Monster Energy Company v Ox Group Global Pty Ltd

[2016] ATMO 105

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 1606149 (32) - OX UNLEASH THE POWER Logo - in the name of Ox Group Global Pty Ltd

Delegate:	Michael Kirov
Representation:	Opponent: Stephen Rebikoff of Counsel, instructed by King & Wood Mallesons Applicant: Relied on written submissions prepared by its attorneys DC Strategy Pty Ltd
Decision:	2016 ATMO 105 Opposition under section 52 of the Trade Marks Act 1995: ss 42(b), 44, 60 and 62A considered – parties’ trade marks not deceptively similar – confusion or deception due to reputation of Opponent’s trade marks unlikely – no evidence of bad faith – registration to proceed.

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 Ox Group Global Pty Ltd (“the Applicant”):

   Application Number:        1606149

   Filing Date:  14 February 2014

   Goods:Class 32: Energy drinks (not for medical purposes); mineral and aerated waters and other non-alcoholic beverages; waters (beverages); bottled water (not for medical purposes)             (“the Goods”)

   Trade Mark:  (“the Opposed Mark”)

2. Acceptance of the opposed application for possible registration was advertised in the Australian Official Journal of Trade Marks on 10 July 2014.  The Opponent filed a Notice of Intention to Oppose on 10 September 2014, followed by a Statement of Grounds and Particulars (“SGP”) on 10 October 2014 specifying five opposition grounds.  The Applicant filed a Notice of Intention to Defend on 22 October 2014.

3. I heard the matter as a delegate of the Registrar of Trade Marks on 17 June 2016 in Canberra.  Stephen Rebikoff of Counsel, instructed by King & Wood Mallesons, appeared for the Opponent.  Mr Rebikoff’s oral submissions were supplemented by written submissions emailed to both the Applicant’s attorneys and me on 3 June in accordance with my directions.  The Applicant relied on written submissions only, these having been prepared by its attorneys DC Strategy Pty Ltd and emailed to both the Opponent’s attorneys and me on 10 June in accordance with my directions.

   Grounds of Opposition, Onus and Standard of Proof

4. The SGP lists grounds corresponding to ss 42(b), 44, 59, 60 and 62A of the Act. However, in its written submissions filed two weeks before the matter was heard the Opponent confirmed it was not pressing the ground based on s 59. To succeed in its opposition the Opponent bears the onus of establishing at least one of the remaining four grounds, with the relevant standard of proof required being the ordinary civil standard based on the balance of probabilities.[1]  The relevant date for assessing the registrability of the Opposed Mark is the 14 February 2014 filing date of the opposed application (“the Filing Date”). [2]

   The Evidence

   [1] 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 affirmed Gyles J’s approach.

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

5. For their evidence the parties rely on the following Declarations:

   Evidence in Support

   ▪ Rodney Cyril Sacks made 21 January 2015, with Exhibits RCS-1 to RCS-41

   Evidence in Answer

   ▪ Dean Athol Hales made 22 May 2015, with Exhibits DAH-1 to DAH-15

   Evidence in Reply

   ▪ Vineetha Veerakumar made 18 August 2015, with Exhibits VV-1 and VV-2

   Additional Material Submitted by the Applicant

6. In the fortnight prior to the hearing, as mentioned, the Opponent and the Applicant exchanged written submissions via email, copying me as directed on 3 and 10 June respectively.  Shortly before the Applicant did so its attorney contacted me to ask whether she might annex to the submissions a copy of a decision handed down by the Intellectual Property Office of New Zealand on 11 February 2016 concerning an opposition in that country involving the same parties and the identical trade mark covering identical goods as the current Australian opposition (“the IPONZ decision”).[3]  I confirmed that, subject to possible objection by the Opponent, this was acceptable from my point of view.  No other additional material was discussed.

   [3] Monster Energy Company v Ox Group Global Pty Limited [2016] NZIPOTM 3.

7. In the event three additional annexures were included with the Applicant’s submissions of 10 June, being evidence filed in relation to the IPONZ decision.  The Opponent’s attorneys responded via email on 14 June objecting to the three additional annexures “on the basis that this is late evidence, in relation to which an extension of time has been neither sought, nor granted, and should not be granted in accordance with Regulation 5.15 [of the Trade Marks Regulations 1995 (“the Regulations”)].”

8. After briefly looking at the three additional annexures I emailed the parties on 14 June confirming that I would not take them into account in deciding the present opposition and did not in any event consider the material in question had any relevant probative value.  That said, the Opponent did not object to the IPONZ decision being before me.  As confirmed in my email of 14 June then, I am only taking the IPONZ decision (to the extent that it may be relevant) into account in deciding the present matter.

   Overview of the Evidence

9. I will refer as necessary to the parties’ evidence in the discussion below, but for now note the following by way of overview.

