Monster Energy Company v YG Entertainment Inc

[2022] ATMO 125

TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Monster Energy Company to extension of protection to International Registrations 1518394 BABYMONSTERS (Australian trade mark application 2073624) and 1537499 BABYMONSTER (Australian trade mark application 2098582) (both in classes 9, 25, 28 & 41) - in the name of YG Entertainment Inc

Delegate:	Tracey Berger
Representation:	Opponent: Stephen Rebikoff of Counsel instructed by Elizabeth Godfrey of Davies Collison Cave Holder: Not represented
Decision:	2022 ATMO 125 Trade Marks Regulations 1995 (Cth) – opposition under reg 17A.33 – grounds of opposition considered under ss 42(b), 44 and 60 of the Trade Marks Act 1995 (Cth) – ss 44 partially established - extension of protection allowed for restricted goods and services

Background

1. This is a decision on the opposition by Monster Energy Company (‘Opponent’) to the extension of protection of International Registrations 1518394 and 1537499 (‘IRDAs’) in the name of YG Entertainment Inc (‘Holder’) for:

International Registration (‘IR’)	Australian trade mark number	Trade Mark (‘Holder’s Marks’)	Priority Date
1518394	2073624	BABYMONSTERS	12/12/2019
1537499	2098582	BABYMONSTER	3/3/2020

1. The IRDAs cover goods and services in classes 9, 25, 28 and 41 which can broadly be described as follows:[1]

   [1] The full specifications are set out in Annexure A to this decision.

   Class 9:  Recorded and downloadable multimedia, video, music and image files and recordings; USB cables; blank USB flash drives; electronic publications, downloadable; sunglasses; protective cases for smart phones; phonograph records; ear phones; decorative magnets; rechargeable batteries; computer software.

   Class 25:  Clothing, footwear, headgear.

   Class 28:  Toys, puzzles, novelty items

   Class 41:  Entertainment services; dance instruction; modelling for artists; providing audio or video studio services; rental of sound recordings and video recordings; production of audio recordings and music; publication of printed matter; providing online music and videos; songwriting; theme park services.

   
   (Holder’s Goods and Services”)        

2. As required by the Trade Marks Act 1995 (Cth)[2], the IRDAs were examined, accepted for possible registration and advertised for opposition purposes.  IR 1518394 was advertised on 8 July 2020.  The Opponent filed a Notice of Intention to Oppose on 4 August 2020 and a Statement of Grounds and Particulars (‘SGP’) on 20 August 2020[3].  On 9 November 2020, the Holder filed a Notice of Intention to Defend.

   [2] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’). Each reference to a regulation in these reasons is a reference to a section of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

   [3] This SGP was amended in May 2022 to include reference to 3 additional marks in the name of the opponent in relation to the s 44 ground.

3. IR 1537499 was advertised as accepted on 7 October 2020.  The Opponent filed a Notice of Intention to Oppose on 7 December 2020 and a Statement of Grounds and Particulars on 16 December 2020.  The Holder filed a Notice of Intention to Defend on 27 April 2021.

4. The parties then filed their evidence in accordance with the timetable set out in reg 17A.34J ending with the Opponent’s evidence in reply to the opposition to IR 1518394 on 12 July 2021 and on 7 December 2021 in the opposition to IR 1537499.

5. Following the conclusion of the evidence stages, the parties were given the opportunity to request a hearing.  The Opponent requested an oral hearing and the Holder did not exercise its right to be heard.  This matter was allocated to me to determine in my capacity as a delegate of the Registrar of Trade Marks and I heard this matter via video conference on 20 June 2022.  The Opponent filed a written summary of its submissions on 6 June 2022 and at the hearing, Mr Stephen Rebikoff of Counsel, instructed by Elizabeth Godfrey, Principal of the Opponent’s Attorneys, made oral submissions (collectively the ‘Submissions’).  I have formed my decision based on the particulars in the SGP, evidence filed and Submissions.

   Grounds and onus

6. The SGP claims grounds of opposition exist under ss 42(b), 44, 60 and 62A but the Opponent has not pressed the ground under s 62A.

7. The Opponent bears the onus of establishing one or more grounds of opposition[4] on the balance of probabilities.[5]  The rights of the parties are assessed at the relevant priority dates being 12 December 2019 for IR 1518394 and 3 March 2020 for IR 1537499.

   Evidence

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

   [5] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [133] (Besanko, Jagot and Edelman JJ).

   Opponent’s Evidence

8. The Opponent relies on the evidence summarised below[6] (‘EIS’):

   [6] Each of the declarations was filed as either a primary declaration forming part of the evidence in support or evidence in reply or as an annexure to a primary declaration.

