Monster Energy Company v Shanghai Aiqia Food & Beverage Management Co., Ltd

[2025] ATMO 39

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 2311818 (32) – M M Stand – in the name of Shanghai Aiqia Food & Beverage Management Co., Ltd.

Delegate:

Louise Tuohy

Representation:

Opponent: Ryan Maguire of Counsel, instructed by Davies Collison Cave Pty Ltd

Applicant: Not represented

Decision:

2025 ATMO 39

Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 42(b), 44 and 60 considered – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Monster Energy Company (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to the registration of the following trade mark application (‘Application’) in the name of Shanghai Aiqia Food & Beverage Management Co., Ltd. (‘Applicant’):

   Trade mark number:              2311818

   Trade mark:        (‘Trade Mark’)

   Filing date:  2 November 2022

   Specification:              Class 32: Fruit juices: Vegetable juices (beverages); Beer (‘Applicant’s Goods’)

   [1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.  

2. The Application was examined as required by s 31 and advertised for possible registration on 26 April 2023.

3. On 26 June 2023 the Opponent filed a Notice of Intention to Oppose the registration followed by its Statement of Grounds and Particulars (‘SGP’) on 26 July 2023. The Applicant filed a Notice of Intention to Defend on 6 September 2023.  

4. Thereafter the Opponent filed the following evidence in support (‘EIS’) in accordance with the Regulations:

   ·Declaration of Elizabeth Kate Godfrey, Principal of Davies Collison Cave Pty Ltd on behalf of the Opponent, made on 12 December 2023, with Exhibits EKG-1 to EGK-48 (‘Godfrey’).

   §Statutory Declaration of Danielle Jade Roberts, Lawyer employed by Rudstein Kron Lawyers, formerly Lawyer at Davies Collison Cave Pty Ltd, made on 9 July 2012, with Exhibits DJR-1 to DJR-48 (at EKG-2) (‘Roberts’).

   §Statutory Declaration of Rebecca Lee Dunbar, Librarian employed by David Collison Cave Pty Ltd, made on 8 August 2012, with Exhibits RLD-1 to RLD-20 (at EKG-1).

   §Statutory Declaration of Adrian Heath Hunter, Australasian Manager of Monster Energy AU Pty Ltd, made on 11 October 2012, with Exhibits AH-1 to AH-19d (at EKG-3) (‘Hunter’).

   §Declaration of Emily Elizabeth Maartensz, Lawyer employed by Davies Collison Cave Law Pty Ltd, made on 25 July 2023, with Exhibit EEM-1 (at EKG-3A) (‘Maartensz’).

   ·Declaration of Paul J Dechary, Executive Vice President and Deputy General Counsel of the Opponent, made on 11 December 2023, with Exhibits PJD-1 to PJD-82 (‘Dechary’).   

   §Declaration of Sam Anthony Pontrelli, Senior Vice President of Marketing of the Opponent, dated 7 August 2017, with Exhibits SAP-1 to SAP-35 (at PJD-2) (‘Pontrelli’).

   §Declaration of Samuel Peter Thiele, Country Manager - Oceania of Monster Energy AU Pty Ltd, made on 11 August 2017, with Exhibits SPT-1 to SPT-32 (at PJD-3) (‘Thiele’).

5. The Applicant did not file any evidence in answer in these proceedings.

6. Once time for filing evidence had ended both parties were given the opportunity to either request an oral hearing or a hearing by way of written submissions. The Opponent requested an oral hearing. The Applicant did not request a hearing. As the delegate for the Registrar of Trade Marks I heard the matter by videoconference on 17 February 2025. Ryan Maguire of Counsel instructed by Elizabeth Godfrey of Davies Collison Cave Pty Ltd appeared on behalf of the Opponent. The Opponent’s oral submissions were supported by its written submissions filed prior to the hearing.

   Grounds of Opposition, Relevant Date and Onus

7. In the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 60 and 62A. At the hearing the Opponent did not press the ground of opposition under s 62A.  

