Monster Energy Company v PepsiCo

[2021] ATMO 85

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 number 1957487 (classes 29, 30) - MONSTER MUNCH - in the name of PepsiCo, Inc

Delegate:	Timothy Brown
Representation:	Opponent: Stephen Rebikoff of Counsel, instructed by Davies Collision Cave Applicant: Kimberly Evans, Allens Patents and Trade Mark Attorneys
Decision:	2021 ATMO 85 Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 42(b), 44 and 60 considered – no grounds established – trade mark to proceed to registration

Background

1. This is an opposition under section 52 of the Trade Marks Act 1995 (Cth) to the registration of the following trade mark:

   Trade Mark Number: 1957487

Trade Mark: MONSTER MUNCH (‘Trade Mark’)

Applicant: PepsiCo, Inc (‘Applicant’)

Priority date: 25 September 2018

Specification:            (‘Applicant’s goods’)

Class 29: Meat, fish, poultry and game; meat extracts; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats; snack foods consisting primarily of potatoes, nuts, nut products, seeds, fruits or other vegetable materials or combinations thereof including potato chips, potato crisps, pork snacks, beef snacks, soy-based snacks; snack foods in this class including fruit-based snack foods, vegetable-based snack foods, cheese-based snack foods, meat-based snack foods, nut-based snack foods, potato-based snack foods, soy-based snack foods; prepared and processed nuts; processed legumes; edible seeds; fruit- and vegetable-based spreads and dips, dairy-based spreads, legume-based spreads, dairy-based dips

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice; snack foods consisting primarily of grains, corn, cereal, including corn chips, tortilla chips, pita chips, rice chips, rice cakes, rice crackers, pretzels, puffed snacks, snack bars, popped popcorn; biscuits, cakes, cereal bars, flapjacks, crackers; processed oats; mini-breads, crisp breads, breadsticks and other snack foods consisting primarily of bread

1. The Trade Mark was advertised for acceptance in the Official Journal of Trade Marks on 8 August 2019.

2. On 4 October 2019 a Notice of Intention to Oppose was filed by Monster Energy Company (‘Opponent’). The Statement of Grounds and Particulars was then filed on 18 October 2019.

3. A Notice of Intention to Defend was filed by the Applicant on 6 January 2020.

4. The Opponent filed Evidence in Support on 6 April 2020. Evidence in Answer was filed by the Applicant on 14 July 2020. Evidence in Reply was filed by the Opponent on 10 September 2020.

5. On 28 October 2020 both parties requested a hearing. The hearing was heard before a delegate of the Registrar of Trade Marks on 17 May 2021 via video conference. The Opponent was represented by Stephen Rebikoff of Counsel accompanied by Elizabeth Godfrey of Davies Collison Cave, the instructing firm. Andrew Wiseman and Kimberley Evans of Allens Patent and Trade Mark Attorneys appeared for the Applicant. The matter was subsequently allocated to me, another delegate of the Registrar, for decision. I have made the following decision having reviewed all the written material filed during these proceedings and the oral submissions of the parties that were recorded at the hearing.

Evidence

The Opponent

1. The Opponent’s evidence comprises of:

   Evidence in Support

• Declaration by Elizabeth Kate Godfrey made on 24 March 2020 and Exhibits EKG-1 to EKG-11 (‘Godfrey Declaration’); and

• Declaration by Paul J Dechary made on 2 April 2020 and Exhibits PJD-1 to PJD-74 (‘Dechary Declaration’).

  Evidence in Reply

• Declaration by Elizabeth Kate Godfrey made on 8 September 2020 and Exhibits EKG-1 to EKG-12 (‘Second Godfrey Declaration’).

1. Exhibited to the Godfrey Declarations are the following declarations (previously filed on behalf of the Opponent in earlier unrelated proceedings before this office):

• Statutory Declaration of Rebecca Lee Dunbar (‘Dunbar Declaration’) dated 8 August 2012 and Exhibits RLD-1 to RLD-20;

• Statutory Declaration of Danielle Jade Roberts dated 9 July 2912 (‘Robert Declaration’) and Exhibits DJR-1 to DJR-48; and

• Statutory Declaration made by Adrian Heath Hunter dated 11 October 2012 (‘Hunter Declaration’) and Exhibits AH-1 to AH-19.