Declarant	Position	Date Made	Exhibits
Paul Dechary (‘Dechary Declaration’)	Senior Vice President & Deputy General Counsel of the Opponent	8 February 2021	PJD1 to PJD-75
Elizabeth Kate Godfrey (‘First EKG Declaration’)	Principal of the Opponent’s representative	9 February 2021	EKG-1 to EKG-12
Elizabeth Kate Godfrey (‘Second EKG Declaration’)	Principal of the Opponent’s representative	12 July 2021	EKG-13 to EKG-15
10.     Elizabeth Kate Godfrey (‘Third EKG Declaration’)	Principal of the Opponent’s representative	30 July 2021	EKG-1  to EKG-2
11.     Elizabeth Kate Godfrey (‘Fourth EKG Declaration’)	Principal of the Opponent’s representative	19 November 2021	EKG-3 to EKG-5
12.     Emily Elizabeth Maartensz 13.     (‘EEM Declaration’)	Solicitor of the Opponent’s representative	12 July 2021	EEM-1
14.     Rebecca Lee Dunbar 15.     (‘Dunbar Declaration’)	Librarian employed by the Opponent’s representative	8 August 2012	RLD-1 to RLD-20
16.     Danielle Jade Roberts 17.     (‘Roberts Declaration’)	Solicitor formerly employed by the Opponent’s representative	9 July 2012	DJR-1 to DJR-47[7]
18.     Adrian Heath Hunter 19.     (‘Hunter Declaration’)	Australasian Manager of the Opponent’s Australian subsidiary	11 October 2012	AH-1 to AH-9
20.     Sam Anthony Pontrelli 21.     (‘Pontrelli Declaration’)	Senior Vice President of Marketing for the Opponent	7 August 2017	SAP-1 to SAP-38
22.     Sam Peter Thiele 23.     (‘Thiele Declaration’)	Country Manager- Oceania of the Opponent’s Australian subsidiary	11 August 2017	SPT-1 to SPT-32

[7] I understand that Exhibit DJR-48 is not relied on in these proceedings.

1. The Opponent’s evidence is voluminous running to thousands of pages.  A very brief summary is provided below.

2. The Opponent is a subsidiary of Monster Beverage Corporation and owns a number of trade marks containing or consisting of MONSTER (‘MONSTER Trade Marks’), in over 150 countries, including registrations for:

   ·MONSTER (‘MONSTER Word Mark’)

   ·MONSTER ENERGY

   · (‘Claw Device’)

   · (Opponent’s Logo Mark’)

3. The Opponent uses the marks MONSTER and MONSTER ENERGY interchangeably.  Both the Opponent, consumers and third parties frequently refer to the Opponent as MONSTER.[8]

   [8] Thiele Declaration, Exhibits SPT-4 and SPT-5; Second EKG Declaration, [18]; Dechary Declaration, Exhibits PJD-39, PJD-61

4. The Opponent has been in the business of manufacturing and selling energy drinks under the MONSTER Trade Marks since 2002 in the USA and internationally since 2003.  The Opponent’s energy drinks are sold in over 140 countries and territories.  By dollar value, the Opponent’s MONSTER energy drinks are the best-selling energy drinks in the USA and the second best-selling energy drink globally.  Worldwide retail sales of the Opponent’s energy drinks are estimated to be in excess of 5 billion cans annually and sales have continued to grow each year since 2002.

5. The Opponent’s energy drinks were first sold in Australia in 2006 by Bickford’s Australia Pty Ltd.  Pursuant to an agreement reached in December 2008, the Opponent acquired all rights in Bickford’s MONSTER trade marks.  In July 2009, the Opponent began directly selling its own energy drinks in Australia under the MONSTER Trade Marks and these goods are now sold in over 4000 outlets across Australia.  Gross sales figures for the Opponent’s beverages in Australia from 2009-2019 have been provided and are very substantial.

6. On 5 August 2008, the Opponent incorporated its Australian subsidiary Monster Energy AU Pty Ltd to market and promote its energy drinks in Australia including by direct advertising and sponsorship arrangements.  The Dechary Declaration provides details of the Opponent’s estimated marketing expenditure for Australia, New Zealand and Tahiti from July 2009 to 31 December 2019 which is very significant.

7. The Opponent has also used its MONSTER Trade Marks for dietary supplements, and other beverages including protein shakes, sports drinks, and energy drinks mixed with juice, coffee or tea.  The MONSTER Trade Marks are often used on these beverages in conjunction with another mark such as MONSTER ASSAULT, MONSTER REHAB, JAVA MONSTER, MONSTER MAXX, MUSCLE MONSTER, MONSTER HYDRO and JUICE MONSTER.

8. The Opponent does not use direct television or radio advertising to promote its goods but instead directs the majority of its marketing budget, to reach its target market and create the desired brand image, through endorsements and sponsorships in the fields of sports, gaming and music.  The Opponent focuses its marketing on endorsements of athletes and musicians, and sponsoring sports, racing, music, e-sports and other competitions, teams and events including events that are webcast on the Internet.  These endorsements and sponsorships are supported through point of sale materials, sweepstakes and give-a-ways, vehicle branding, signage, providing MONSTER-branded apparel and sports gear, samples and merchandise.  The Opponent also has a group called MONSTER GIRLS who attend sponsored events to promote the Opponent and its image.  The Opponent’s sponsorships and endorsements receive extensive exposure on television, on the Internet including the Opponent’s website at (‘Opponent’s Website’), in magazines, at live events and through its numerous social media accounts. 

9. Some of the sponsored sports events/teams include MotoGP, the Monster Energy Factory Yamaha Racing Team, Mercedes AMG PETRONAS F1 racing team, Yamaha MX1 and MX2 motocross teams, the AMA Supercross Series, UFC, Summer and Winter XGames, MONSTER ENERGY Pipeline Pro surfing events and Billabong XXL Awards for surfers who ride the biggest waves of the year.  Many of these events are held and/or televised in Australia.  Details of the number of attendees, viewers and publicity of these events is included in the evidence. 