8. The date at which the rights of the parties are to be determined is the filing date of 2 November 2022 (‘Relevant Date’) which is also the priority date for the purposes of ss 44 and 60.

9. The Opponent bears the onus of establishing at least one of the grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132] (Besanko, Jagot and Edelman JJ).

   Discussion

   The Opponent

10. The Opponent is an American beverage company which is primarily in the business of designing, creating, developing, producing, marketing and selling energy drinks.

    The Applicant

11. The Applicant did not supply evidence in answer, so there is no information about it on the official record.  

    Section 44

12. Section 44 relevantly provides:

    44  Identical etc. trade marks

    (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.

13. In the SGP the Opponent particularises the s 44 ground of opposition as follows: [4]

    1106343, 1350831, 1660447, 2038429, 2024921, 2024918, 1912868, 1924998, 2024919, 2147878, 2251299, 1109998, 1478334, 1711621, 1769906, 1785924, 1906959, 1986643, 2094696,  2155860,  2218112,  2262925

    [4] See Annexure 1 for details.

14. To satisfy the s 44 ground of opposition the Opponent must establish that the Trade Mark is substantially identical, or deceptively similar to, another trade mark/s with an earlier priority date, in the name of a person other than the Applicant, and in respect of similar goods or closely related services.

15. Each of the trade marks relied on by the Opponent are in the name of a person other than the Applicant and have a priority date that is earlier than the Relevant Date of the Trade Mark.

16. It is then customary to consider whether the goods and services covered by the trade marks relied upon by the Opponent are similar or closely related to the Applicant’s Goods.

17. Pursuant to s 14(1) ‘similar goods’ are goods that are the same, or of the same description. The determination of whether goods are similar involves the consideration of a number of factors including the nature, use and trade channels of the goods.[5]

    [5] Jellinek’s Application (1946) 63 RPC 59 (Romer J);Beck, Koller & Company’s Application (1947) 64 RPC 76.

18. Whether goods are closely related to services (or vice versa) involves different considerations. In the Registrar of Trade Marks v Woolworths French J made the following observations:

    The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related”… it is a term of wider import than “similar”…[6]

    [6] [1999] FCA 1020, [37].

19. In comparing the goods and services the Opponent has pointed to me toward authorities suggesting that it is up to an applicant and not the decision maker to establish the basis on which to differentiate to goods and also that where an applicant has not defended its application it would be arbitrary for the decision maker to do so.[7] However, I do not consider it arbitrary, to state which of the following goods claimed by the Applicant in class 32 are not similar or closely related to the goods and services covered by the trade marks relied upon by the Opponent.

    [7] Energy Beverages LLC v M.D Visage Pty Ltd [2016] ATMO 53 (Hearing Officer Brown).

20. Trade marks 1106343 and 1109998 both have broad coverage of beverages in class 32 which are similar to the Applicant’s claims for fruit juices and vegetable juices (beverages). Trade marks 1478334, 1711621, 1769906, 1785924, 1906959, 1912868, 1924998 1986643, 2094696, 2155860, 2218112 and 2262925 cover non-alcoholic beverages in class 32 which are similar to the Applicant’s claims for fruit juices and vegetable juices (beverages) in class 32. Trade mark 1912868 covers beer in class 32 which is the same as the beer claimed by the Applicant, and trade marks 2094696, 2155860 and 2262925 cover non alcoholic beer in class 32 which is similar to the beer claimed by the Applicant in class 32.

21. However, I do not find any of the goods and services covered by trade marks: 1350831 in classes 5, 9, 16, 18 and 25; 1478334 in class 5; 1660447 in classes 29 and 30; 1711621 in class 5; 1924998 in classes 5, 9, 12, 14, 16, 18 and 25;  2024918 in class 33; 2147878 in class 35; 2024921 in class 43; 2024919 in class 35; 2038429 in class 30; and 2251299 in classes 9, 35, 41 and 42, are similar or closely related to the Applicant’s Goods because they are of a different  nature and purpose.  

