Monster Energy Company v ODD Games Pty Ltd

[2018] ATMO 131

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 no. 1770632 (16, 25, 28, 41) – Monster Truck Destruction - in the name of ODD Games Pty Ltd

Delegate:	Bianca Irgang
Representation:	Opponent: Stephen Rebikoff of counsel instructed by Davies Collison Cave Applicant: Ian Horack of counsel instructed by Collison Co.
Decision:	2018 ATMO 131 Trade Marks Act 1995 - Section 52 opposition: sections 42(b), 44 and 60 pressed – no ground of opposition established – opposition dismissed.

Background

1. ODD Games Pty Ltd (‘the applicant’), filed trade mark application number 1770632 on 13 May 2016 in classes 16, 25, 28 and 41 of the International Classification of Goods and Services. Current details of the application are set out below.

   Trade mark:  Monster Truck Destruction

   Trade mark application no: 1770632            

   Filing Date:  13 May 2016

   Specification:  Class 16: Baby Books; Childrens Books; Coloring Books; Activity Books; Comic Books; Magazines; Graphic Novels; Motion picture companion books; Novels; Storybooks; Stickers; Sticker albums; Souvenir program booklets; Books incorporating sound elements; Trading cards; Activity paper craft kits; Pens; Pencils; Pencil cases; Pencil holders; Erasers; Pencil Sharpeners; Ungraduated rulers; Stationery; Diaries; Journals; Binders; Portfolios; Photo albums; Posters; Art prints; Bookmarks; Calendars; Note cards; Notepads; Address books; Sketch pads; Banners; Greeting cards; Party invitations; Gift tags; Party decorations made of paper; Cake decorations made of paper; Wrapping paper; Paper napkins; Facial tissue; Coasters made of paper

   Class 25:Apparel; Footwear; Headwear; Sleepwear; Underwear; Belts; Suspenders; Jackets; Rainwear; Scarves; Socks; Gloves; Shoelaces; Sandals

   Class 28:Action figures and accessories therefor; Board games; Card Games; Construction toys; Dolls and doll accessories; Toys incorporating electronic sound and light elements; Electric action toys; Infant toys; Baby toys; Kites; Inflatable swimming pools; Water Toys; Sand toys; Plush toys; Puzzles; Remote control toys; Ride-on toys; Play houses; Role playing games; Swing sets; Baseballs; Baseball bats; Baseball gloves; Footballs; Trading card games; Toy vehicles; Toy balloons; Darts and dart boards; Pool tables; Paddle ball games; Roller skates; Skateboards; Halloween costumes and masks; Christmas tree ornaments and decorations; Snow globes; Party hats of plastic and paper; Yo-yos; Gaming machines, including, devices which accept a wager

   Class 41:Entertainment services in the nature of production and distribution of motion pictures, television series, and animated cartoons for theatrical release and for distribution via television, cable television, and the Internet; Providing of non-downloadable images, audio, video, text, graphics and related information in the field of motion pictures and animated cartoons via a website; Providing non-downloadable computer games and video games; Musical stage performances and stage shows; Amusement park services; provision of rides, attractions, live shows, exhibitions and other such services in amusement parks

2. Acceptance of the application for possible registration was published in the Australian Official Journal of Trade Marks on 6 October 2016. Subsequently Monster Energy Company (‘the opponent’) filed its Notice of Intention to Oppose registration followed by its Statement of Grounds and Particulars[1].

   [1] which together constitute ‘the Notice’

3. The applicant then filed its Notices of Intention to Defend. Thereafter the opponent and the applicant respectively filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

4. I heard the opposition in Canberra as a delegate of the Registrar of Trade Marks on 6 March 2018. The applicant was represented by Ian Horack of counsel instructed by Collison Co. The opponent was represented by Stephen Rebikoff of Counsel instructed by Davies Collison Cave.

   Grounds of Opposition

5. The Notice nominated a number of grounds of opposition under the Trade Marks Act 1995 (‘the Act’) however, only those grounds of opposition under sections 42(b), 44 and 60 were pursued at the hearing. The onus is upon the opponent to establish one or more of its grounds of opposition. The Full Bench in Telstra Corporation Limited v Phone Directories Company Pty Ltd[2] affirmed the approach in Pfizer Products Inc. v Karam[3] where Gyles J referred to the standard of proof required in these matters in terms of a ‘balance of probabilities’. Should the opponent establish one ground of opposition in relation to all of the applicant’s goods, there is no requirement for me to consider the other grounds of opposition.