10. 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 notes “Monster has also done business as Monster Beverage Company and was formerly known as Hansen Beverage Company.”  He says that a local subsidiary has also been incorporated “to market and promote products in Australia.”  As to the nature of those products, Mr Sacks says:

    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.

11. It is however Monster’s flagship product, an energy drink aimed mainly at young adults aged around 18 to 34 years, with which Mr Sacks’ 45 page declaration (with over 40 exhibits totaling some 540 further pages) is principally concerned.  As he attests, the original energy drink was first launched in the United States in 2002 and over the years the range has expanded to include variants described as “lo-carb” or “zero sugar” or “extra strength” or the like (“the Variants”).  Nothing in this decision turns on the distinction and I will, as Mr Sacks does, refer to both the original energy drink and the Variants collectively hereafter as “the MONSTER ENERGY drinks”.

12. 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

13. Relevant to this opposition is however the second category of trade marks, being tag lines, which also appear, albeit less prominently, on the MONSTER ENERGY drinks’ cans and associated promotional material.  This category comprises what Mr Sacks (and I hereafter) refer to as “the UNLEASH Marks”, being:[4]

    [4] Later in his declaration Mr Sacks also refers to the tagline UNLEASH THE CAFFEINE FREE BEAST! although as I understand it this tagline was not used in Australia before the Filing Date.

    UNLEASH THE BEAST!

    UNLEASH THE NITRO BEAST!

    UNLEASH THE ULTRA BEAST!

    ENERGY UNLEASHED!

14. As Mr Sacks evidence shows, the UNLEASH THE BEAST! mark is invariably rendered on the cans of Monster’s original energy drink and in associated promotional material in the stylised manner shown below (“the Original Tagline”):

15. The other three UNLEASH Marks are apparently rendered on the cans of the Variants in a slightly less stylised manner, as illustrated below:

16. As nothing in this decision turns on the differences in the manner of stylization of the individual UNLEASH Marks, I will refer hereafter to all of these stylised forms collectively simply as “the Taglines”.

17. The positioning of the Taglines on the energy drink cans and their size relative to the MONSTER Marks can be seen from the three images below of the can used for the original energy drink (with the Original Tagline appearing about two thirds of the way down on the third image):

18. A company unrelated to Monster named Bickford’s Australia Pty Ltd (“Bickford’s”) first started using the trade mark MONSTER in relation to energy drinks in Australia in 2006 and sold around 480,000 cans of its beverage here between then and February 2007.  Litigation between Monster and Bickford’s followed, resulting in a settlement in December 2008 under which, as Mr Sacks puts it:

    15. …Monster acquired from Bickford’s all of Bickford’s rights in the MONSTER trade mark, including all trade mark applications lodged by Bickford’s for the MONSTER trade mark.  As a result of Monster’s acquisition from Bickford’s of the MONSTER brand, Monster is also entitled to the benefit of all sales made and reputation developed through Bickford’s sales and marketing of MONSTER brand energy drinks from April 2006 through April 2009.

19. Be that as it may, I note that Bickford’s did not at any time use any of the UNLEASH Marks.  Nevertheless, between February 2009 and July 2009 Monster commenced selling its original energy drink in Australia, with the cans used in this country featuring a slightly stylised rendition of the single letter “M” in place of what would, in July 2009 after the settlement with Bickford’s, be changed to the stylised rendition of the trade mark MONSTER shown in paragraph 17 above (as was always the case with its product sold elsewhere in the world).  The cans for both versions of Monster’s original energy drink sold in Australia were otherwise the same, with both bearing the Original Tagline.  As Mr Sacks explains:

    17. Monster started selling its own MONSTER energy brand energy drinks in Australia in July 2009; however, Monster’s rights in the MONSTER brand, including the UNLEASH THE BEAST! Mark, in Australia date back to at least April 2006, if not earlier. This is because: (i) Monster’s MONSTER brand was known in Australia by at least 2005 because of the worldwide reputation Monster had developed in its MONSTER brand which had reached Australia via webcasts, telecasts and print media (this is explained in more detail below) and (ii) Monster filed Australian Trade Mark Registration No 885429 (in class 32) for UNLEASH THE BEAST! in April 2006,[5] and (iii) as a result of advertising/exposure.

    18. Prior to the July 2009 launch of Monster’s own MONSTER energy drinks in Australia, Monster commenced selling an M ENERGY product. Attached hereto and marked Exhibit “RCS-4” [shown below] is a sample label for the M ENERGY product prominently featuring the [Original Tagline] on the back of the can.

    [5] I note registration 885429 is in fact an International Registration designating Australia and bears Australian registration number 1121103.