22. I will now consider whether the Trade Mark is substantially identical or deceptively similar to the Opponent’s trade marks 1106343, 1109998, 1478334, 1711621, 1769906, 1785924, 1906959, 1912868, 1924998, 1986643, 2094696, 2155860, 2218112 and 2262925.  

23. The Opponent does not submit that the respective trade marks are substantially identical however for completeness the test for substantial identity requires that the trade marks are considered side by side while having regard to the essential features of the trade marks.[8] Where a total impression of resemblance emerges from the comparison, the trade marks will be considered substantially identical. For the purposes of comparison, I will only consider the Opponent’s trade mark 1106343 which is for the Opponent’s figurative letter M solus (‘M Icon’) and trade mark 1769906 which is for the plain letter M and the plain word MUTANT. It is not necessary for me to compare the Trade Mark to the remainder of the Opponent’s trade marks that consist of the M Icon solus or the M Icon with additional elements because were I find that the Trade Mark is not similar to 1106343, I would reach the same conclusion with the Opponent’s trade marks with additional elements.  I have reproduced the respective trade marks below:

    [8] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, 414 (Windeyer J) (‘Shell’).  

Opponent’s trade marks	Trade Mark
M MUTANT

1. On a side by side I find that the Opponent’s trade marks 1106343 and 1769906 are not substantially identical with the Trade Mark. The Trade Mark contains the letter M in bold (with slanted sides), atop the letter M (with slanted sides) and the word STAND. In comparison the Opponent’s trade mark 1106343 is for a highly stylised claw strike in the form of the letter M and trade mark 1769906 is for the letter M and the word MUTANT. For these reasons the total impression emerging from a side by side comparison is not one of similarity.

2. I have found that the respective trade marks are not substantially identical. The remaining question is whether the Trade Mark is deceptively similar to the Opponent’s trade marks.  

3. The expression ‘deceptively similar’ is defined by s 10:

   10 Definition of deceptively similar

   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.

4. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   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 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 [trade mark].[9]

   [9] Ibid [13].

5. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[10] conveniently stated the relevant principles, which was summarised in The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd[11] as follows:

   [10] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

   [11] [2023] FCA 482, [55] (Jackman J).

   (a)the resemblance between the two marks must be the cause of the likely deception or confusion;[12]

   [12] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ).

   (b)in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[13]

   [13] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

   (c)the marks should not be compared side by side;[14]

   (d)the effect of spoken description must be considered; if a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods (or services), then similarities both of sound and of meaning may play an important part;[15]

   (e)the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[16]

   (f)the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[17]

   (g)the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[18]

   (h)“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers; [19]

   (i)the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[20]

   (j)it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[21]

   (k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[22] and

   (l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[23]

   [14] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).

   [15] Ibid.

   [16] Ibid.

   [17] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ).

   [18] Shell (n 8), 415.

   [19] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).

   [20] Campomar Sociedad Limited v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

   [21] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] (‘Woolworths’) (French J) restating principles from Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-595 (Kitto J).

   [22] Australian Woollen Mills Ltd (n 14).

   [23] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) citing Australian Woollen Mills (n 14), 657.

6. Furthermore the Court noted the following[24]:

   In considering the likelihood of confusion or deception, "the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit"[25]. In addition to the degree of similarity between the marks, the assessment takes account of the effect of that similarity considered in relation to the alleged infringer's actual use of the mark[26], as well as the circumstances of the goods, the character of the likely customers, and the market covered by the monopoly attached to the registered trade mark[27]. Consideration of the context of those surrounding circumstances does not "open the door" for examination of the actual use of the registered mark, or, as will be explained, any consideration of the reputation associated with the mark.[28]

   [24] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [33] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

   [25] New South Wales Dairy Corporation v Murray-Goulburn Co‑operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549 at 589 (emphasis added), approved in Henschke (2000) 52 IPR 42 at 62 [44], Hashtag Burgers [2020] FCAFC 235; (2020) 385 ALR 514 at 532 [64], Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] FCAFC 8; (2021) 157 IPR 230 at 238 [27], PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 285 FCR 598 at 622 [97] (see also 626 [111]) and Swancom (2022) 168 IPR 42 at 56 [73].