10. The Opponent has also sponsored world-renowned individuals in these fields including Michael Schumacher and Lewis Hamilton (Formula One), Valentino Rossi (MotoGP), Rhonda Rousey (UFC), Conor McGregor (MMA) and Tiger Woods (golf), as well as 9 Australian surfers and various Australia V8 Supercar racers, skateboarders, Supercross/Motocross riders, mountain bikers.  In addition, the Opponent maintains an amateur sponsorship and athlete development program called ‘The Monster Army’ which has its own website and social media accounts.[9]

    [9] Dechary Declaration, [175]-[178].

11. In the music industry, the Opponent has sponsored many well-known musicians including Post Malone and 15 Australian artists or bands as well as various music festivals and tours such as the Soundwave Festival Australia.  These artists and bands wear MONSTER branded apparel, consume MONSTER ENERGY drinks on stage, feature the MONSTER Trade Marks on their website and social media accounts, include MONSTER branding on flyers and promotional posters, etc.  The Opponent’s connection with music is also promoted under the mark MONSTER MUSIC on the Opponent’s Website at which features podcasts from different artists, music releases and livestream concerts.[10]

    [10] Third EKG Declaration, [6].

12. Apparel and merchandise branded with the MONSTER Trade Marks has been sold in Australia since early 2005.  The Opponent has three different clothing lines: MONSTER ENERGY, MUSCLE MONSTER and MONSTER ARMY.[11]  Examples of use of the Monster Trade Marks is set out in the Opponent’s evidence including in the EEM, Third EKG, Dechary, Hunter and Dunbar Declarations.  The Opponent has licensed use of the MONSTER Trade Marks for clothing and headwear,[12] protective clothing[13], visors[14] and headwear[15], motorcycles and quad bikes[16], bags, condoms, and point of sale material including signage, sporting goods, aprons, stationery, temporary tattoos, decals, stickers, bags and other merchandise.

    [11] Dechary Declaration, [191]-[200]; Third EKG Declaration, [14].

    [12] Ibid, Tabs 8, 18, 26, 29 and 30 Exhibit EEM-1; Roberts Declaration, DJR-9.

    [13] Ibid, Tab 31 Exhibit EEM-1 Dunbar Declaration, Exhibit RLD-3.

    [14] Ibid, Tab 23 Exhibit EEM-1.

    [15] EEM Declaration, Tabs 5, 19, 22, 23 and 31 Exhibit EEM-1; Dunbar Declaration, Exhibits RLD-3 and RLD-16.

    [16] Ibid, Tabs 33 and 34 Exhibit EEM-1.

13. The EEM Declaration avers to use of the MONSTER Trade Marks in relation to at least 17 different car or motorbike racing electronic games available across different gaming devices including Nintendo, X-Box, Wii, Playstation, mobile phones and personal computers.  The earliest of these games appears to have been available since 2010 and all were available before the priority dates of the IRDAs.  In addition, the Opponent has partnered with the developers of other video games such as Call of Duty to cross promote the MONSTER Trade Marks and the game[17] and has licensed use of the MONSTER Trade Marks for video game controllers for Playstation4 and Xbox One. The Opponent also publishes news about gaming in a newsletter called ‘Monster Gaming Weekly’ on the Opponent’s Website.[18]

    [17] Dechary Declaration, [223].

    [18] Third EKG Declaration, [8].

    Holder’s Evidence

14. The Holder’s evidence in answer (‘EIA’) consists of a declaration of Kellie Jukkola, attorney for the Holder, made on 11 May 2021 with Exhibits KJ-1 to KJ-6.  Ms Jukkola attests that the information contained in her declaration was provided to her by the Holder or comes from her own research and enquiries.

15. The Holder operates as a record label, talent agency, music production company, music publishing house and also manages actors.  It is known as one of the ‘Big Three’ K-pop[19] companies in terms of annual sales, revenue and reputation and is publicly listed on the Korean Stock Exchange.

    [19] Korean popular music.

16. The Holder intends to use the trade mark BABYMONSTERS in relation to a new female K-pop group (‘Group’).  The Holder annexes a selection of social media extracts from K-pop fans’ unofficial pages created to discuss the Group.

17. The balance of the EIA are submissions on the grounds of opposition and Opponent’s evidence.  The Holder concedes that the Opponent has a reputation in the Opponent’s Logo Mark in Australia for carbonated energy drinks but disputes that the Opponent has a reputation in the word mark MONSTER for energy drinks or any other goods or services including the Holder’s Goods and Services.  The Holder claims that the EIS shows use of the Claw Device, the Opponent’s Logo Mark or MONSTER ENERGY but not MONSTER.

18. The EIA includes a copy of the 2020 Annual Report for Monster Beverage Corporation which refers to the Opponent’s product offering being limited to energy drinks, discusses market competition as being local and international beverage producers, covers sales and marketing efforts to promote the Opponent’s energy drinks and discusses the Opponent’s customers as being full services beverage bottlers/distributors, retail grocery, drug and specialty chains, wholesalers, club stores, mass merchandisers, convenience chains, food service customers, value stores, ecommerce retailers and the military.

