indicium of origin in a variety of advertisements and promotions.

1. Noting that this is particularised in the SGPs above, I am equally satisfied of the reputation of the Claw Device alongside the word Monster, however this is irrelevant to my finding under s 60; if I were to find that the use of the Trade Marks did not result in deception or confusion by reason of the reputation of the Claw Device; I would naturally reach the same conclusion with respect to the Claw Device alongside the word Monster (or any other word) as the addition of the words further distinguish the marks particularised from the Trade Marks.

1. I am not satisfied by the evidence before me that the Opponent, at the relevant date, had a reputation in Australia in any marks containing the words MUSCLE MONSTER. There is no evidence before me of any proven sales or targeted advertising for the Opponent’s Muscle Monster products in Australia.32 The sales figures for the Opponent’s Muscle Monster product in the United States in the 6-7 years between its launch and the relevant date, while impressive in an Australian context, are less impressive in the context of the much larger United States market. While I note the considerable level of travel between Australia and the United States I am not satisfied that the Opponent’s Muscle Monster product is so ubiquitous in the United States that the Opponent acquired a spill-over reputation in Australia in the Muscle Monster Mark or any similar marks at the relevant date.

1. It is not sufficient that the Opponent merely establishes that its trade marks have a reputation; the Registrar must also be satisfied that, because of that reputation the use of the Trade Marks

³² The Muscle Monster product is available for purchase at Amazon.com.au but there is no evidence of any direct sales through that method or any advertising that the product is available for purchase through Amazon.com.au.

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 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 observations of men considered in the mass affords the standard.33

1. In Registrar of Trade Marks v Woolworths Ltd French J highlighted the following further matters concerning confusion:

   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.

   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.34

1. 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.35

³³ (1937) 58 CLR 641, 658.

³⁴ [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.

³⁵ [2012] ATMO 124, [40] (Hearing Officer Thompson).

1. 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.’36

2. Finally, I note that in considering whether there is a likelihood of confusion, I must consider the notional use of the Trade Marks by the Applicant, rather than actual use or any reputation in the Trade Marks held by the Applicant.37

3. 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 Marks 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 Marks 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 than under s 44 (which requires consideration of the notional use of the nominated trade marks rather than their actual use in the market).

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

Section 42

1. 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.

³⁶ [2016] FCA 729, [142] (Yates J).

³⁷ 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.

1. 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 Applicant would be, rather than could be, contrary to law on the balance of probabilities.38 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’.39

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

   The Opponent has sold 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 exceeding US$10 billion per year. Since 2002, Monster has spent over US$8.5 billion in advertising, marketing and promoting its MONSTER energy drinks, which feature 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 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 also suggests that the trade mark Applicant and its goods specified in classes 5 and 32 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).

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

   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, including nutritional supplements, apparel and

³⁸ Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 (Madgwick J).

³⁹ Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353 (Wilcox J).

accessories. The Opponent also produces and licenses a range of products bearing the M Claw Icon trade marks and has a well-known reputation in relation to sponsoring high profile sporting events, gaming and music events and teams and/or individuals participating in those events.

The Opponent has sold 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 exceeding US$10 billion per year. Since 2002, Monster has spent over US$8.5 billion in advertising, marketing and promoting its MONSTER energy drinks, which feature 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 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 also suggests that the trade mark Applicant and its goods specified in classes 5 and 32 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 risk of consumers being misled or deceived is increased because of the Opponent's history of using M Claw Icon alone and M Claw Icon with the word MONSTER or other words (including M Claw + MUSCLE MONSTER) such that the goods sold under the Opposed Mark will be perceived as part of or, a version in, the Opponent's M Claw Icon / MONSTER product range.

The Opponent also has a reputation in the trade mark M Claw Icon + MUSCLE MONSTER (and MUSCLE MONSTER alone) in relation to a line of dairy- based protein energy shakes and in relation to a range of apparel. Examples of how the Opponent uses M + MUSCLE MONSTER are below:

The fact that the Opponent also has this reputation further increases the likelihood of consumers being misled or deceived by the use of the Opposed Mark which combines the letter M + MUSCLETECH.

1. As previously stated the Opponent has failed to establish a ground of opposition under s 60 for either mark. 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 60,40 and consequently I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Marks would be contrary to s 18 of the ACL.

1. Paraphrasing the statement of the Registrar’s Delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL,41 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 Act 1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.42 Sections 52 and 53 of the TPA were, respectively, the equivalent provisions to ss 18 and 29 of the ACL.

⁴⁰ 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).

⁴¹ [2014] ATMO 65, [50] (Hearing Officer Wilson).

⁴² [2003] FCA 104, [107] (Beaumont J).

1. For these reasons I am not satisfied that use of the Trade Marks 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

1. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGPs. Trade mark application nos. 2101980 and 2101981 may proceed to registration not less than 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 either the appeal is withdrawn or discontinued. Otherwise the disposition of the applications should be in accordance with the Court’s order or direction.

2. 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 in respect of trade mark number 2101980 against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

3. With respect to trade mark number 2101981, I am aware that in cases involving oppositions to multiple related marks it is customary to award reduced costs in the same manner as indicated in Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd43. I do not believe that the circumstances of this case justify such a reduction. The Opponent in this matter filed over 5000 pages of evidence in this matter, much of which was irrelevant or entirely unnecessary. This included several hundred pages of evidence showing the use of the Claw Device in computer games (a considerably smaller amount of evidence would have more than sufficed to prove the point) and multiple declarations of use filed in earlier proceedings that traverse essentially the same point, namely that the Opponent’s energy drinks have a significant reputation in the Australian market. The inclusion of thousands of pages of unnecessary or irrelevant evidence would likely have increased the costs incurred by the Applicant in reviewing and responding to this evidence. As such I do not consider it appropriate to reduce the costs awarded against the Opponent in any way. I accordingly

⁴³ [2001] ATMO 78 (Hearing Officer Williams).

award costs in respect of trade mark number 2101981 against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

Nicholas Smith Hearing Officer

Delegate of the Registrar of Trade Marks 23 May 2023