   [26] Act, s 68.

   [27] New South Wales Dairy [1989] FCA 124; (1989) 86 ALR 549 at 589.

   [28] Swancom (2022) 168 IPR 42 at 59 [89]. See also Henschke (2000) 52 IPR 42 at 62 [44].

7. As stated above, for the purposes of considering deceptive similarity, the reputation of the Opponent’s trade marks is not a relevant factor.[29]

   [29] See Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [93] (Yates, Abraham and Rofe JJ) and, albeit in the s120(1) context Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [49] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

8. The Opponent argues that it is well-established that where two trade marks share a common arrangement which conveys the same essential idea and are used in respect of the same or similar goods, consumers are likely to conclude that they designate goods that come from the same source. That is particularly so where the consumer does not have an opportunity to compare the marks side-by-side.

9. The Opponent submits that an essential feature of its M Icon is its bold, yet enigmatic design from which a ‘M’ character emerges. The feature that “strikes the eye and fixes itself in the recollection” of a consumer seeing the trade mark is not just an embodiment of an ‘M’ it is also the striking, yet covert and allusive way in which its design interacts with that character. The Trade Mark has a very similar cognitive and conceptual effect and, like the M Icon, it is that effect which fixes itself in the recollection.

1. The Opponent states that even if the relatively plain and inconspicuous accompanying words “M Stand” in the Trade Mark are taken into account, they do not detract from this conceptual similarity. Further, even if those words are noticed by the notional consumer when used on Applicant’s Goods, it is likely that they would be perceived as another variant in the Opponent's product range, given that the M Icon has also been used in combination with, or within proximity to, a wide range of other word elements, such as RESERVE (trade mark 2218112). Moreover, trade mark 1769906 for M MUTANT is comprised of a similar configuration.

2. Taking into account the first impression upon the mind of the notional consumer who encounters the Trade Mark being used in relation to fast moving, often self-served products within the description of the Applicant’s Goods, with an imperfect recollection of the Opponent’s Trade Marks and their notional use in respect of the same or similar goods, there is a “real tangible danger” of that consumer at least being caused to wonder or entertain a reasonable doubt as to whether it might be the case that the Trade Mark is a variant, sub-brand or brand extension of, or related to, the M Icon, even if they consider that the trade marks are not the same.

3. In my view, while the Opponent’s trade marks 1106343, 1109998, 1478334, 1711621, 1785924, 1906959, 1912868, 1924998, 1986643, 2094696, 2155860, 2218112 and 2262925 and the Trade Mark all consist of the letter M, the trade marks are visually dissimilar. The Opponent’s trade marks feature the highly distinctive claw strike forming the letter M device, while the essential feature of the Trade Mark is the bold letter M with slanting sides in a plain font. The conceptual similarity does exist, in that they all refer to the letter M, however the Opponent’s trade marks also have a conceptual meaning which evokes a downward strike by a monster or wild animal, and reinforces the focus of attention on it. The overall idea of the letter M in the Opponent’s trade marks is as a claw mark, which does not exist in the Trade Mark. In addition, the Trade Mark also consists of a second letter M and the word STAND at the bottom of the Trade Mark which would lead consumers to consider a small store or booth where an M product is purchased. Aurally the trade marks are similar however, I consider the market for beverage goods is broad, and the goods are often purchased from a fridge or on the shelf at a retailer, thus making aural identity less relevant than the visual similarity. As such when the trade marks are considered as wholes, I find that the differences in the trade marks are such that consumers would not be caused to wonder whether the goods come from a single trade source.

4. For completeness the Opponent trade marks 1109998, 1478334, 1711621, 1785924, 1906959, 1986643, 2094696, 2155860, 2218112 and 2262925 all contain additional word elements to the M Icon device. The Opponent submits that consumers would see the additional word element in the Trade Mark as another variant in the Opponent's product range as it is common practice among traders to adopt a trade mark and then modify it in some way when offering new and related goods. The public is familiar with this practice and know that while the trade marks are not identical, they do denote related products offered by the same trader. In this case the M Icon device is the common and distinctive element in these trade mark representations. Although the additional words are different, consumers are more likely to refer to them by the dominant M Icon.