   [2] [2015] FCAFC 156, [133]

   [3] [2006] FCA 1663, [26]

   Evidence

6. The evidence in these matters consists of the following declarations:

   Evidence in Support

   ·Declaration of Rodney Cyril Sacks ( ‘Sacks 1’) dated 4 April 2017

   ·Declaration of Elizabeth Kate Godfrey (‘Godfrey’) dated 12 April 2017 with the following declarations as exhibits:

   oDeclaration of Rebecca Lee Dunbar  (‘Dunbar’) dated 8 August 2012

   oDeclaration of Danielle Jade Roberts  (‘Roberts’) dated 9 July 2012

   oDeclaration of Adrian Heath Hunter  (‘Hunter’) dated 11 October 2012

   Evidence in Answer

   ·Declaration of Jasmin Whittaker (‘Whittaker’) dated 13 June 2017

   Evidence in Reply

   ·Declaration of Rodney Cyril Sacks ( ‘Sacks 2’) dated11 August 2017

   Discussion

   Section 60 - Reputation in Australia

7. Section 60 of the Act provides:

   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.

8. To establish the ground of opposition under section 60 the opponent is relying predominantly on its use of and reputation in the trade marks below:

   MONSTER ENERGY                         

   (opponent’s ‘MONSTER trade marks’)

9. The opponent’s MONSTER trade marks (as well as many other ‘MONSTER ENERGY’ trade marks) have obtained registration in a number of different classes[4]. Unlike section 44 of the Act, section 60 does not require that the goods and services upon which the opponent uses its trade mark be of a specified standard of similarity with the goods of interest to the applicant, nor is there a requirement that the opponent’s trade marks be substantially identical or deceptively similar to the Trade Mark.

   [4] Exhibit RCS-02 accompanying Sacks 1

10. It is for me to determine whether the opponent has established that before 13 May 2016 any of the opponent’s trade marks were recognized by the relevant market, or at least by a significant number of persons in Australia and whether because of that, the use by the applicant of the Trade Marks would be likely to cause the public confusion.

11. The principles relevant to the assessment of the likelihood of confusion were set out by French J in Registrar of Trade Marks v Woolworths (‘Woolworths’): [5]

    (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

    It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

    (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

    (iv) The rights of the parties are to be determined as at the date of the application.

    (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

    In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc:[6]

    “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

    [5] [1999] FCA 1020 [50]

    [6] [1973] HCA 43; (1973) 129 CLR 353, 362

12. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick[7] by Kenny J:

    What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

    reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

    Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

    Does the evidence establish that in Australia before 9 March 1992 the McCormick  & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

    [7] [2000] FCA 1335 [81]

13. The reputation of the opponent in its various MONSTER trade marks in relation to its energy drinks has been well established through a number of separate oppositions and court cases. The applicant has not disputed the opponent’s significant reputation in Australia for its MONSTER energy drinks. Briefly put:

    ·Since the launch of the original MONSTER energy drink in 2002 the reputation of the MONSTER trade marks has grown.

    ·The opponent’s MONSTER ENERGY branded energy drinks containing taurine and caffeine are, by unit value and dollar value, the best-selling energy drinks in the United States and the second best-selling worldwide.

    ·The opponent first sold its beverages branded with a MONSTER trade mark in Australia in 2006 via an Australian company named Bickford’s Australia Pty Ltd (‘Bickford’s’).

    ·Following the launch of Bickford’s MONSTER energy drinks the opponent commenced selling its own energy drinks bearing the opponent’s trade marks in Australia in July 2009.

    ·Since July 2009 the opponent’s energy drinks bearing its various trade marks have been distributed by Schweppes Australia Pty Ltd. The opponent’s energy drinks have been distributed to and sold in more than of 4,000 retail outlets throughout Australia including Woolworths, Coles, IGA, 7 Eleven, Caltex, Mobil and Shell petrol stations.

    ·The world-wide sales of goods bearing the opponent’s respective trade marks are very substantial particularly given the relatively low cost of the individual units.

    ·From 2009 until 2015 the total sales of those energy drinks in Australia is also considerable[8].

    ·The marketing associated with the goods bearing the opponent’s trade marks is not typical in that the majority of the opponent’s marketing budget is spent on the sponsorship of athletes and sporting events.