  ·     Declaration made by Sam Anthony Pontrelli dated 7 August 2017 and Exhibits SAP-1 to SAP-38 (‘Pontrelli Declaration’); AND

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

1. The Dechary Declaration explains that 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. The Opponent owns a number of trade marks comprising of the word MONSTER, most notably:

   (‘MONSTER Trade Marks’)

   ·     MONSTER

   ·      MONSTER ENERGY  (‘MONSTER ENERGY Trade Mark’)

   ·        (‘Claw Device’)

   ·           (‘Composite MONSTER ENERGY Trade Mark’)

3. 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.

4. 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.

5. 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.

6. 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. 

7. The Dechary Declaration explains that the Opponent does not utilise conventional marketing methods, but instead focuses on athlete endorsement and sponsorship of 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.

8. 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.

9. 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	17
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 ABSOLUTELY ZERO	8 January 2015	5, 32
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

The Applicant

1. The Applicant’s evidence comprises of a declaration made by Andrew Wiseman and Exhibit AW-1 (‘Wiseman Declaration’).

2. The Wiseman Declaration outlines the history of the Applicant and its use of the Trade Mark. The Applicant was formed in 1965 from a merger between the Pepsi-Cola Company and Frito-Lay Inc. The Trade Mark was first used in Britain by Smith’s Potato Crisps Ltd (‘Smiths’) in 1977. In 1995, Walker Snack Foods Limited (‘Walkers’), a subsidiary of the Applicant, acquired the Trade Mark from Smiths. Following the acquisition, the Trade Mark has been in continuous use in the United Kingdom. Goods bearing the Trade Mark are also available from various independent retailers in Australia.

3. The Declarant, the Applicant’s representative in this matter, also notes that the Trade Mark and the Opponent’s MONSTER Trade Marks coexist across a number of jurisdictions, including in the United Kingdom, Republic of Ireland, New Zealand, France, and Germany.

Grounds of Opposition, Onus and Relevant Date

1. The grounds of opposition nominated in the Statement of Grounds and Particulars were sections 42(b), 44, 60 and 62A. At the hearing the Opponent pressed sections 42(b), 44 and 60 of the Act. For completeness I find that section 62A is not established.

2. The Opponent bears the onus of establishing one or more of the grounds of opposition.[1] The required standard of proof is on the balance of probabilities.[2]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [2] Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26]; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

3. The date at which the rights of the parties will be determined is the priority date of the Trade Mark, 25 September 2018 (‘Priority Date’).

Discussion and Reasons

Section 44

1. Section 44(1) relevantly provides:

   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.

1. To succeed in this ground of opposition the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of a person other than the Applicant, in respect of similar goods or closely related services.

2. In the Statement of Grounds and Particulars the Opponent referenced the collection of registered trade marks detailed in paragraph [17]. In its submissions the Opponent placed particular emphasis on the following trade mark registration:

   Trade Mark Number: 1896558

   Trade Mark: MONSTER MEAL DEAL (‘Opponent’s Trade Mark Registration’)

   Priority Date: 28 June 2017

   Specification: See Annexure A

3. From the details outlined above it is evident that the Applicant is not the owner of the Opponent’s Trade Mark Registration and that the priority date of the Opponent’s Trade Mark Registration, 28 June 2017, is earlier than the priority date of the Trade Mark.

4. Both parties acknowledge that the goods of the Trade Mark and the Opponent’s Trade Mark Registration are largely the same. I am also satisfied that this is the case, noting that the Applicant’s goods in classes 29 and 30 cover the same food, condiments and beverages as the goods specified in the Opponent’s Trade Mark Registration.

Substantial Identity

1. The Opponent did not assert that the trade marks were substantially identical. On a side-by-side comparison the differences between the trade marks are clear enough for me to be satisfied that there would not be an overall impression of resemblance.

Deceptively Similar

1. Section 10 of the Act defines ‘deceptively similar’ as:

   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.

1. In Shell Co (Aust) Ltd v Esso Standard Oil (Aust)Ltd[3] Windeyer J outlined the approach to assessing deceptive similarity:

   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 [mark].[4]

   [3] [1963] HCA 66.

   [4] Ibid [13].

2. For trade marks to be considered deceptively similar there must be a real or tangible danger of deception or confusion occurring.[5] This will be the case where there is a real likelihood that an ordinary person would be caused to wonder whether the goods come from the same trade source.[6]

   [5] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595; Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50].

