Monster Energy v USA Nutraceuticals Inc

[2017] ATMO 22

TRADE MARKS ACT 1995

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

ReOpposition by Monster Energy Company to registration of trade mark application 1639191 (5) – BEAST - in the name of USA Nutraceuticals Group Inc

Delegate:

Robert Wilson

Representation:

Opponent: Stephen Rebikoff of Counsel instructed by Elizabeth Godfrey of Davies Collison Cave

Applicant: David Larish of Counsel instructed by Spruson & Ferguson

Decision:

2017 ATMO 22

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 44 and 60 considered – scope of consideration of stylisation of plain word trade mark – no grounds established – trade mark to proceed to registration

Background

1.  This decision concerns an opposition brought by Monster Energy Company (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (‘the Act’) to registration of the trade mark subject of the application detailed below in the name of USA Nutraceuticals Group Inc (‘the Applicant’).

Application Number:	1639191
Filing Date:	6 August 2014
Goods:	Class 5: Dietary and nutritional supplements  (‘the Applicant’s Goods’)
Trade Mark:	BEAST	(‘the Applicant’s Trade Mark’)

2.  On 15 January 2015 the application’s acceptance for possible registration was advertised in the Australian Official Journal of Trade Marks. The Opponent filed a Notice of Intention to Oppose the registration on 11 March 2015 and a Statement of Grounds and Particulars (‘the SGP’) on 10 April 2015. The Applicant filed a Notice of Intention to Defend on 15 May 2015. The SGP raised grounds of opposition under ss 42(b), 44 and 60 of the Act.

Evidence

3.  The Opponent filed Evidence in Support of its opposition (‘EIS’) on 1 September 2015. This evidence consists of:

• Declaration made on 26 August 2015 by Rodney Cyril Sacks, the Chairman and Chief Executive Officer of Monster Energy Corporation, with Exhibits RCS-1 to RCS-51 (‘Sacks 1’). The Opponent is a subsidiary of Monster Energy Corporation; and

• Declaration made on 31 August 2015 by Elizabeth Kate Godfrey, Senior Associate of Davies Collison Cave Patent and Trade Mark Attorneys, the Opponent’s legal representative, with Exhibits EKG-1 to EKG-3 (‘the Godfrey declaration’).

The three exhibits to the Godfrey declaration are declarations which were originally filed in relation to another opposition by the Opponent. The declarations are:

• Statutory Declaration made on 8 August 2012 by Rebecca Lee Dunbar, a librarian employed by Davies Collison Cave, with Exhibits RLD-1 to RLD-20 (‘the Dunbar declaration’);

• Statutory Declaration made on 9 July 2012 by Danielle Jade Roberts, a lawyer previously employed by Davies Collison Cave, with Exhibits DJR-1 to DJR-48 (‘the Roberts declaration’); and

• Statutory Declaration made on 11 October 2012 by Adrian Heath Hunter, the Australasian Manager of Monster Energy AU Pty Ltd, with Exhibits AH-1 to AH-19 (‘the Hunter declaration’). Monster Energy AU Pty Ltd is a subsidiary of the Opponent the role of which is to market and promote the Opponent’s goods in Australia.

4.  The Applicant filed Evidence in Answer (‘EIA’) on 14 December 2015. This evidence consists of:

• Declaration made on 11 December 2015 by Anthony Altieri, the President of the Applicant, with Exhibits AA-1 to AA-12 (‘the Altieri declaration’). The Applicant has indicated that Exhibits AA-5 and AA-10 are confidential.

5.  The Opponent filed Evidence in Reply (‘EIR’) on 15 February 2016. This evidence consists of:

• Declaration made on 12 February 2016 by Rodney Cyril Sacks with Exhibit RCS-55 (‘Sacks 2’).

1. Once the time allowed for filing evidence had ended the parties requested to be heard. The parties filed written summaries of their submissions prior to the hearing in accordance with directions issued. The matter was heard before Hearing Officer Nicole Worth in Canberra on 18 November 2016. In the end, Ms Worth was unable to finally decide the opposition. It fell to me as a Delegate of the Registrar of Trade Marks to decide the matter in Ms Worth’s stead. I have decided the matter after perusing the SGP, the evidence, the parties’ written submissions and having listened to an audio recording of the oral submissions made during the hearing.

7. As a Delegate of the Registrar of Trade Marks I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued or dismissed, 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.

The Opponent

8.  As there is no dispute in this matter arising from issues of authorised use of trade marks, for the sake of simplicity Monster Energy Corporation, Monster Energy AU Pty Ltd and the Opponent will all be referred to from hereon in simply as ‘the Opponent’.

9.  According to Sacks 1 the Opponent is in the business of designing, creating, developing, producing, marketing and selling energy drinks. The Opponent is acknowledged as a leader in the beverage industry and is well-known internationally, including in Australia. The Opponent owns and uses the following trade marks (collectively ‘the Monster Trade Marks’).

MONSTER MONSTER ENERGY

1. Since the launch of the original MONSTER energy drink in 2002 the Opponent has, according to Sacks 1, used the Monster Trade Marks on every one of the billions of cans of Monster Energy drink it has sold, and when promoting the Opponent’s products.

