Monster Energy Company v Rodney Jane Racing Pty Ltd as Trustee of the Rodney Jane Racing Trust

[2018] ATMO 57

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. 1670840, 1670841 and 1670842 –MONSTER BOBJANE.COM.AU with device, MONSTER with device, MONSTER WHEELS BOBJANE.COM.AU with device - in the name of Rodney Jane Racing Pty Ltd as Trustee of the Rodney Jane Racing Trust

Delegate:	Bianca Irgang
Representation:	Opponent: Stephen Rebikoff of counsel instructed by Davies Collison Cave Applicant: Ed Heerey of counsel instructed by Kahns Lawyers
Decision:	2018 ATMO 57 Trade Marks Act 1995 - Section 52 opposition: sections 42(b) and 60 pressed – ground of opposition established under section 60 - registration of trade marks refused.

Background

1. Rodney Jane Racing Pty Ltd as Trustee of the Rodney Jane Racing Trust (‘the applicant’), filed trade mark application numbers 1670840, 1670841 and 1670842 on 27 January 2015 in class 12 of the International Classification of Goods and Services. Current details of the applications are set out below.

   Trade mark:  

   Trade mark application no: 1670840            

   Filing Date:  27 January 2015

   Specification:  Class 12: Alloy Wheels for automobiles excluding motorbikes

   Trade mark:  

   Trade mark application no: 1670841            

   Filing Date:  27 January 2015

   Specification:  Class 12: Alloy Wheels for automobiles excluding motorbikes

   Trade mark:  

   Trade mark application no: 1670842            

   Filing Date:  27 January 2015

   Specification:  Class 12: Alloy Wheels for automobiles excluding motorbikes

2. For ease of reference I will refer to the applicant three trade marks collectively as ‘the Trade Marks’ through the course of the decision. Acceptance of the applications for possible registration was published in the Australian Official Journal of Trade Marks on 24 March 2016. Subsequently Monster Energy Company (‘the opponent’) filed its Notices of Intention to Oppose registration followed by its Statements of Grounds and Particulars[1].

   [1] which together constitute ‘the Notices’

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 oppositions in Melbourne as a delegate of the Registrar of Trade Marks on 23 November 2017. The applicant was represented by Ed Heerey of Counsel instructed by Kahns Lawyers. The opponent was represented by Stephen Rebikoff of Counsel instructed by Davies Collison Cave.

   Grounds of Opposition

5. The Notices 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) 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 11 October 2016

   ·Declaration of Elizabeth Kate Godfrey (‘Godfrey’) dated 10 October 2016 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 Mark Laurance Warsnop (‘Warsnop’) dated 20 December 2016

   ·Declaration of Rodney Bruce Jane (‘Jane’) dated 22 December 2016

   Evidence in Reply

   ·Declaration of Rodney Cyril Sacks ( ‘Sacks 2’) dated 13 April 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 trade marks’)

9. The opponent’s trade marks (as well as many other ‘MONSTER ENERGY’ trade marks) have also 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 Marks.

   [4] Exhibit RCS-02 accompanying Sacks 1

10. It is for me to determine whether the opponent has established that before 27 January 2015 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, etc, were set out by French J in Registrar of Trade Marks v 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. Sacks 1 states that 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. Mr Rodney Cyril Sacks, the Chairman and Chief Executive Officer of Monster Beverage Corporation and its subsidiaries including the opponent, asserts that 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’). From June 2006 until February 2007 Bickford’s sold more than 480,000 cans of MONSTER branded energy drinks in Australia. In 2008 the opponent subsequently acquired from Bickford’s all the rights to the MONSTER trade mark so it was 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 until April 2009.

14. 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.

15. The world-wide sales of goods bearing the opponent’s trade marks are very substantial particularly given the relatively low cost of the individual drinks. From 2009 until 2015 the total sales of those energy drinks in Australia is also considerable. 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 basis for this decision in marketing, according to Mr Sacks, is to reach the opponent’s target demographic being 18 to 34 year olds and mostly male. Mr Sacks states that it is the indirect and non-traditional forms of advertising, such as sponsorship and product placement, which are instrumental in reaching this demographic. The opponent has spent billions on world-wide advertising and significant advertising expenditure has occurred in Australia. Mr Sacks provides the opponent’s advertising figures for Australia from 2009 until December 2015 in relation to goods bearing the opponent’s trade marks. The figures are substantial.

16. According to Sacks 1 the opponent allocated a large portion of its marketing, advertising and promotional budget on athletic endorsements and sponsoring athletic competitions and other events, particularly, international events including events which are webcast on the Internet. These marketing and promotional activities include sponsorship of Road Racing World Championship Grand Prix events including MotoGP Australian Grand Prix, MotoGP’s Grand Prix de France and GP Monster Energy de Catalunya, Dakar Rally[8], the Monster Energy Yamaha Tech 3 Moto GP racing team, The Yamaha Factory Racing MotoGP Team, the Mercedes AMG PETRONAS F1 racing team[9], the Ultimate Fighting Championship, FIM Motocross World Championships[10], the X Games[11], Monster Energy Super X: Australasian Supercross Championship[12] as well as many more. I note that many of these sports involve a series of international events or races with wide-scale television, internet and media coverage which can attract millions and sometimes billions of viewers across the world.