20. Mr Sacks says that since 2002 some 13 billion cans of the MONSTER ENERGY drinks have been sold worldwide, with correspondingly high revenue generated, and as at the end of 2014 the product was the second best selling energy drink worldwide.  The product has been distributed in this country by Schweppes Australia Pty Ltd since July 2009 and as at the Filing Date had been sold through over 4,000 outlets here, 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.

21. Mr Sacks explains the marketing strategy for the product as follows:[6]

    [6] I note the amounts disclosed for advertising and promotion are not claimed to be confidential.

    33. Monster’s marketing strategy is not conventional in that Monster does not use direct television or radio advertising to promote its products, but through its marketing strategy, the UNLEASH Marks receive substantial and extensive exposure on television, on the Internet, in magazines, and at live events.

    34. In Australia and elsewhere outside of the United States, Monster allocates the majority of its marketing, advertising and promotional budget on athlete endorsements and sponsoring athletic competitions and other events.  In particular, Monster’s marketing focus includes international events, including but not limited to events that are webcast on the Internet to reach our primary target market of young adults aged 18 to 34 years old, primarily males.  However, the demographic of Monster consumers has expanded over time and MONSTER ENERGY drinks are increasingly being consumed by more females as well as older persons.

    35. In addition to the actual contractual amounts paid to sponsor athletes and racing teams, Monster expends substantial amounts in supporting the sponsored athletes, teams and sports through point of sale materials, sweepstakes and give-a-ways, wrapping/branding the athletes’ vehicles, paying for the athletes’ travel expenses and by providing them with Monster-branded apparel (being apparel that bears [the MONSTER Marks] and/or UNLEASH Marks), free products for sampling stations, and action sports gear bearing the UNLEASH Marks.

    36. Further, Monster hires employees and outside companies to attend events to support and monitor the sponsored athletes and teams at every event and to provide hospitality and sampling of products to consumers…

    …

    39. 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 UNLEASH 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.

    40. Some of Monster’s advertising and promotion includes the UNLEASH Marks…

    41. [The] MONSTER [ENERGY] drinks, most of which bear at least one of the UNLEASH Marks, are the subject of substantial and continuous advertising, marketing and promotion.  Since 2002, Monster has spent well over US$3 billion in advertising, marketing and promoting [the] MONSTER [ENERGY] drinks throughout the world.

    42. Monster has also undertaken extensive advertising, marketing and promotional activities in Australia.  Since the July 2009 launch through 31 December 2010, my Company has spent more than AU$7.9 million in marketing and promotional activities in Australia, New Zealand, and Tahiti.

    43. For the period of 1 January 2011 through 31 December 2013, [Monster] has spent more than AU$30.4 million in marketing and promotional activities in Australia alone.  The UNLEASH Marks have appeared in numerous Australia specific advertising and promotional materials and activities…

22. Mr Sacks subsequently devotes the major part of his declaration 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.

23. 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 the websites attracted over 479,000 visits from Australia during the period 1 September 2010 and 31 October 2014 and Monster’s Facebook^® pages had also recorded a large number of “likes” from Australia over a similar period.  I note too that the UNLEASH Marks can be seen on both the websites and the Facebook^® pages, albeit in most cases very much dwarfed by the abundance of other material displayed.  From the screenshots provided I am unable to gauge the extent of exposure the UNLEASH Marks may have enjoyed via the YouTube^® channel.

24. Turning now to the Applicant, Dean Hales has been its Managing Director and CEO since May 2012.  He begins with a history of the company and its related entities (“OX Group”), which goes directly back to at least 1992 and, taking into account mergers and name changes, as far back as 1974.  As he puts it:

    5. OX Group is a world leading supplier predominantly servicing the construction industry with a range of hand tools, diamond tools, power tool accessories, safety products and associated peripheral items which include machinery, lighting and an energy drink beverage.

    6. OX Group is one of the fastest growing tool brands in the construction industry and currently has 18 subsidiary and distributor offices spread across 10 countries globally, being Australia; New Zealand; UK; France; Spain; USA; Canada; Netherlands; Sweden and Argentina.

    7. The success of OX Group lies in the quality and design of its products, the excellence of its service, innovative merchandising solutions, and a very powerful brand.  The OX brand is instantly recognisable with its distinctive and dominant cyan blue colour scheme and its signature trademarks “OX”, “OX Power & Performance”, “OX UNLEASH THE POWER”, “UNLEASH THE POWER” and the charging OX image:

25. As to OX Group’s energy drink product in particular, Mr Hales says:

    12. The OX energy drink was first designed and developed by the OX Group global marketing team and saw its debut at the Speciality Tools & Fasteners Distributors Association (STAFDA) in November 2012.[7]  The purpose of the OX energy drink is to provide tradesmen with a refreshing beverage and to promote the OX construction tool range.  For this reason, featuring the word “OX” on the cans was less crucial than the colour scheme and image, as well as the fact that it was promoted on the OX stand at STAFDA.