    Discussion

    Section 44

19. To successfully oppose the application pursuant to s 44, the Opponent must establish that a registered or pending trade mark held by a person other than the Holder:

    ·     has a priority date which is earlier than that of the Holder’s Marks (‘the first requirement’);

    ·     is in respect of goods and/or services which are similar or closely related to the Holder’s Goods and Services (‘the second requirement’); and

    ·     is substantially identical with or deceptively similar to the Holder’s Marks (‘the third requirement’).

20. In support of the s 44 ground, the Opponent relies on a suite of its registered or applied for trade marks containing or consisting of MONSTER.  The following applications and registrations for MONSTER were emphasised at the hearing and in the Submissions:

Trade Mark Number	Priority Date	Class	Relevant Goods/Services
1237259	28 April 2008	16 and 18	Printed matter, publications Bags, backpacks, wallets and cases
1360527	28 April 2008	9 and 25	Protective eyewear Clothing, footwear, headgear
2024851	23 July 2019	9	Computer game software, DVDS and other digital storage or recorded media, hardware, software, mobile phone cases and eyewear
2024856	23 July 2019	28	games and playthings; toys; models; toy helmets; gymnastic and sporting articles; decorations for Christmas trees
2024861	23 July 2019	35	Promoting goods and services of others in sports, motorsports, electronic sports and music industries through the distribution of printed, audio and visual promotional materials
2024862	23 July 2019	41	Entertainment services, providing entertainment information, news, videos, opinions, commentary and images via a website, video productions services and production of videos featuring music

(‘Opponent’s Marks’)

First Requirement

1. The Opponent’s Marks satisfy the first requirement in that each has an earlier priority date than the Holder’s Marks.

   Second Requirement

2. In terms of the similarity of the goods and services, s 14 defines “similar goods” and “similar services” as those that are the same as, or of the same description as other goods or services respectively.

3. The test for determining whether goods or services are similar is a practical judgement formed by looking at a number of factors falling within the categories of the nature of the goods, their respective uses, and the trade channels through which they are sold, with no single factor being determinative.[20]

   [20] Re Jellinek’s Application (1946) 63 RPC 59, 70 (Romer J).

4. For the class 9 goods claimed in the application, most of the Holder’s claimed goods in class 9 fall within the specifications of goods of the Opponent’s registration 1306527 in class 9 and application number 2024851.  I consider the Holder’s “electronic publications, downloadable” to be similar to the publications of the Opponent’s registration number 1237259 as it is common for publications to be available to consumers in both hard copy and electronic form.  In my view, all of the Holder’s class 9 goods are the same or similar to those of the Opponent except ‘decorative magnets’.

5. The Holder’s claimed goods in classes 25 and 28 are encompassed respectively by those of the Opponent’s registration number 1360527 in classes 9 and 25 and application number 2024856 in class 28.

6. Turning to the class 41 services, many of the services claimed by the Holder in this class fall within the broad claim of “entertainment services” in the Opponent’s application number 2024862.  I consider the majority of the Holder’s other class 41 services “rental of sound recordings and video recordings; production of audio recordings; production of music; publication of printed matter; providing online videos, not downloadable; providing online music, not downloadable; providing audio or video studio services; providing audio or video studio services” are closely related to the various downloadable recordings of the Opponent’s application 2024851, publications of registration number 1237259 or “video production services; production of videos featuring music” of application number 2024862.  However, I do not regard “modelling for artists; songwriting” to be services that are closely related to the goods or similar to the services of the Opponent’s prior registrations or applications.

1. Accordingly other than “decorative magnets” in class 9 and “modelling for artists; songwriting” in class 41, I am of the view that the Holder’s Goods and Services are the same, similar or closely related to those of the Opponent’s Marks.

   Third Requirement

2. To satisfy the third requirement, the Opponent’s Marks must be substantially identical with or deceptively similar to the Holder’s Marks.  The Opponent does not argue that its marks are substantially identical to the Holder’s Marks and I note that on a side by side comparison, there are obvious differences due to the additional element BABY in the Holder’s Marks such that there is not a total impression of resemblance.[21]

   [21] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414.

3. The test for deceptive similarity is broader and as Windeyer J observed in Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited:

   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 [mark].[22]

   [22] Ibid.

4. The impression created by the marks BABYMONSTERS and BABYMONSTER is the same.  As Gummow J noted in Carnival Cruise Lines Inc v Sitmar Cruises Limited[23], there is no material distinction between marks presented as one word or two, between the addition of the definitive article or the use of the plural.  The singular form of a mark (or part of a mark) as compared to the plural is “a weak form of distinction”.[24]

   [23] [1994] FCA 68, [63].

   [24] Kimberley-Clark Worldwide Inc v Goulimis [2008] FCA 1415, [42].

5. The essential and only element of the Opponent’s Marks is MONSTER which, the Opponent argues in its Submissions, is a “striking and unusual word with no descriptive significance in the context of the overwhelming majority of the goods and services” for which protection is sought for the Holder’s Marks.  The only additional element of the Holder’s Marks is the descriptive and non-distinctive word BABY.   Less weight is placed on any descriptive or non-distinctive element when comparing marks.[25] The inclusion of the word BABY in the Holder’s Marks is suggestive of a subcategory of, or qualifies, the distinctive term MONSTER.  That is, the Holder’s Marks indicate an infant monster(s) or a small version of a monster(s).   