5. In relation to the Opponent trade mark 1769906, it consists of the plain letter M beside the plain word MUTANT and the Trade Mark consists of the bold letter M with slanting sides atop of the letter M with slanting sides beside the word STAND. I consider the respective trade marks are visually and aurally dissimilar. The addition of the letter M atop the words M STAND in the Trade Mark creates an overall conceptual meaning that is sufficiently different to the words M MUTANT. The likely impression of the letter and word combination M MUTANT in relation to the goods would be of a beverage resulting from an instance of mutation, which is different to the notion of a small store or stand being the impression emerging from the Trade Mark. As noted above, consumers are offered these goods in a fridge or on the shelf of a retailer and in purchasing these goods the visual differences are such that it is more probable than not that consumers of these goods would not be confused by the respective trade marks. In assessing the trade marks in their entirety, and the likely impression on the mind of the relevant consumer, I do not consider that the Trade Mark is deceptively similar to the Opponent’s trade mark 1769906.

6. Therefore the Opponent has not established the ground of opposition under s 44.

   Section 60

7. Section 60 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. In the SGP the Opponent particularises the s 60 ground of opposition as follows:

   The Opponent's M Icon trade marks are well known in Australia, the United States and internationally in approximately 140 countries or territories for non-alcoholic beverages including but not limited to energy drinks, nutritional supplements and related goods, apparel and a range of accessories. The Opponent also produces and licenses a range of products bearing the M Icon trade marks. The Opponent also has a very well-known reputation in relation to sponsoring high profile sporting events (including motorsports and other sports such as surfing, BMX and motocross), gaming and music events and teams and/or individuals participating in those events.

   The Opponent has sold well over 42 billion cans of MONSTER energy drinks worldwide and sells over 6 billion cans per year. Each of those cans prominently features the M Icon. Sales of the Opponent's MONSTER energy drinks, featuring the M Icon, have generated more than US$92 billion in total retail revenues worldwide, with estimated retail sales of about US$13 billion per year. The Opponent's M Icon also features extensively in sponsorship and/or affiliation with major sporting events. Since 2002, Monster has spent over US$9.8 billion in advertising, marketing and promoting its MONSTER energy drinks, which include the M Icon, throughout the world.

   The M Icon trade marks (including those relied on in the section 44 ground) are well known in Australia in relation to beverages, including energy drinks and apparel and related goods, as well as in relation to sponsoring major sporting, music and gaming events and athletes or teams participating in those events. Based on this extensive reputation and use since before the priority date of the Opposed Mark, consumers are likely to be deceived or confused as to the origin of the Applicants goods in class 32 believing that they originate from the Opponent or are somehow associated or affiliated with the Opponent, when that is not the case.

   The likelihood of consumers being deceived or confused is increased because the M Icon trade marks and the Opposed Mark consist of the letter "M" and the Opponent's and the Applicant's goods in class 32 are identical or largely identical and therefore the Opponent and the Applicant will very likely have the same, or largely the same, target market. In addition, the Opponent combines the M Icon with other elements for example, M + MONSTER ENERGY, M + RESERVE and M + HYDRO. The Opposed Mark would likely be perceived by consumers as another variant in the Opponent's range.

9. To satisfy s 60 the Opponent must establish that the trade marks upon which it relies had a reputation in Australia at the priority date of the Trade Mark. The Opponent must then establish that because of that reputation, use of the Trade Mark would be likely to deceive or cause confusion.

10. In McCormick & Co Inc v McCormick, Kenny J asked what is intended by the word ‘reputation’ in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’12F9F[30] and quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

    [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…[31]

    [30] [2000] FCA 1335, [81].

    [31] [1992] FCA 159, [118].

11. Justice Kenny also referred to the Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG, where the Registrar’s delegate observed:

    [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sale or turnover of goods sold under the trade mark and contemplation of the advertising and promotional figures.