   [6] Ibid.

3. Whether one trade mark is deceptively similar to another requires an estimation of the impression or recollection that a person of ordinary intelligence would have of the trade marks.[7] The impression comes from the trade marks in their entirety,[8] and is informed by the look, sound and ideas conveyed by the trade marks.[9]

   [7] Australian Woollen Mills v FS Walton & Co Ltd (1937) 58 CLR 641, 658.

   [8] Clarke v Sharp (1898) 15 RPC 141, 146.

   [9] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538.

4. The Opponent contended that the word MONSTER is the essential feature of both trade marks and drew attention to its relative distinctiveness when compared to the other elements of the trade marks, MUNCH and MEAL DEAL. In support of this argument, the Opponent referenced a number of cases where trade marks have been held to be deceptively similar due to the presence of shared elements.[10]

   [10] See: Re Broadhead’s Application (1950) 67 RPC 209; Haw Par Corp Ltd v Thai Enterprises Ltd (2004) 63 IPR 666; Starr Partners Pty Ltd v Dev Prem Pty Ltd (2007) 71 IPR 459; Edwards v Liquid Engineering 2003 Pty Ltd (2008) 77 IPR 115; Pacific Brands Workwear Group Pty Ltd v JTC Import/Export Pty Ltd [2014] ATMO 43.

5. The Opponent also emphasised the alliterative effect both trade marks share though the repetition of words containing syllables starting with ‘M’, and the conceptual similarities derived from the shared use of the word MONSTER and words that have meaning associated with food. In respect to the latter, the Opponent submitted that less weight should be afforded to elements of trade marks that are common or descriptive of the relevant goods or services.[11]

   [11] Re Frigiking Trade Mark [1973] RPC 739, 752; Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505, 511-12.

6. In response, the Applicant submitted that the trade marks should not be considered deceptively similar because they consist of a different number of words, they convey different meanings, and overall are visually and aurally different.

7. The Applicant also contended that:

   In the context of food items in Classes 29 and 30, the word MONSTER has descriptive connotations and its presence within the two marks does not automatically give rise to a connection in the mind of consumers, particularly in circumstances where the words MONSTER MEAL DEAL have an obviously descriptive meaning for food items.

8. Additionally, the Applicant noted that although the words MUNCH and MEAL DEAL each have some meaning in relation to food products, their respective meanings are not similar and do not convey the same idea to consumers.

9. The Trade Mark is comprised of the words MONSTER MUNCH. The Opponent’s Trade Mark Registration contains the word MONSTER and the phrase MEAL DEAL. The central point of contention is the impact of the shared element, MONSTER, and whether the additional material in both trade marks is sufficient to differentiate them.

10. Although the word MONSTER is distinctive in the context of the relevant goods and its presence at the beginning of both trade marks affords the trade marks a degree of similarity, in my view people of ordinary intelligence are not likely to dismiss the presence of the word MUNCH in the Trade Mark. There are several reasons for this. Firstly, the word MUNCH may have meaning in relation to food products, however, it is not descriptive of the relevant goods in the same manner as MEAL DEAL. The words MEAL DEAL describe a food product offered for purchase. On the other hand, MUNCH is a synonym for ‘eat’ or ‘chew’.

11. Secondly, the words MUNCH or MEAL DEAL are not visually, aurally or conceptually similar, nor do they convey a similar impression. Neither element bears any visual or aural resemblance, and as indicated above, both elements convey different meanings. In the context of the trade marks as a whole, these differences are a point of differentiation.

12. Finally, consumers who see the Trade Mark are likely to recall the phrase MONSTER MUNCH in its entirety, not just the feature MONSTER. Although I acknowledge it is the more distinctive term, focusing on MONSTER as the essential feature of the Trade Mark diminishes the effect of the impression conveyed by the entirety of the Trade Mark. MONSTER is not an invented word, and its presence together with the word MUNCH conveys the tangible idea of either a monster eating or of a ‘munch’ that is large.

13. Accordingly, I do not agree with the Opponent that the word MONSTER alone is likely to be seen as the sole essential feature of the Trade Mark, or that the Trade Mark is likely to be recalled by just the word MONSTER. Rather, in my view, people who have seen the Trade Mark are likely to recall the phrase MONSTER MUNCH in its entirety. When the trade marks are considered as a whole, the visual, aural, and conceptual differences outweigh the similarities derived from the common word, MONSTER. For these reasons, I am not satisfied that the impression of the Trade Mark is similar enough to the Opponent’s Trade Mark Registration that it is likely to cause deceive or confusion.