   [25] Conde Nast Publications Pty Ltd v Virginia Taylor [1998] FCA  864 (Burchett J).

6. A likelihood of deception or confusion can arise where two marks appear to be related because the distinctive feature of one mark is contained in another.[26]  This sort of contextual confusion has been said to result from the well-known practice of traders “adopting a certain word as a trade mark and constructing other trade marks for distinguishing characteristics of their goods by using such word as a basis and adding thereto prefixes of a qualifying nature”.[27]  The Opponent points to a number of cases where two marks were found to be deceptively similar where one mark was wholly contained in the other and the second element suggested that the marks were related such as JEST and EASY JEST[28], POLO and CLUB POLO[29], HUGGIES and HUGGIE MUMMY[30], amongst others. 

   [26] Re Kodak (Australasia) Pty Ltd’s Application (1936) 6 AOJP 1724. 

   [27] Ibid.

   [28] John Fitton & Company Limited’s Application (1949) 66 RPC 110.

   [29] Polo Textile Industries Pty Ltd v Domestic Textile Corp Pty Ltd (1993) 42 FCR 227.

   [30] Kimberley-Clark Worldwide Inc v Goulimis (n11).

7. The Opponent contends that contextual confusion is particularly likely in the case of clothing and merchandise as it is common practice for traders to designate different ranges of goods by using terms such as MAN, WOMAN, KIDS and BABY.    Hence the Opponent argues that the Holder’s Marks “suggest a range of clothing and merchandise designed for, or targeted at, young people”. Further, the Opponent adds, the present case is indistinguishable from the cases which found the following marks to be deceptively similar: SPORTSGIRL and SPORTSBOY[31], OMEGA and OMEGAKIDS & Device[32] and MONSTER to both MONSTER MAN and MONSTER FRIENDZ[33]. 

   [31] [2007] ATMO 71 (Hearing Officer I. Thompson).

   [32] Omega SA v Robinson [2011] ATMO 58 (Hearing Officer C. Murray).

   [33] Monster Energy Company v Home Focus Development Limited [2021] ATMO 20 (Hearing Officer A. Richards)

8. There are numerous cases where a common element was not found to be sufficient to support a finding of deceptive similarity.  However, it seems to me that a consumer who is familiar with the Opponent’s earlier mark MONSTER would be caused to wonder whether it might not be the case that goods and services such as apparel, software, toys, electronic publications, entertainment services and concerts provided under the Holder’s Marks come from or are authorized by the Opponent as its goods specifically directed to babies or young children.

9. This is less likely in the case of some of the Holder’s other goods in class 9 such as USB cables, blank USB flash drives, rechargeable batteries.   Nevertheless, in the case of these goods, I believe that there is still a likelihood of confusion or deception as purchasers may consider these products to be ‘baby’ or small-sized MONSTER goods.  In this regard, the Opponent has a history of adopting different MONSTER formative marks to indicate different sized products such as MONSTER MAXX and MEGA MONSTER.

10. In my opinion, the Holder’s Marks are deceptively similar to the Opponent’s Marks and the Holder has not submitted any evidence of use or other circumstances for consideration under s 44(3) or s 44(4). 

11. The Opponent argues in its submissions that it is for the Holder to demonstrate that its goods and services are not similar to, or closely related to those of the Opponent and that in the event I find that the s 44 ground is established for some goods and/or services, I should reject the IRDAs in its entirety.  In support of this proposition, the Opponent refers to the decisions in Monster Energy Company v Home Focus Development Limited[34] ('Home Focus’) and Apple Inc v Registrar of Trade Marks (‘Apple’).[35]  I consider both of these decisions to be distinguishable from the present case.  In Home Focus, the Holder never entered an address for service in Australia and took no part in the opposition proceedings.  The Apple decision concerned an appeal from the Registrar rejecting the application under s 41 and did not involve an opposition by a third party.  Although Justice Yates noted in the Apple decision that a finding that the mark APPSTORE lacked any inherent distinctiveness for the designated services in class 35 determined the fate of the application as a whole[36], he was persuaded that the designated services in classes 38 and 42 included services for which the mark was descriptive.[37]

    [34] Ibid, [16].

    [35] [2014] FCA 1304, [232] (Yates J).

    [36] Ibid, [232].

    [37] Ibid, [232]-[239].

12. Hence, the s 44 ground of opposition is established in relation to all of the Holder’s Goods and Services except “decorative magnets; modelling for artists; songwriting”.

    Section 60

13. 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.

    Note:          For priority date see section 12.

14. To establish this ground, the Opponent must establish a reputation in a trade mark existing in Australia at the Relevant Date. If reputation is established, the Opponent must then prove that because of the reputation in the mark relied on by the Opponent, use of the Holder’s Marks is likely to deceive or cause confusion.

15. The reputation in the other trade mark must be amongst a ‘significant’ or ‘substantial’ number of Australian consumers[38] but this is tempered by the nature of the relevant market. The reputation must also be established as a matter of fact by the Opponent.[39]

    [38]  See Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170; ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [118].

    [39]  ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [77].

16. The reputation of a trade mark may be demonstrated in a variety of ways.  For example, it may be established by demonstrating a significant number of people are exposed to a trade mark,[40] or inferred from a high volume of sales,[41] advertising expenditure or other promotion.[42]

    [40] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).