    …

    14. OX energy drinks saw a full product launch in the United Kingdom in February 2013…

    …

    16. OX energy drinks were rolled out into the rest of Europe and are currently sold in countries such as France, Netherlands, Sweden and Spain…

    …

    18. OX energy drinks were launched in Australasia in June 2014 and are currently distributed through the OX Group distributor network in Australia and New Zealand.  As in other countries, the success of the OX energy drinks lies in its association with the OX high quality tool range and is sold to tradesmen that purchase OX products as the OX energy drinks are displayed in a fridge beside the OX merchandise stands.

    [7] I understand that STAFDA is an Australian association.

26. Mr Hales goes on to provide more information concerning the Applicant’s energy drink and its promotion in Australia which it is unnecessary to set out here.  He also includes in his declaration what are essentially submissions as to the unlikelihood of relevant confusion or deception occurring in Australia as between the Opposed Mark and Monster’s UNLEASH Marks, citing such things as the dominant size of the element OX in the Opposed Mark as a whole and the relative prominence of the MONSTER Marks vis-à-vis the UNLEASH Marks on the Opponent’s cans and associated marketing materials.  Again, it is unnecessary to set out these observations here.  I would however mention that Mr Hales’ claim that “The distinctive cyan colour scheme [of the Applicant’s energy drink] also adds to differentiate itself from the Opponent’s products given those products have a black and green colour scheme” is not relevant to my decision since the mark the Applicant seeks to register is not limited to any specific colour or colours or manner of use.  I must accordingly consider any normal and fair use that the Opposed Mark might in principle enjoy in future.  Nor, moreover, are the UNLEASH Marks relied on by the Opponent restricted to any particular colour scheme, as is apparent from the Opponent’s use on the cans of the Variants of different colours from the black and green colour scheme used for its original energy drink.  Mr Hales’ further suggestion that confusion or deception is unlikely because the Applicant’s energy drink is always sold alongside its similarly branded tools is likewise irrelevant to my decision, since the drinks might in principle be sold anywhere in future.

1. The “evidence in reply” before me consists of a single page declaration by Vineetha Veerakumar, an attorney with the firm acting for the Opponent, to which are attached a further 10 pages of what are said to be:

   “…further examples of use of the UNLEASH Marks by the Opponent on clothing or similar apparel, some of which are available in Australia from prior to the [Filing Date]…”

   and

   “…photographs of Australians, Blake ‘Bilka’ Williams, a motorsports competitor, and Adrian Hunter, the Australasian Manager of the Monster Energy [sic], which photographs have been provided to me by the Opponent.  Each is wearing clothing which bears the Opponent’s trade mark, UNLEASH THE BEAST.  I am instructed that the photograph of Adrian Hunter was taken at a Formula 1 event in Melbourne, Australia.”

2. I note that this evidence is not in reply to anything said by Mr Hales; it is merely more of the same kind of material that was included in the voluminous exhibits to Mr Sacks’ declaration.  Indeed, some of the annexed pages are identical to pages annexed to the earlier declaration.  That said, I do not consider it of significant weight as far as my decision is concerned in any event.

3. I move on now to consider the specific grounds of opposition pressed at the hearing.

   Discussion

4. It is convenient to commence with the Opponent’s s 44 ground before moving on to discuss the grounds under ss 60, 42(b) and 62A, in that order.

   Section 44

5. The ground based on s 44 is particularised in the SGP as follows:

   The [Opposed Mark] is substantially identical with, or deceptively similar to, each of the Opponent’s earlier trade marks set out below, registered in respect of the same or similar goods.

6. The SGP then identifies five of the Opponent’s registrations for marks containing the elements UNLEASH or UNLEASHED, brief details of which are as follows:

   1121103 (32) UNLEASH THE BEAST!

   1348790 (32)

   1395195 (5) UNLEASH THE BEAST!

   1535676 (5 & 32) ENERGY UNLEASHED!

   1557701 (5 & 32) UNLEASH THE ULTRA BEAST!

7. As will later be seen, the Opponent relies on the same five trade marks subject of these registrations to underpin its s 60 ground of opposition. For this reason I will refer to them collectively hereafter as “the s 60 Marks”.

8. Although the SGP nominates five registrations, at the hearing Mr Rebikoff limited his submissions on the s 44 ground to what is on the face of it the most relevant of them, being registration 1121103 (“the s 44 registration”) for the plain word mark UNLEASH THE BEAST! (“the s 44 mark”). The s 44 registration covers “Fruit juice drinks, soft drinks, carbonated soft drinks and soft drinks enhanced with vitamins, minerals, nutrients, amino acids and/or herbs, aerated water, soda water and seltzer water” in Class 32 and has been registered since 28 April 2006. The remaining four registrations are effectively redundant as far as the s 44 ground is concerned since if the ground is not established based on the s 44 registration then I consider it would also necessarily fail based on any of the others.