    ·The opponent has spent billions on world-wide advertising and significant advertising expenditure has occurred in Australia.

    [8] Sacks 1 at [25]

14. Taken all together, I am satisfied that the opponent’s MONSTER trade marks had a very significant reputation in Australia for energy drinks before the priority date of the Trade mark. It now needs to be determined if, given this reputation in Australia, use of the Trade Mark by the applicant would be likely to deceive or cause confusion. This is the main point of contention between the two parties.

15. The applicant has agreed that the opponent has a significant reputation in its MONSTER trade marks for energy drinks. However, the applicant has argued that the opponent does not have a reputation solely in the word MONSTER such that the use of the applicant’s Trade Mark on the applied for goods and services would deceive or cause confusion. Mr Horack also argued that the Trade Mark is for the phrase MONSTER TRUCK DESTRUCTION which has a meaning distinct from the sole word MONSTER. He further argues that there are substantial differences between the opponent’s respective trade marks and the Trade Mark.

16. In considering the respective trade marks it becomes clear that the only similarity between them is the word MONSTER. Mr Rebikoff has argued that the key distinguishing feature in the Trade Mark is the word MONSTER which is at the beginning of the Trade Mark and is an unusual and distinctive term in the context of the relevant goods and services. He goes on to state the opponent’s energy drinks branded with the MONSTER trade marks and the sponsorship of sporting events created a similarity of idea and impression with consumers that would give rise to a real risk that consumers might have cause to wonder that the Trade Mark used on the applicant’s goods and services was somehow related to the opponent’s energy drinks. He cited a number of cases in support of his argument[9]. However, I am not persuaded by this reasoning.

    [9] Eau de Colonge & Parfumerie Fabrik Glockengasse Application (1990) 17 IPR 540; Powell v Glow Zone Products Pty Ltd (2000) 49 IPR 397; Warnaco US Inc v Estee Lauder Cosmetics Ltd (2000) 50 IPR 143; Le Cordon Bleu BV v Cordon Bleu International Ltee (2001) 50 IPR 1; Edwards v Liquid Engineering 2003 Pty Ltd (2008) 77 IPR 115

17. The Trade Mark is for the phrase MONSTER TRUCK DESTRUCTION. The opponent’s MONSTER trade marks are for combinations of the words MONSTER and ENERGY and some trade mark are for the ‘M’ device solus. There are significant differences between the respective trade marks which outweigh the common word ‘MONSTER’. The Trade Mark contains the word combination MONSTER TRUCK which has a distinct meaning in its own right generally referring to a pick up truck modified with a larger suspension and larger tires, usually for recreational uses. The whole of the Trade Mark is MONSTER TRUCK DESTRUCTION which contains a very distinct and different idea from the opponent’s MONSTER trade marks.

18. When the trade marks are considered as wholes, as they must, I am not satisfied that use of the Trade Mark will lead a significant number of consumers to experience a reasonable doubt[10] as to the existence of some sort of connection between the opponent’s MONSTER trade marks and the Trade Mark. There are simply too many differences.

    [10] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [4]

19. The opponent has accordingly not established its ground of opposition under section 60.

    Section 42(b) – Contrary to Law

20. 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.

21. I have found that the use of the Trade Mark is not, at a minimum, likely to “deceive or confuse” under section 60, it follows that the use is not, on the stricter test posited by the Australian Consumer Law, likely to mislead or deceive, nor do I believe use would amount to a false representation in terms of section 29. I thus find that the opponent has not established the ground of opposition under section 42(b).

    Section 44 – Deceptive similarity

22. Subsections 44(1) and 44(2) of the Act are relevant in this case and are reproduced below:

    (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) the applicant's trade mark 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).
    Note 3:  For priority date see section 12.

    (2)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) 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 services or closely related goods; or

    (ii)  a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

23. To establish section 44of the Act the opponent must show all of the following:

    Øa trade mark, either registered or pending registration, in the name of a person other than the applicant, and in relation to which the opposed trade mark is either substantially identical or deceptively similar;

    Øthe trade mark in the name of the other person must be in respect of similar goods/services or closely related goods/services; and

    Øthe priority date of the trade mark of the other person is earlier than the priority date of the applicant’s trade mark.