    [41] McCormick & Co Inc v McCormick [2000] FCA 1335, [86] (Kenny J).

    [42] Ibid.

17. In Rodney Jane Racing Pty Ltd v Monster Energy Company, O’Bryan J observed that:

    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...[43]

    [43] [2019] FCA 923, [83].

18. In support of this ground, the Opponent relies on its reputation in the MONSTER Trade Marks and particularizes this ground in the SGP as follows:

    Reference is made to the details of the Opponent's reputation set out in the particulars in 1 above. As a result of the Opponent's extensive reputation in Australia (as a result of significant exposure of the MONSTER trade marks in Australia since as early as 2004) and internationally in the MONSTER trade marks, consumers are likely to be deceived or confused into believing that the goods offered and provided under the “BABYMONSTERS” trade mark are the Opponent's goods and services, somehow associated or affiliated with the Opponent or endorsed by or sponsored by the Opponent, when that is not the case. The likelihood of deception or confusion occurring is increased because the Opponent has continuously used MONSTER alone and in conjunction with an additional word/s.

19. Paragraph 1 of the SGP referred to in the paragraph above is the particulars for the s 42(b) ground and reads:

    The Opponent's MONSTER trade marks are well known in Australia, the United States and internationally in approximately 150 countries or territories for energy drinks, a range of beverages, nutritional supplements and related goods, including clothing, headgear (including protective head gear) and a range of accessories. The Opponent also produces and licenses a range of products bearing the MONSTER trade marks, including motorsport equipment (including wheels) and accessories. The Opponent also has a well-known reputation in relation to sponsoring high profile sporting events, gaming and music events and teams and/or individuals participating in those events.

    The Opponent has sold well over 28 billion cans of MONSTER energy drinks worldwide and sells about 3 billion cans per year. Sales of the Opponent's MONSTER energy drinks bearing the MONSTER trade marks have generated more than US$60 billion in total retail revenues worldwide, with estimated retail sales exceeding US$6 billion per year.

    The Opponent's MONSTER mark has also been substantially and continuously marketed and promoted not only using the word MONSTER alone, but also using the word MONSTER in conjunction with other word or words for example, MONSTER GIRLS, MONSTER ARMY, #MONSTERGAMING, JUICE MONSTER and JAVA MONSTER.

    Based on the Opponent's reputation in Australia in relation to energy drinks, beverages and nutritional supplements, and related goods, including clothing and related accessories and in relation to the sponsorship of sporting, gaming and music events, consumers are likely to be misled or deceived into believing that the goods and services offered and provided under the Opposed Mark 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). Offering to provide and providing the goods specified in classes 9, 25 and 28 and the services specified in classes 41 of the Opposed Mark also suggests that the Trade Mark Holder and/or its goods and services are associated or affiliated with the Opponent or that the Holder 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 risk of consumers being misled or deceived is increased because of the Opponent's history of using MONSTER alone and MONSTER formative marks such that the goods and services sold under the Opposed Mark will be perceived as part of or, a version in, the Opponent's MONSTER range. The word BABY used at the start of the Opposed Mark has descriptive connotations and does not serve to distinguish the Opposed Mark from the MONSTER and MONSTER formative marks. In the Opposed Mark, MONSTER retains its identity and is the most memorable and distinctive element of the Opposed Mark.

20. The Opponent adduced a substantial amount of evidence demonstrating use of the MONSTER Trade Marks in Australia.  The Holder concedes that the Opponent has a reputation in the mark Opponent’s Logo Mark in Australia for carbonated energy drinks but disputes that the Opponent has a reputation in the mark MONSTER (in plain script or the Gothic script used in the Opponent’s Logo Mark) for any goods or services.

21. I disagree with the Holder’s assessment of the evidence.  There are many uses of the mark MONSTER solus although such uses are predominantly MONSTER in gothic script

    (‘Stylised MONSTER Mark’).  Further, I am of the view that the evidence demonstrates the quantitative and qualitive dimensions of reputation discussed in Rodney Jane Racing Pty Ltd v Monster Energy Company.[44]  The Opponent has sold a massive number of beverages globally including in Australia and the extensive marketing and promotional activities indicates that a significant proportion of the Australian public would likely have been exposed to the MONSTER Trade Marks.  It is apparent from the Opponent’s evidence that it does use MONSTER in combination with other (often descriptive) words such as GAMING, MUSIC, NEWS, GIRLS, ARMY etc and that the Opponent is frequently referred to, particularly in media, as MONSTER, but the predominant use of MONSTER is in the Stylised MONSTER Mark and/or in close proximity to the Claw Device.  Moreover, the Opponent appears to use the marks MONSTER ENERGY and the Opponent’s Logo Mark more than the mark MONSTER, although in many instances the word ENERGY is significantly smaller than MONSTER.  I also note that, other than apparel, most use of the MONSTER Trade Marks for merchandise is the marks MONSTER ENERGY, the Opponent’s Logo Mark and/or the Claw Device.  In Monster Energy Company v Mixi Inc (‘Mixi’),[45]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.[46]

    [44] n 38.

    [45] [2020] FCA 1398.

    [46] Ibid, [51].