1. I note that the Opponent’s Statement of Grounds and Particulars refers to all of the Opponent’s Trade Mark Registrations. The Opponent did not cover these trade marks specifically during the hearing. I do not consider it necessary to consider these trade marks any further. Noting my conclusion in relation to the Opponent’s Trade Mark Registration, I would arrive at the same conclusion for any of those trade marks that specify similar goods to the Trade Mark given that they incorporate the word MONSTER and have additional elements to further differentiate them from the Trade Mark. Further, many of the Opponent’s Trade Mark Registrations are in respect of goods that are not similar to the Applicant’s goods, so they cannot form a basis for this ground of opposition.

2. The section 44 ground of opposition is not established.

Section 60

1. Section 60 of the Act provides:

   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.

2. To establish this ground of opposition, the Opponent must demonstrate:

   ·     The existence of a reputation in another trade mark in Australia before the Priority Date; and

   ·     That use of the Trade Mark would be likely to deceive or cause confusion because of the reputation of the other trade mark.

Reputation

1. Reputation, in the context of section 60, has been held to refer to ‘recognition of [the mark] by the public generally’.[12] It is not a factor that is assumed and must be established by the Opponent as a matter of fact.[13]

   [12] McCormick & Co Inc v McCormick [2000] FCA 1335, [81].

   [13] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77].

2. In ConAgra Inc v McCain Foods (Aust) Pty Ltd Lockhart J discussed the means by which a trade mark’s reputation could be established:

   [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 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.[14]

   [14] Ibid [118].

3. In Rodney Jane Racing Pty Ltd v Monster Energy Company O’Bryan J also observed:

   The reputation of a trade mark has quantitative and qualitative dimensions.  The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied.  The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally…[15]

   [15] [2019] FCA 923, [83].

4. The Opponent adduced a substantial amount of evidence demonstrating use of the MONSTER Trade Marks in Australia. The Applicant conceded that the evidence provided in relation to the reputation of the MONSTER Trade Marks was significant, but challenged the Opponent’s submission on the grounds that that the evidence did not demonstrate a reputation for the word MONSTER solus and that any reputation demonstrated is limited to energy drinks.

5. I am satisfied based on the evidence provided by the Opponent that a significant reputation exists in the MONSTER ENERGY Trade Mark and the Composite MONSTER ENERGY Trade Mark. The Opponent has sold, in Australia, a substantial amount of goods bearing both these trade marks. Furthermore, the extensive marketing activity detailed in the Opponent’s Evidence in Support is also indicative of a significant degree of trade mark exposure both worldwide and in Australia.

6. This reputation is in relation to energy drinks. The Opponent’s use of its trade marks and its marketing activities do extend beyond energy drinks. For example, the Opponent has applied its trade marks to a variety of clothing products, and live sporting and music events. However, this can be characterised as advertising or sponsorship for the Opponent’s energy drinks, while the use of various articles of clothing, merchandise and other non-energy drink related goods is either insufficient to establish a standalone reputation in connection with those goods, or would only be associated in the minds of consumers with the Opponent’s energy drink trade marks.

7. I am also not of the view that the reputation extends to the plain word MONSTER or any stylised version of it, despite the word being an essential feature of both the MONSTER ENERGY Trade Mark and the Composite MONSTER ENERGY Trade Mark. The Opponent’s use of their trade mark is notably consistent. The trade mark use demonstrated in the Opponent’s evidence generally features either the phrase MONSTER ENERGY, or the use of MONSTER in connection with the Claw Device. Where MONSTER is utlised with other word elements or without the word ENERGY, it is consistently accompanied by the Claw Device.

8. On this point, I note that the reputation of the MONSTER Trade Marks was discussed in Rodney Jane Racing Pty Ltd v Monster Energy Company[16] and Monster Energy Company v Mixi Inc [17]. In Monster Energy Company v Mixi Inc Stewart J stated:

   In the result, the evidence does not support a conclusion that the MONSTER word mark on its own had any particularly significant reputation in Australia at the relevant time. Any reputation of the word MONSTER is derived from the M claw, stylised MONSTER and the MONSTER ENERGY word mark. It is these that create the association in the minds of consumers.[18]

   [16] [2019] FCA 923.