    [8] Exhibit RCS-15 accompanying Sacks 1

    [9] Exhibit RCS-13 accompanying Sacks 1

    [10] Exhibit RCS-14 accompanying Sacks 1

    [11] Exhibit RCS-16 accompanying Sacks 1

    [12] Exhibit RCS-19 accompanying Sacks 1

17. The opponent’s sponsorship of sporting events involves the opponent’s trade marks being prominently displayed at events on banners, posters, signs, and on clothing and accessories sold at the events, on transport, support and hospitality tractor trailers, on motor homes and promotional vehicles that tour the circuit for various sports[13].

    [13] Exhibit RCS-10 and RCS-23 accompanying Sacks 1, Exhibit AH-9 accompanying Hunter

18. Taken all together, I am satisfied that the opponent’s trade marks had a 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.

19. The applicant has agreed that the opponent has a significant reputation in its MONSTER ENERGY trade marks for energy drinks. However, the applicant has argued that given the opponent’s significant reputation in energy drinks and no brand extension, it would be a ‘quantum leap for consumers to perceive an extension of the MONSTER ENERGY energy drink brand into the manufacture of expensive parts for vehicle such as alloy wheels’. Mr Heerey, counsel for the applicant, argued that there was no logical basis to conclude that an Australian consumer, who is familiar with the MONSTER ENERGY beverage products, would expect such a manufacturer of energy drink products to become involved with such fundamentally different, expensive and specialist products as alloy wheels for vehicles.

20. Further to this, Mr Heerey argued that the fans who consume the opponent’s MONSTER ENERGY beverages are ‘involved consumers’ in the sense considered by the Full Court in C AHenschke & Co v Rosemount Estates Pty Ltd [14]  and thus can be expected to remember the get up and style of the opponent’s MONSTER ENERGY branding and distinguish it from different MONSTER marks with different get up and style. I am not persuaded by this line of reasoning. A consumer may be aware that one trade mark is not identical to another trade mark but still be confused and led to believe there is a connection between the respective trade marks based on the similarities between the trade marks.

    [14] (2000) 52 IPR 42 [19]

21. In considering the similarities between the opponent’s trade marks and the Trade Marks it becomes clear that the respective trade marks share some striking similarities. Notably, all the trade marks share the prominent word MONSTER and contain an “M” device. It is a striking and unusual choice to select the combination of the word MONSTER with an “M” device.  It is this similar combination coupled with the opponent’s significant reputation in its trade marks which will lead a significant number of consumers to, at the very least, experience a reasonable doubt[15] as to the existence of some sort of connection between the opponent’s trade marks and the Trade Marks.

    [15] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5

22. In coming to this decision, I turn to the evidence of the opponent’s very significant sponsorship and promotion of its trade marks through motor vehicle sporting events as well as numerous other sporting events and the very public and visible support of sporting teams and people. The opponent’s strong and significant presence within the automobile sporting industry lends support to its argument that seeing the applicant’s Trade Marks on alloy wheels for motor vehicles would lead to confusion. I also note that the target demographic for both parties are men aged between 18 and 34.

23. Given the above and the similarities between the respective trade marks I am satisfied that there is a real and tangible danger of confusion taking place between the trade marks. The applicant has argued that the opponent’s trade mark is not for the word MONSTER but for the combination of the words MONSTER ENERGY. I agree that the opponent’s trade marks contain the words MONSTER ENERGY but it is also clear that the word MONSTER, particularly when coupled with the ‘M’ device is a prominent and memorable combination which should not be discounted. Particularly when the word ‘ENERGY’ for energy drinks is not as striking or memorable as ‘MONSTER’.

24. It is also clear to me that the opponent \has a strong reputation in its combination MONSTER ENERGY with the ‘M’ device trade marks in the beverage industry and is also strongly represented in the motor sports and sports sponsorship market. To suggest, in light of the opponent’s evidence that the opponent’s reputation in its trade marks exists only in relation to energy drinks ignores the consumer experience and association of the opponent’s brand with motor sports. A connection which the opponent has specifically targeted and fostered as part of its very significant advertising and marketing campaign. Consumers turning up to and watching motor sports heavily featuring the opponent’s trade marks are very unlikely to confine their association of the opponent’s trade marks solely to beverages. Instead, it is likely they will draw a connection between the opponent and motor sports which will in turn lead to confusion when faced with motor vehicle goods bearing the unusual and striking MONSTER and ‘M’ device combination.

25. I am satisfied that the opponent has established the section 60 ground of opposition in relation to all of the applicant’s goods. Having found in favour of the opponent in terms of section 60 there is no need for me to discuss the other grounds as set out in the notice, although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.

    Decision

26. 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.

27. I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 60. Accordingly I refuse to register trade mark application no.(s) 1670840, 1670841 and 1670842.

    Costs

28. 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 applicant under section 221 of the Act in terms of Schedule 8 of the Regulations.

    Bianca Irgang

    Hearing Officer

    Oppositions and Hearings

    24 April 2018