22. Whilst the relevant priority date in the Mixi decision was more than 5 years earlier than the present IRDAs, I am not satisfied that the Opponent has developed a reputation in Australia in the plain word mark MONSTER.   Nevertheless, I am of the opinion that the Opponent has developed a reputation in the Stylised MONSTER Mark in Australia at the relevant dates, albeit a more limited reputation than it holds in the marks MONSTER ENERGY or the Opponent’s Monster Logo Mark, for beverages, sports, gaming, music and merchandise.  

23. Accepting that the Opponent has a reputation in the MONSTER Stylised Mark, MONSTER ENERGY and Opponent’s Logo Mark, it is necessary under s 60(b) that there be a causal connection between the reputation of the Opponent’s MONSTER Trade Marks and the likelihood that use of the Trade Mark for “decorative magnets; modelling for artists; songwriting” will deceive or cause confusion. 

24. The concept 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 Holder's mark come from some other source and confused to being caused to wonder whether that might not be the case.[47]

    [47] [1979] 19 RPC 410, 423.

25. The test for deception or confusion turns on whether use of the Trade Mark would result in a reasonable number of people being caused to wonder whether the Holder’s Goods and Services derive from the same trade source as another trade mark.[48]  A number of factors are relevant to this determination, including the strength of the reputation of the other trade mark, the similarity between the relevant goods or services, and the degree of similarity between the trade marks.[49]

    [48] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50] (French J).

    [49] Qantas Airways Limited v Edwards [2016] FCA 729, [142] (Yates J).

26. The Opponent submits that the Holder’s Marks are likely to cause confusion because of the Opponent’s history of adding various words to MONSTER to signify different products (eg. JUICE MONSTER or MUSCLE MONSTER) including in its promotional activities (eg. MONSTER GIRLS).  The Opponent contends that this risk of confusion is heightened by the fact that the Holder’s Goods and Services are the type which consumers would consider a natural extension of the Opponent’s brand or the sort with which the Opponent is known to have a connection.  The Opponent argues that its activities under the MONSTER brand are so diverse and its reputation so large that it cannot be said that consumers would not entertain a reasonable doubt.[50]

    [50] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-595 (Kitto J).

27. Whilst the Opponent sponsors musical artists and music festivals and promotes the MONSTER brand more generally in the music field including through the MONSTER MUSIC section of its website, I do not think a significant proportion of Australian consumers with an interest in music would consider songwriting services offered under the Holder’s Marks to be associated with the Opponent.  These services are, in my view, a more specialized area of the musical industry such that there is no real likelihood of deception or confusion.

28. The Holder’s services “modelling for artists’ are different from any goods or services provided by the Opponent and in which it has a reputation.  I think it is improbable that consumers would assume any association between such services offered under the Holder’s Marks and the Opponent.

29. On the other hand, ‘decorative magnets’ are more similar to the merchandise used by the Opponent to promote its goods, being a common promotional marketing item used in a broad range of industries to advertise different goods and services.  However, there are distinctive differences between the marks in which the Opponent has a reputation and the Holder’s Marks.  Moreover, there is no evidence that the Opponent has ever provided magnets as promotional items or otherwise.  The Opponent’s licensed merchandise is predominantly apparel, bags and protective clothing and headwear.  In the circumstances, I do not believe that there is a real tangible danger of confusion between use of the Holder’s Marks for “decorative magnets” and the Opponent.

1. The s 60 ground is not established with respect to “decorative magnets” claimed by the Holder in class 9, nor “modelling for artists; songwriting” in class 41.

   Section 42(b)

2. Section 42(b) provides that an application for registration of a trade mark must be rejected if it its use would be contrary to law.

3. The particulars of this ground relied on by the Opponent are set out in paragraph 68 of this decision.  In summary, the Opponent claims that use of the Holder’s Marks would contravene ss 18 and 29 of the Australian Consumer Law 2010 (Cth)[51] (‘ACL’).

   [51] Schedule 2 Competition and Consumer Act 2010 (Cth)

4. Section 18 of the ACL relevantly provides that “a person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive”.

5. Section 29 of the ACL relevantly provides:

   29  False or misleading representations about goods or services

   (1)  A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:

   …

   (g)  make a false or misleading representation that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits; or

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

   …
   
   

6. The requirement to mislead or deceive the relevant consumer is one of the key differences between ss 18 and 29 of the ACL and s 60. Several cases confirm that more is required to establish a likelihood of misleading or deceptive conduct under the ACL than is the case with trade marks likely to deceive or cause confusion under s 60.[52]  Under the ACL, unlike s 60, there must be a likelihood that consumers be misled or deceived as to the origin of the Holder’s Goods and Services due to the conduct of the Holder.  Where the Holder’s conduct in relation to a trade mark does not contravene s 18 of the ACL, it is also unlikely to breach s 29 of the ACL.[53]  

   [52] For example, Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 209-10 (Mason J).

   [53] 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).

7. Conduct will be misleading or deceptive only if it leads, or is capable of leading, someone into error[54] which must be determined objectively in the context of all the surrounding circumstances.[55] Conduct may be misleading or deceptive regardless of the intention of the alleged wrongdoer[56] but where an intention to deceive is established, a court may more readily infer that the intention has been realised.[57]

   [54] Ibid, 198–199 (Gibbs CJ).