9. Only s 44(1) of the Act is relevant in this case and this is set out below:

   Identical etc. trade marks

   44.(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.

10. The priority date of the s 44 registration being earlier than the Filing Date, it is sufficient for success under s 44(1) if the Opponent establishes on the balance of probabilities that:

    • the opposed application covers “similar goods”[8] to those covered by the s 44 registration; and

    • the Opposed Mark is “deceptively similar”[9] to the s 44 mark.

    [8] As defined in s 14(1) of the Act, namely the same goods and/or goods “of the same description”.

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

11. While the Applicant’s submissions do not address the issue, I agree with Mr Rebikoff’s submission that:

    As the [Goods] are essentially coterminous with the goods covered by the [s 44 registration], the only question is whether the marks are deceptively similar.

12. As Mr Rebikoff noted, s 10 of the Act provides that “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.” The marks under comparison should not be looked at side by side and the possible imperfect recollection of the s 44 mark by consumers of the Goods when they encounter the Opposed Mark should be given due weight. In this regard Mr Rebikoff noted that guidance in assessing deceptive similarity is generally found in the well known words of Windeyer J at first instance in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (“Shell”), where his Honour said:[10]

    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 [s 44 mark] that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the [Opposed Mark].

    [10] (1961) 109 CLR 407 at 415; (1963) 1B IPR 523 at 529; See also Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 658.

13. Mr Rebikoff also referred to the well known words of Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd:[11]

    …it is sufficient if the result of user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products came from the same source. It is enough if the ordinary person entertains reasonable doubt.  In considering the probability of deception, all the surrounding circumstances have to be taken into consideration. (This includes the circumstances in which the marks will be used, the circumstances in which the goods will be bought and sold, and the character of the probable purchasers of the goods) Jafferjee v Scarlett (1937) 57 CLR 115, at p 120).

    [11] (1954) 91 CLR 592 at 595.

14. With that as general background Mr Rebikoff’s submissions on the issue of deceptive similarity concentrated on the Opponent’s contention that:

    …there is a real risk that consumers who are familiar with, and have an imperfect recollection of, the [s 44] mark and its use in relation to energy drinks will have cause to wonder whether energy drinks offered under the Opposed Mark come from the same source.

15. He argued that the s 44 mark “involves an unusual three-word exhortation centered around the notion of ‘unleashing’ the essence of something” and that this “formulation is extremely distinctive in the context of energy drinks and comprises an essential element of the [s 44] mark which is reproduced in its entirety in the Opposed Mark.”

16. The fact that the Opposed Mark also contains the element OX, he submitted, would not lessen the prospect of confusion or deception, since it “is clearly presented as a separate and distinct element of the mark, with the words UNLEASH THE POWER [being] a discrete tag-line within the mark that qualifies or informs the primary element.” Indeed, he argued, the absence of the element OX from the s 44 mark “may well cause consumers to wonder whether OX is the maker of all energy drinks bearing the UNLEASH formulation, or whether the use of the word OX is being used to signal a related brand or product variant”.

17. Alternatively, he submitted:

    …for consumers who may recall that the [s 44] mark has something to do with an animal or beast, the word OX only serves to reinforce the connection between the marks by framing the use of the word POWER in the tag-line as a reference to the power of an ox.  In that respect, the presence of OX at the commencement of the Opposed Mark actually reinforces the similarity between ideas of the marks, both of which can be regarded by consumers as conveying the same concept of “unleashing” the essence of an animal or beast (or some other form of “inner monster”).

18. “That impression”, he said, “is only heightened by the identical nature of the goods in respect of which the [s 44] mark is registered and the Opposed Mark is sought to be used, and the fact that those goods will be sold through identical sales channels to identical consumers, who will generally purchase them on impulse.”

19. The Applicant’s written submissions in response simply highlight several findings of the (NZ) Assistant Commissioner of Trade Marks in the IPONZ decision. In this regard I note that the Assistant Commissioner rejected Monster’s submission that the “essential feature” of the s 44 mark was the phrase “UNLEASH THE…” alone and that Monster might accordingly claim a monopoly in the concept “UNLEASH THE [+ word(s)]”, whatever that added word or words might be. In her view there was, “no reason to consider the words ‘UNLEASH THE...’ separately from the word ‘BEAST’” and “it would be improper for [her] to do so.” In this regard she considered the word “BEAST” to be “an important and distinctive component” of the s 44 mark, being “an unusual and evocative term when used in the context of energy drinks and other beverages.” She accordingly did not accept Monster’s submission “that the [O]pposed [M]ark subsumes the ‘essential feature’ of the [s 44] mark and that the incorporation of this feature is likely to deceive or cause confusion.”