    As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum sale, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorship, cross-promotions, ‘contra deals’ and so forth.

    It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sale may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an association of the trade marks with the goods or services themselves.14F11F[32]

    [32] (1999) 47 IPR 423, 436.

12. What constitutes a significant or substantial number of persons in the relevant market must be considered. Justice Heerey in Le Cordon Bleu BV v Cordon Bleu International Ltee provided some guidance:

    What is “significant” or “substantial” will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.F12F[33]

    [33] [2000] FCA 1587, [91], (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1955 (Cth)), (emphasis in original).

13. In Dechary, Mr Dechary states that the Opponent is one of the world’s leading suppliers of energy drinks and has been acknowledged as a leader in the industry receiving recognition and awards from organisations such as Fortune Magazine, Forbes and Cynopisis Sports Media.

14. Mr Dechary states that the Opponent’s M Icon trade mark has been used in Australia since July 2009[34] when it commenced promoting and selling its energy beverages. Mr Dechary declares that the Opponent’s energy drink products, including product types, fruit juices and flavours, low calorie/low carbohydrate, dietary supplement/recovery, coffee, and alcoholic beverages, all feature the M Icon.[35] The Opponent’s goods have been distributed and sold in Australia through approximately 10,000 retail outlets, including Woolworths, Coles and IGA, convenience stores and service stations including 7-Eleven, BP, Caltex and United, in approximately 700 bars and pubs, and in an extensive range of cafes and take away food outlets. The Opponent’s goods are also sold through vending machines at public transport stations and sporting venues.[36]  

    [34] Dechary [25], Exhibit PJD-8.  

    [35] Thiele [21] to [22], Exhibit SPT-5.

    [36] Godfrey [13], Exhibits EKG-13 to EKG-21 and [14] Exhibit EKG-22; Maartensz [59], Exhibit EEM-1.  

15. Mr Dechary provides the gross sales in Australia of its beverages to its distributors from 2009 through to 2021 and its expenditure on advertising, marketing, and promotional activities in Australia since July 2009 to 2021.[37]

    [37] Thiele [28], [36], [44], [50] and [56].

16. Mr Dechary provides online marketing metrics of the Opponent’s website which allows visitors to select a localised version for Australia and informs users of promotional events. Mr Dechary declares that the M Icon receives broad exposure on the Opponent’s social media platforms, Facebook, X formerly Twitter, Instagram and TikTok, as well as through its YouTube channel.[38]

    [38] Pontrelli, Exhibits SAP-19 to SAP-20. Thiele [67] to [68], Exhibits SPT-28 to SPT-29.

17. Mr Dechary attests that the Opponent’s M Icon receives sustained and extensive exposure on television, in magazines, at live events, and through the sponsorship of athletes, sporting competitions, music festivals, musicians, celebrities, video game and E-Sports. Examples of its sponsorship deals include Formula One, MotoGP, Super X, E-Raid, Ultimate Fighting Championship, Monster Energy Pipeline Pro, Nitro Circus, Australian Football League players, Tiger Woods, Monster Army and the Soundwave Festival.[39]

    [39] Roberts, Exhibits DJR-1 to DJR-41. Thiele [56] to [66], Exhibit SPT-25 to SPT-27; Hunter [24], Exhibit AH-11 to AH-12; Hunter, Exhibits AH-18 to Ah-19d.

18. In my assessment of the evidence in Dechary, and the evidence of use of the M Icon trade mark in Godfrey, Maartensz, Pontrelli, Roberts, Hunter and Thiele, I find the M Icon trade mark is distinctive both in fact and law of the Opponent’s beverages and is widely recognised by ordinary Australians. However, it is not sufficient that the Opponent merely establishes that its M Icon trade mark has a significant reputation. The Registrar must also be satisfied that because of that reputation, the use of the Trade Mark would be likely to device or cause confusion.

