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

Monster Energy Company (the opponent) opposed the registration of three trade mark applications by Rodney Jane Racing Pty Ltd as Trustee of the Rodney Jane Racing Trust (the applicant). The dispute concerned the applicant's proposed use of trade marks, which the opponent contended would likely deceive or cause confusion due to the reputation of its own "MONSTER ENERGY" trade marks in Australia. The decision was made by Bianca Irgang, a Hearing Officer.

The primary legal issue before the Hearing Officer was whether the opponent had established a ground of opposition under section 60 of the *Trade Marks Act 1995* (Cth). This required determining if the opponent's "MONSTER ENERGY" trade marks had acquired a reputation in Australia prior to the applicant's priority date (27 January 2015), and if, because of that reputation, the use of the applicant's proposed trade marks would be likely to deceive or cause confusion among the relevant public. Unlike other grounds of opposition, section 60 does not necessitate a substantial identity or deceptive similarity between the trade marks, nor a specific degree of similarity between the goods or services.

The Hearing Officer applied the principles established in *Registrar of Trade Marks v Woolworths*, which clarify that confusion arises if a significant number of persons are left to wonder whether products or services come from the same source. The assessment considered all surrounding circumstances, including the manner of use, purchase, and sale of goods and services, and the characteristics of probable acquirers. Crucially, the assessment of potential confusion is based on what the applicant *can* do with the trade mark if registered, not merely how it has been used historically. The Hearing Officer found that the opponent had met its onus of proof regarding the section 60 ground.

Consequently, the Hearing Officer refused to register the applicant's trade mark applications numbered 1670840, 1670841, and 1670842. The Hearing Officer also awarded costs against the applicant in favour of the opponent, following the usual principle that costs follow the event.