20. Nor did the Assistant Commissioner accept Monster’s submissions regarding the significance of the element OX in the Opposed Mark.  In this regard she was of the view that it (i) was “highly distinctive when used in relation to energy drinks and other beverages”, (ii) “appears in much larger font than the phrase ‘UNLEASH THE POWER’” and (iii) “is likely to [be] viewed as the more important” element given its placement within the Opposed Mark as a whole.  She considered that, “Consumers who encounter an energy drink bearing the [O]pposed [M]ark may well remember and/or refer to the product as ‘an OX energy drink’; they are less likely to remember or refer to it as ‘an UNLEASH THE POWER energy drink’.”

21. Taking these matters into account, the Assistant Commissioner returned to first principles.  The parties’ marks, she said, neither looked nor sounded alike.  While she did accept that there was “some similarity in the idea between the two marks”, she thought that “the word ‘beast’ also evokes a range of other connotations not fully captured by the word ‘power’ (even when used in conjunction with the word ‘OX’, which does at least call to mind one type of beast).”  Her conclusion was that any conceptual similarity between the parties’ marks did not “outweigh the significant visual and phonetic differences” between them.  The parties’ marks were accordingly not deceptively similar in her view.

22. I mention that in reaching this conclusion the Assistant Commissioner explicitly took into account the fact that the parties’ goods were not only the same, but also that they were “fast moving consumer goods” and thus that the “level of consumer engagement in purchasing decisions is likely to be low.”  She also noted, as I did earlier, that any fair use of the Opposed Mark had to be considered, stating that although there was evidence before her, (as there is in the present matter), of the Applicant’s energy drinks “being sold next to stands of OX tools at present, this may not always be the case.”

23. I find the Assistant Commissioner’s reasoning compelling and have also concluded that the likelihood of significant confusion or deception arising amongst consumers of the parties’ respective energy drinks is low.  To the extent that the parties marks share, as Mr Rebikoff submitted, a similar idea because both marks contain the words “unleash the…”, I do not consider this to be a major factor in this case.  Nor on the face of it is the Opponent in a position to claim a monopoly in registered marks in Class 32 exploiting this kind of idea.  In this regard I note the presence on the Trade Marks Register currently of registrations 1380640 and 1297826, both covering energy drinks and each in separate ownership, for, respectively, the marks COKE UNLEASHED and:

24. I note too the view taken by the High Court in Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd.[12]  There the Court concluded that the trade mark Rainmaster was not deceptively similar to the registered mark Rain King, (where both marks were used or proposed for use in connection with water sprinklers), considering that any similarity in the idea conveyed was something that might be taken into account when the marks being compared otherwise “really looked alike or sounded alike”.  Like the Assistant Commissioner in the IPONZ decision, I consider that the parties’ marks in this case are, both visually and phonetically, significantly different.

    [12] (1952) 86 CLR 536 at 539.

25. I accordingly find that the Opposed Mark is not deceptively similar to the s 44 mark and the Opponent has not therefore established its ground of opposition under s 44.

    Section 60

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

    The Opponent refers to its trade mark registrations which contain or consist of the word “UNLEASH” cited in support of the section 44 ground of opposition above [as defined earlier,[13] “the s 60 Marks”].

    The [s 60 Marks] have acquired a substantial reputation in Australia by reason of the Opponent’s extensive use of those trade marks in Australia since at least February 2009 in relation to non-alcoholic beverages, including energy drinks.

    Because of the reputation of the [s 60 Marks], the use and registration of the Opposed Mark, which is substantially identical with or deceptively similar to the [s 60 Marks], in relation to the [Goods] would be likely to deceive or cause confusion.

    [13] See paragraphs 32 and 33 above.

27. I mention that it is somewhat surprising to see the SGP referring to the Opposed Mark as being “substantially identical with or deceptively similar to the [s 60 Marks].” While this was a specific requirement under s 60 prior to the section’s amendment in April 2013, it was no longer the case when this opposition was commenced in September 2014, (notwithstanding there must of course still be sufficient similarity between the marks in question for the relevant confusion or deception alleged to be likely[14]). That said, s 60 of the Act as it applies in this case is reproduced below:

    [14] See for example Qantas Airways Limited v Edwards [2016] FCA 729, per Yates J at [142].

    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.

28. In assessing the likelihood of deception or confusion under s 60 I must first consider the actual manner and extent of past use of each of the s 60 Marks as disclosed in the Opponent’s evidence and assess what reputation each of them separately would have had amongst relevant consumers as at the Filing Date.[15] Taking that reputation into account I must then consider in each case whether, (as with the s 44 ground discussed above), notional use of the Opposed Mark in a normal and fair manner would be likely to deceive or cause confusion amongst such consumers.