   [17] [2020] FCA 1398.

   [18] Ibid [151].

9. Justice O’Bryan stated in Rodney Jane Racing Pty Ltd v Monster Energy Company:

   [t]here is no evidence that MEC has used the word marks which contain the plain (i.e. not stylised) word “Monster” as a brand to sell its energy drinks or for promotional purposes. Any use of the word “Monster” by MEC is subsidiary to the use of its device marks.  As such, in my view MEC’s word marks which contain the plain word “Monster” have only a limited reputation on their own.  Any reputation they enjoy is derived from MEC’s device marks.[19]

   [19] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [119[.

10. There is no material or evidence introduced in this matter that would warrant arriving at a different conclusion in respect to the reputation of the MONSTER Trade Marks. Accordingly, I am satisfied that as of the Priority Date the MONSTER ENERGY Trade Mark and the Composite MONSTER ENERGY Trade Mark held a significant reputation in respect to energy drinks. However, I am not satisfied that the word MONSTER on its own had a reputation in Australia at the Priority Date.

Likelihood of Deception or Confusion

1. The section 60 ground of opposition will only be established if the reputation of the MONSTER ENERGY Trade Mark or the Composite MONSTER ENERGY Trade Mark is such that the use of the Trade Mark would likely result in a real tangible danger of deception or confusion.

2. The concepts of ‘deceive’ and ‘cause confusion’ was explained by Richardson J in the New Zealand decision of Pioneer Hi-Bred Corn Co v Hy-line Chicks Pty Ltd:

   ‘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.[20]

   [20] [1979] RPC 410, 423.

3. The Opponent contends that there is a real likelihood that use of the Trade Mark would result in confusion due to the presence of the word MONSTER in the Trade Mark, and the connection between the Applicant’s goods and those for which the MONSTER Trade Marks hold a reputation.

4. Section 60 is not based on a requirement that the relevant trade mark be substantially identical or deceptively similar. However, the degree of similarity between the trade marks remains a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed trade marks.[21] Similarly, the nexus between the relevant goods is another factor that may inform the likelihood of deception or confusion.

   [21] Qantas Airways Ltd v Edwards [2016] FCA 729, [142] (Yates J); Reece Pty Ltd v Rodgers Seller & Myhill Pty Ltd [2010] ATMO 5, [39].

5. In respect to the similarity of the trade marks, the Opponent reiterated the submissions made in relation to the section 44 ground of opposition. I refer to the discussion above and my conclusions regarding the similarity of the Trade Mark to the Opponent Trade Mark Registration. I consider the differences between the Trade Mark and the Opponent’s MONSTER ENERGY and Composite MONSTER ENERGY Trade Mark to be more pronounced than the differences with Opponent’s Trade Mark Registration. Apart from the word MONSTER, the Trade Mark does not share any distinctive features with either the MONSTER ENERGY or Composite MONSTER ENERGY Trade Marks. The Trade Mark does not incorporate the word ENERGY, nor is the word MUNCH similar in meaning, appearance or sound to the word ENERGY. In respect to the Composite MONSTER ENERGY Trade Mark, any similarity is further diminished by the distinctive script used to represent the word MONSTER and the presence of the Claw Device.

6. The Opponent submits that the likelihood of confusion would be increased because the Applicant’s goods are those the Opponent is known for distributing or would otherwise be regarded as a natural extension of the Opponent’s brand. It is important to bear in mind that section 60 is concerned with reputation in a trade mark, not a reputation in any person. As I have already found above, the trade marks with a reputation here are in respect of energy drinks. There is also no evidence before me to suggest that the Applicant’s goods could be considered a natural extension of the Opponent’s energy drink business or that consumers would expect the Applicant’s goods come from the same trade source as an energy drink provider.

7. The Opponent refers to its propensity for adding words to the MONSTER trade mark. However, the persuasiveness of this argument was largely contingent upon a reputation being established in MONSTER on its own. In my view, consumers are not likely to view MONSTER MUNCH as a brand extension of MONSTER ENERGY or the Composite MONSTER ENERGY Trade Mark.

8. Considering all of the above, I am satisfied that there is not a real and tangible danger that use of the Trade Mark would result in confusion with either the MONSTER ENERGY Trade Mark or the Composite MONSTER ENERGY Trade Mark.