24. The opponent has specified a number of trade mark registrations which it owns in support of the s 44 ground of opposition. The details of these registrations (with the class of potential conflict listed) are as follows:

Number(s)	Class(es) of interest	Trade Mark
1237259	16	MONSTER
1237261	16	MONSTER ENERGY
1694308	16, 25	MONSTER ENERGY
1360299	25	MONSTER ENERGY
1360527	25	MONSTER
1770844	25, 41	MONSTER ARMY
1670320	41	MONSTER ENERGY

1. I note that the opponent’s above various ‘registered trade marks’ all have earlier priority dates than the Trade Mark. The opponent has stated that they do not believe any of their registrations are substantially identical to the Trade Mark. I agree. Therefore, the key issue to be decided is whether the Trade Mark is deceptively similar to any of the opponent’s registered trade marks and whether it is in respect of any similar or closely related goods or services and whether it is in respect of any similar or closely related goods or services.

1. Deceptive similarity is defined by s 10 of the Act. The determination of deceptive similarity requires a comparison of the impression which persons of ordinary intelligence and memory would have upon recalling the opponent’s trade mark, to the impression that they would form from the applicant’s trade mark[11].

   [11] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, Windeyer J [415]

2. According to the authorities[12] any consideration of whether trade marks are deceptively similar must take into account that consumers may have an imperfect recollection of a trade mark. As a general principle one needs to estimate the impression consumers are likely to form of each trade mark as a whole. Confusion may result if a trade mark incorporates the distinguishing features of another’s trade mark. Justice French in Woolworths[13] observed in relation to the expression “likely to deceive or cause confusion”:

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

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

   [13] Woolworths (1999) 45 IPR 411

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

   ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public .... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.

   [14] (1979) RPC 410 at 423

4. Thus I need to decide whether the concurrent use of the respective trade marks in relation to the goods in classes 16, 25, 28 and services in class 41 is likely to result in a tangible danger of confusion or deception. In this case, I do not consider it would.

5. In coming to this decision it is important that the trade marks are considered in their entirety – ‘it is the whole of the mark as used which is the subject of the comparison with the registered mark.’[15]

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

6. In comparing the respective trade marks it becomes apparent that the Trade Mark shares the word MONSTER with the opponent’s registered trade marks. The Trade Mark is for the words MONSTER TRUCK DESTRUCTION. The opponent argued that the words TRUCK and DESTRUCTION are more common and conventional words that take their character within the Trade Mark from the distinctive word MONSTER. I do not agree.

7. As I discussed under the heading of section 60, the Trade Mark has a distinct and different meaning which outweighs the similarity caused by the shared word MONSTER within the opponent’s registered trade marks. The expression ‘monster truck’ has its own well-understood meaning and the effect of that within “MONSTER TRUCK DESTRUCTION” creates a trade mark which is substantially different to MONSTER or MONSTER ENERGY. MONSTER is not the most distinctive and striking word within the Trade Mark. This combination of words in the Trade Mark creates a distinct meaning of an automobile of a large and imposing variety and the destruction which may be wrought upon or by such a vehicle which is significantly different to MONSTER or MONSTER ENERGY which calls to mind a beast or a greatly proportioned burst of energy.

8. Ultimately,:

   One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance of all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.[16]

   [16] Clark v Sharp (1898) 15 RPC 141, [146] (Ch D).

9. I am satisfied that the differences between the Trade Mark and the opponent’s registered trade marks are significant and that the words MONSTER TRUCK DESTRUCTION only serve to emphasise any distinction between the impressions left by the opponent’s registered trade marks and the Trade Mark. I am not satisfied there is a real tangible danger of use of the respective trade marks resulting in confusion in the marketplace for the applicant’s goods and services and the opponent’s goods and services.

10. In view of my finding that the Trade Mark is not deceptively similar to any of the opponent’s registered trade marks the opponent has not established the opposition ground based on section 44 of the Act.

    Decision

11. Section 55 of the Act provides:

    55  Decision

    (1)  Unless subsection (3) applies to the proceedings, 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:          Forlimitationssee section 6.

12. The opponent has not established any grounds of opposition. The trade mark application may accordingly proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal before that time, I direct that registration of the trade mark shall not occur until the appeal has been decided or discontinued.

    Costs

13. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the opponent under section 221 of the Act in terms of Schedule 8 of the Regulations.

    Bianca Irgang

    Hearing Officer

    Oppositions and Hearings

    17 August 2018