19. While it is not necessary to show that the trade marks are deceptively similar for the purposes of an opposition under s 60, as stated in Qantas Airways Limited v Edwards, ‘the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark’.[40] The evidence before me is that the ordinary consumer is well instructed by the Opponent’s direct and indirect communications to view the M Icon as a claw strike. I consider the differences between the Trade Mark and the M Icon are too notable for the Opponent to establish a likelihood of deception or confusion irrespective of the reputation acquired by the M Icon. Consumers who encounter beverages bearing the Trade Mark would not likely be confused or deceived as to the origin of those goods due to the M Icon.

    [40] [2016] FCA 729, [142] (Yates J).

20. The Opponent has not established its ground of opposition under s 60.

    Section 42(b)

21. Section 42(b) provides:

    42 Trade Mark scandalous or its use contrary to law

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

    [ …]

    (b)  its use would be contrary to law.

22. In the SGP the Opponent particularises the s 42(b) ground of opposition as follows:

    Based on the Opponent's reputation in the M Icon in Australia, consumers are likely to be misled or deceived into believing that the goods offered and sold under the Opposed Mark in classes 32 are those of the Opponent or somehow associated or affiliated with the Opponent in breach of section 18 of the Australian Consumer Law 2010 (Cth). Selling and offering for sale the goods specified in the Opposed Mark in class 32 also suggests that the trade mark Applicant and its goods are associated or affiliated with the Opponent or that the Applicant has obtained the Opponent's sponsorship or approval to use the Opposed Mark, when that is not the case. This conduct is in breach of section 29 of the Australian Consumer Law 2010 (Cth).

    The likelihood of consumers being misled or deceived is increased because the M Icon trade marks and the Opposed Mark consist of the letter "M" and the Opponent's and the Applicant's goods in class 32 are identical or largely identical and therefore the Opponent and the Applicant will very likely have the same, or largely the same, target market. In addition, the Opponent combines the M Icon with other elements for example, M + MONSTER ENERGY, M + RESERVE and M + HYDRO. Consumers will likely perceive the products sold or offered under the Opposed Mark as a variant in the Opponent's range.

23. As with all the grounds of opposition, the onus of proof rests with the Opponent and in that regard the case law on s 42(b) requires the Opponent to show that use of the Trade Mark would be, rather than could or might be contrary to law.[41]

    [41] Advantage Rent a Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

24. Section 18 of the Australian Consumer Law[42] (‘ACL’) is concerned with misleading or deceptive conduct, while s 29 of the ACL is concerned with false and misleading representations. Case law has made it plain that s 18 of the ACL imposes a more stringent test than that for deception or confusion under s 60.[43] I have found that the Opponent has failed to establish a ground of opposition under s 60. Consequently, I find that the Opponent has also failed to establish that use of the Trade Mark would be contrary to s 18 of the ACL.

    [42] Competition and Consumer Act 2010 (Cth), sch 2.

    [43] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198. This case was decided under the superseded s 52 Trade Practices Act 1974 (Cth) (‘TPA’) the equivalent provision to the current s 18 of the ACL.

25. In relation to s 29 of the ACL it has been held that where a trade mark does not offend s 18 of the ACL, neither will it offend s 29 of the ACL[44] and nor will it constitutepassing off.[45]

    [44] In Pacific Publications Pty Ltd v IPC Media Pty Ltd [2003] FCA 104, Beaumont J considered – in connection with the superseded TPA that ‘the Court’s conclusion on section 52 would necessarily carry with it a conclusion on section 53 (c) and (d).’ Sections 53(c)-(d) of the TPA are the equivalent provisions to ss 29(1)(g)-(h) of the ACL.

    [45] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506, [40] (Hill J).

26. The Opponent has not established the ground of opposition under s 42(b).

    Decision

27. Section 55 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.

28. The Opponent has not established any grounds of opposition. Therefore, trade mark application number 2311818 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal, I direct that the disposition of the Application should be in accordance with the Court’s order or direction.

    Costs

29. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Opponent under s 221 in line with Schedule 8 of the Regulations.

    Louise Tuohy

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    25 February 2025

    Annexure A