9. The section 60 ground of opposition has not been established.

Section 42(b)

1. Section 42(b) of the Act provides:

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

   …

   (b)    its use would be contrary to law.

2. The Opponent relied on sections 18(1) and 29(g) and (h) of the Australian Consumer Law (‘ACL’) of Schedule 2 of the Competition and Consumer Act 2010 (Cth) and the tort of passing off as the basis for the ground of opposition under section 42(b) of the Act.

3. In order to succeed in an opposition under section 42(b) of the Act, the Opponent must demonstrate on the balance of probabilities that use of the Trade Mark would contravene the ACL or constitute passing off. [22]

   [22] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28].

Australian Consumer Law

1. Section 18 of the ACL provides:

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

2. Section 29(1) of the ACL relevantly provides:

   (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

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

3. Unlike section 60 of the Act, sections 18 and 29 of the ACL require there to be a likelihood that the relevant consumer be misled or deceived as to the origin of the Applicant’s goods due to the conduct of the Applicant. The requirement that consumers be misled or deceived is a higher threshold than confusion under section 60 of the Act.[23] Where the Applicant’s conduct in relation to the trade mark does not contravene section 18 of the ACL, it is also unlikely to contravene section 29 of the ACL.[24]

   [23] Monster Energy Company v Mixi Inc [2020] FCA 1398, [33].

   [24] A G Professional Hair Care Products Ltd v Geagroup Invest SRL[2014] ATMO 65, [50]; Pacific Publications Pty Ltd v IPC Media Pty Ltd [2003] FCA 104, [107] (Beaumont J).

4. As discussed above, the Opponent failed to establish the ground of opposition under section 60 of the Act. Consequently, I am also satisfied for the same reasons that use of the Trade Mark would not be likely to mislead or deceive the ordinary consumer of the relevant goods into believing that there is an association between the Trade Mark and any of the MONSTER Trade Marks.

Passing Off

1. Generally, where a trade mark does not contravene sections 18 or 29 of the ACL, it is unlikely to amount to passing off.[25] In Re Equity Access Pty Ltd v Westpac Banking Corporation Hill J discussed the tort of passing off and operation of 52 and 53 of the Trade Practices Act 1974 (Cth), the predecessors to sections 18 and 29 of the ACL:

   The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[26]

   [25] Monster Energy v USA Nutraceuticals Inc [2017] ATMO 22, [58].

   [26] [1989] FCA 506, [40].

2. Given my findings in relation to sections 18 and 29 of the ACL, it follows that use of the Trade Mark would not constitute passing off.

3. The ground of opposition under section 42(b) has not been established.

Decision

1. Section 55(1) of the Act relevantly provides:

   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.

2. The Opponent has not established a ground of opposition. Accordingly, trade mark application 1957487 may proceed to registration one month from the date of this decision.

3. Should the Registrar be served with a notice of appeal before registration of the trade mark, I direct that registration of the trade mark not occur until the appeal has been decided or discontinued, and that any disposition of the application be in accordance with the Court’s orders or direction.

Costs

1. Both parties sought costs. As the Opponent has not established a ground of opposition, I award costs against the Opponent in accordance with Schedule 8 of the Trade Mark Regulations 1995 (Cth).

Timothy Brown
Hearing Officer
Delegate of the Registrar of Trade Marks
16 August 2021

Annexure A

Specifications for Trade Mark 1896558

Class 29;  Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats; beverages made from, based on or containing yoghurt or milk; hot dogs; hamburgers; french fries; potato chips; salads, namely, garden salads, fruit salads, vegetable salads, and salads featuring meat, fish or poultry; combination meal consisting primarily of a meat or vegetable-based entree and a soup or salad for consumption on or off the premises; prepared meals consisting primarily of meat, fish, poultry or vegetables; prepared meals consisting primarily of meat substitutes; prepared meals consisting primarily of vegetables

Class 30: Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastries and confectionery; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice; beverages made from, based on or containing coffee, tea, cocoa, chocolate or artificial coffee; tacos; hot dog sandwiches; hamburger sandwiches; sandwiches; pasta salad; combination meals consisting primarily of pasta or rice-based entrees and soup or salad for consumption on or off the premises; prepared meals consisting primarily of pasta or rice

Class 43: Restaurant services; bar services