    [15] Ibid. at [160].

29. In my earlier summary of Mr Sacks’ declaration I described the manner and extent of use of the MONSTER Marks and the s 60 Marks collectively. In a nutshell, 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. Every can of the beverage sold bore one of the s 60 Marks, their placement two thirds the way down the back of the can and their relatively smaller size making them considerably less prominent than the MONSTER Marks on the cans’ front. Advertising and promotion of the product, 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 Monster’s branding generally receives wide and valuable incidental exposure.

30. I am satisfied based on that incidental exposure that each of the MONSTER Marks would have had a substantial reputation in Australia as at the Filing Date. The position is however less clear as far as the s 60 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. There is in fact very little evidence before me showing specific use of any of the s 60 Marks in Australia other than the Original Tagline used in relation to Monster’s original energy drink. The Original Tagline being in any event the most similar of the s 60 Marks to the Opposed Mark on the face of it, I consider that reliance on it in particular puts the Opponent’s case at its strongest. It follows that if the Opponent cannot succeed relying on the Original Tagline then reliance on the other s 60 Marks would also necessarily fail in my view. I note that the Assistant Commissioner of Trade Marks in the IPONZ decision reached a similar conclusion based on the evidence of Mr Sacks before her:

    Much of the evidence of use does not specify which mark was being used.  Nor, in many cases, does the evidence appear to relate to New Zealand.  Large tracts of the evidence relate to other trade marks altogether, such as MONSTER ENERGY or the Monster Claw Icon, which have no relevance to this proceeding.

    Overall, however, after sifting through the extraneous material, I am satisfied that the evidence is sufficient to demonstrate “threshold” awareness of the mark UNLEASH THE BEAST! in New Zealand as at the relevant date.

31. Like the Assistant Commissioner I am prepared to accept that there would have been “threshold awareness” of the Original Tagline amongst relevant consumers in Australia at the Filing Date sufficient to bring s 60 into play. Accordingly the discussion which follows centers on whether use of the Opposed Mark was then likely to deceive or cause confusion in light of the reputation of the Original Tagline. For ease of reference the two marks are again set out below:

32. In my view the likelihood of relevant deception or confusion is low for the following reasons.  Firstly there are the immediately obvious visual and aural differences between the parties’ marks when considered as wholes.  The marks simply do not look alike, nor do they sound alike.  It was these obvious differences that led me to conclude the Opposed Mark was not “deceptively similar” to the Opponent’s registered word mark UNLEASH THE BEAST! in terms of s 44 of the Act. The somewhat unusual stylised manner in which the Original Tagline is rendered and its use of upper and lower case letters only further distinguishes it from the Opposed Mark.

1. Secondly, the stylised word “OX” is on the face of it clearly the most prominent element in the Opposed Mark, rendered as it is in a significantly larger font than the words “UNLEASH THE POWER” and placed above them.  Notwithstanding the semantic relationship of the word “ox” to the other words, those other words form a meaningful collocation in their own right.  This suggests to me that it is the element OX by which the Opposed Mark (and the Applicant’s energy drink itself) is likely to be recognized and recalled by consumers.  This may be contrasted with the Original Tagline, where “beast” is the last word and constitutes an integral part of the exhortation of the tagline as a whole.  To the extent that the Original Tagline would be “imperfectly recollected” by consumers I do not think it is likely to be recollected by this word alone.  Even if it were, and despite the fact that, as Mr Rebikoff noted, an ox is undoubtedly a particular kind of beast, I do not agree with him that consumers somewhat familiar with the Original Tagline but having an imperfect recollection of it are likely to associate or confuse the words “ox” and “beast”.

2. Thirdly, as already discussed in connection with the s 44 ground, I do not think that the “conceptual similarity” of the two marks raised by Mr Rebikoff, essentially turning on both marks’ containing the phraseology “unleash the (something)”, is sufficiently remarkable as to make relevant deception or confusion likely.

3. Finally, as I have noted, the evidence satisfies me that because of the use they have enjoyed the MONSTER Marks 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 Original 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.  Given the consistent and reinforcing nature of Monster’s use then, relevant consumers are all the more unlikely, in my view, to be deceived or confused by use of the Opposed Mark absent Monster’s additional branding cues or trade marks.

4. 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 fairly claim in the Original Tagline, I am not satisfied use of the Opposed Mark in a normal and fair manner for energy drinks would be likely to deceive, or cause confusion amongst, a significant or substantial number of relevant consumers. The Opponent has accordingly not established its ground of opposition under s 60.

   Section 42(b)

5. 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.