   [55] Taco Co of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177, 199 and 202 (Deane and Fitzgerald JJ).

   [56] Global Sportsman Pty Ltd v Mirror Newspapers Ltd (1984) 2 FCR 82, 88 (Bowen CJ, Lockhart and Fitzgerald JJ).

   [57] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [33] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

8. The Opponent has failed to establish the s 60 ground of opposition in relation to “decorative magnets; modelling for artists; songwriting” and I am satisfied for the same reasons that use of the Holder’s Marks would not be likely to mislead or deceive consumers of these services into believing there is an association between those services of the Holder and the Opponent or the Opponent’s MONSTER Trade Marks.

   Decision

9. Regulation 17A.34N of the Regulations provides:

   17A.34N  Decision on opposition

   (1)  Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a)  to refuse protection in respect of all of the goods or services listed in the IRDA; or

   (b)  to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

   having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.

   (2)  The Registrar must notify the International Bureau of the Registrar’s decision.

1. I find that the Opponent has established a ground of opposition under s 44 in respect of all of the Holder’s Goods and Services listed in the IRDAs except “decorative magnets” and “modelling for artists; songwriting”.  Accordingly, I direct that protection be extended to International Registrations 1518394 (Australian trade mark application 2073624) and 1537499 (Australian trade mark application 2098582) in class 9 for “decorative magnets” and class 41 for “modelling for artists; songwriting”.

2. If the Registrar is served with a notice of appeal, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise the disposition of the application should be in accordance with the Courts order or direction.

3. The parties have both requested an award of costs. As the Opponent has been substantively successful in its oppositions, I award costs against the Applicant in respect of International Registrations 1518394 (Australian trade mark application 2073624) in the amounts listed in Schedule 8 of the Regulations.

4. In respect of International Registration 1537499 (Australian trade mark application 2098582), I award reduced costs against the Applicant in the same manner as Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[58]

   [58] [2001] ATMO 78.

   Tracey Berger
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   28 July 2022

   Annexure A

   IR 1518394 (AU trademark number 2073624):

   Class 9:  CDs; DVDs; USB cables; blank USB flash drives; downloadable multimedia file; downloadable video files; downloadable music files; downloadable image files; electronic publications, downloadable; computer software applications, downloadable; musical video recordings; sunglasses; protective cases for smart phones; phonograph records; compact discs featuring music; pre-recorded DVDs featuring music; ear phones; decorative magnets; rechargeable batteries; computer software.

   Class 25:  Outerclothing; ready-made clothing; underwear; mufflers [neck scarves]; caps being headwear; waterproof clothing; shirts; sweaters; scarves; skirts; sports wear; footwear; socks; clothing; belts [clothing]; gloves [clothing]; tee-shirts; pants; pullovers; bottoms [clothing].

   Class 28:  Toy sticks with LED light features for use in concerts [novelty items]; golf balls; golf bags; toy animals; stuffed toys; stuffed dolls; toys for pets; dolls; dolls' clothes; accessories for dolls; toys; masks [playthings]; teddy bears; toy sticks with glow-in-the-dark features; jigsaw puzzles; plush dolls; play balloons; plastic character toys; toy figures; novelty toys, namely, sticks with luminous features for fans and for entertainment [novelty items].

   Class 41:  Entertainment services in the form of performances by singers; night club entertainment services; dance instruction; presentation of live performances; modelling for artists; fan club services in the nature of entertainment; entertainment services; entertainer services; entertainment information; conducting of entertainment events; providing audio or video studio services; rental of sound recordings and video recordings; production of audio recordings; production of music; publication of printed matter; providing online videos, not downloadable; providing online music, not downloadable; songwriting; arranging and conducting of concerts; theme park services.

   IR 1537499 (AU trademark number 2098582):

   Class 9:  CDs; DVDs; USB cables; blank USB flash drives; downloadable multimedia file; downloadable video files; downloadable music files; downloadable image files; electronic publications, downloadable; computer software applications, downloadable; musical video recordings; sunglasses; protective cases for smart phones; phonograph records; compact discs featuring music; pre-recorded DVDs featuring music; ear phones; decorative magnets; rechargeable batteries; computer software.

   Class 25:  Outerclothing; ready-made clothing; underwear; neck gaiters; caps being headwear; waterproof clothing; shirts; sweaters; scarves; skirts; sports wear; footwear; socks; clothing; belts [clothing]; gloves [clothing]; tee-shirts; pants; pullovers; bottoms [clothing].

   Class 28:  Toy LED light sticks; toy animals; stuffed toys; stuffed dolls; toys for pets; dolls; dolls' clothes; accessories for dolls; toys; masks [playthings]; teddy bears; toy sticks with glow-in-the-dark features; electronic toys; jigsaw puzzles; plush dolls; play balloons; plastic character toys; toy figures.

   Class 41:  Entertainment services in the form of performances by singers; night club entertainment services; dance instruction; presentation of live performances; modelling for artists; fan club services in the nature of entertainment; entertainment services; entertainer services; providing information in the field of entertainment; conducting of entertainment events; providing audio or video studio services; rental of sound recordings and video recordings; production of audio recordings; production of music; publication of printed matter; providing online videos, not downloadable; providing online music, not downloadable; songwriting; arranging and conducting of concerts; theme park services.