6. The ground based on s 42(b) relies on the reputation of the same five trade marks which underpinned its s 60 ground and to which I will accordingly continue to refer as the s 60 Marks. The ground is particularised in the SGP as follows:

   The Opponent has used the [s 60] Marks in Australia since at least February 2009 and by reason of that use has acquired a substantial reputation in the [s 60] Marks.

   By virtue of the Opponent’s reputation in the [s 60] Marks in Australia, the registration and use of the Opposed Mark would be likely to mislead or deceive in breach of sections 18 and/or 29 of the Australian Consumer Law or would constitute passing off at common law.

7. At the hearing Mr Rebikoff only pressed the s 42(b) ground insofar as relates to the Australian Consumer Law (“the ACL”). In particular he specified s 18 and ss 29(1)(g) and (h) of the ACL, which 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; or

   …

8. Mr Rebikoff nevertheless agreed with me at the hearing that if the Opponent were unsuccessful in establishing its s 60 ground then it would also necessarily fail under its s 42(b) ground, given both grounds rely on the reputation of the same five trade marks. In this regard s 18 and ss 29(1)(g) and (h) of the ACL, unlike s 60 of the Act, 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 beverages or as to their connection to 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.[16]

   [16] See for example Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 1A IPR 684 per Gibbs CJ at 688. His Honour’s words were concerned with s 52 of the now repealed Trade Practices Act 1974, but s 18 of the ACL is its essentially identically worded successor and the point he makes is equally applicable to the current legislation.

9. For the sake of completeness I confirm that 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).

   Section 62A

10. Section 62A of the Act is reproduced below:

    Application made in bad faith

    The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

11. The Opponent here again relies on the reputation of the same five trade marks which underpinned its s 60 ground and to which I will for consistency continue to refer as the s 60 Marks. The ground based on s 62A is particularised in the SGP as follows:

    The Opponent has developed a substantial reputation in Australia in the word “UNLEASH”, by reason of its extensive use of the [s 60] Marks in Australia since at least 1999 in relation to non-alcoholic beverages, including in particular, energy drinks.

    The Applicant seeks, by its application and proposed use of its trade mark, to allude to the [s 60] Marks and to create an association between the Applicant’s trade mark and the Opponent, and between the Applicant’s trade mark and the Opponent’s [s 60] Marks, where no such association exists.

    In so doing, the Applicant’s conduct in making this application falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons.

12. I note the words “falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons” were described by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2)[17] as being “an apt touchstone” to use when assessing whether an applicant may have filed a trade mark application in bad faith.  While, as Mr Rebikoff noted, the standard of proof required of an opponent is on the balance of probabilities rather than beyond reasonable doubt, he acknowledged that “the seriousness of an allegation of bad faith requires correspondingly cogent evidence.”[18]

    [17] (2012) 94 IPR 551 at [165].

    [18] Ibid. at [145].

13. The Opponent’s case based on s 62A does not however rely on direct evidence of unacceptable commercial behavior by the Applicant. It merely suggests that:

    …the inference can comfortably be drawn that the decision to extend the Applicant’s product line to energy drinks (a product that otherwise has no natural connection to the Applicant’s existing product line of specialised tools for the construction industry) was taken in the knowledge that the Opponent already had a well-established reputation in the market for energy drinks which was closely associated with the expression UNLEASH THE BEAST.

14. Citing the decision of Bennett J in DC Comics v Chequout Pty Ltd,[19]  Mr Rebikoff added:

    …it is significant that since the Applicant has commenced distributing its energy drinks in Australia, it has not actually used the Opposed Mark on the goods in the form in which registration is sought (which reflects the trade mark the Applicant has previously used in respect of its tools for the construction industry) but instead has chosen to brand the goods solely with the expression UNLEASH THE POWER, without the OX prefix: see Hales Declaration, exhibit DAH-9.

    [19] (2013) 101 IPR 334 at [73]-[74].

15. I must however reject this submission.  I am not satisfied based on the totality of the evidence before me that the filing of the opposed application was part of an attempt by the Applicant to misappropriate the reputation claimed for the words “UNLEASH THE BEAST”.  As already mentioned in connection with the Opponent’s other grounds of opposition, I think the Opposed Mark is sufficiently different from the words “UNLEASH THE BEAST” as to render the Opponent’s claim of bad faith based on the claimed similarity alone unsustainable.

16. I thus find that the Opponent has not established its s 62A ground of opposition.

    Decision

17. 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.

18. I have found the Opponent has not established any of the four grounds pressed.  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

19. Both parties requested an award of costs in their favour. As the successful party, the Applicant is so entitled and I accordingly award costs against the Opponent as per Schedule 8 of the Regulations.

    Michael Kirov
    Hearing Officer
    Trade Marks Hearings
    23 November 2016