2. The Opponent is also the owner of the Australian registered trade marks detailed below (‘the Opponent’s Beast Trade Marks’):

Trade Mark Number	Trade Mark	Priority Date	Goods
1121103 (IR 885429)	UNLEASH THE BEAST!	28 April 2006	Class 32: Fruit juice drinks, soft drinks, carbonated soft drinks and soft drinks enhanced with vitamins, minerals, nutrients, amino acids and/or herbs, aerated water, soda water and seltzer water
1348790	4 March 2010	Class 32: Non-alcoholic beverages
1395195	UNLEASH THE BEAST!	18 November 2010	Class 5: Nutritional supplements
1398977	REHAB THE BEAST!	3 November 2010	Class 5: Nutritional supplements including nutritional supplements in liquid form Class 30: Ready to drink tea, iced tea and tea based beverages; ready to drink flavored tea, iced tea and tea based beverages Class 32: Beverages, including, carbonated soft drinks; non-alcoholic carbonated and non-carbonated drinks enhanced with vitamins, minerals, nutrients, proteins, amino acids and/or herbs; energy or sports drinks; fruit juice drinks
1557701	UNLEASH THE ULTRA BEAST!	19 November 2012	Class 5: Nutritional supplements in liquid form Class 32: Non-alcoholic beverages, namely, carbonated soft drinks; carbonated drinks enhanced with vitamins, minerals, nutrients, proteins, amino acids and/or herbs; carbonated energy drinks and sports drinks
1587884	PUMP UP THE BEAST!	15 May 2013	Class 5: Nutritional supplements in liquid form; vitamin fortified beverages Class 32: Energy drinks

1. Sacks 1 further indicates that since the launch of the original MONSTER energy drink in 2002, the Opponent has continuously used the ‘UNLEASH THE BEAST!’ and ‘UNLEASH THE BEAST! trade marks on most of the MONSTER energy drinks and in connection with promoting the Opponent’s products.

The Applicant

1. According to the Altieri declaration the Applicant markets and sells sports nutritional supplements, apparel and other weight-lifting, bodybuilding and fitness-related goods and services. The Applicant first used the trade mark ‘BEAST’ in relation to dietary and nutritional supplements in the United States of America in 1995. Since 1995 the Applicant has expanded its business by extending the range of products offered under the trade mark ‘BEAST’ to include fitness related apparel and accessories. In addition to the trade mark ‘BEAST’ the Applicant owns and uses the following trade marks in relation to its goods:

THE BEAST	BEAST MODE
BEAST. SINCE 1995	BEAST WEAR
BEAST STACK	BEAST BAR
BEAST IN A BOTTLE	BEAST PACKS*
TRAIN LIKE A BEAST*	TEAM BEAST

1. The Altieri declaration is not explicit as to which of the above trade marks is used in Australia; however, a search of the Australian Register of Trade Marks indicates that the Applicant has only the trade marks indicated with an asterisk (*) registered in Australia. The trade marks indicated with a dagger ( ) were applied for but never registered.

2. Mr Altieri further states that the Applicant is recognised as a leader in sports nutrition with distribution in six continents, including Australia.

Grounds of Opposition, Onus and Standard of Proof

1. At the hearing Mr Rebikoff confirmed that the Opponent was pressing the three grounds nominated in the SGP. The onus of proof in an opposition rests upon the Opponent.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 6 August 2014, being the filing date of the application (‘the Relevant Date’).[3]

Discussion

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

[2] Following Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26].

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2] (Kitto J).

Section 44 and reg 4.15A

1. Relevant provisions of the Act with respect to the s 44 ground are reproduced below:

Section 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.

Note 1: For deceptively similar see section 10.

Note 2: For similar goods see subsection 14(1).

Note 3: For priority date see section 12.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A. …

Section 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.

1. In the SGP the Opponent nominated the Opponent’s Beast Trade Marks (detailed at para 11 above) in respect of this ground.[4] In his submissions regarding this ground Mr Rebikoff did not refer to trade mark number 1348790. It is not necessary that I consider further this trade mark for the following reason. If I were to find that trade mark number 1395195 was not substantially identical or deceptively similar to the Applicant’s Trade Mark, I would naturally reach the same conclusion with respect to trade mark 1348790, since it incorporates the words of trade mark 1395195 and has additional elements which would serve to further differentiate it from the Applicant’s Trade Mark.

   [4] I note that as trade mark number 1121103 (IR 885429) is a protected international trade mark,  reg 4.15A of the Trade Mark Regulations 1995 (Cth) applies. This regulation provides a ground for rejection of an application based on a protected international trade in essentially the same terms as s 44 of the Act.

2. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1), i.e. that at least one of the Opponent’s Beast Trade Marks:

   ·     has a priority date which is earlier than the Relevant Date (‘the first requirement’); and

   ·     is in respect of at least some goods which are similar to at least some of the Applicant’s Goods (‘the second requirement’); and

   ·     is substantially identical with or deceptively similar to the Applicant’s Trade Mark (‘the third requirement’).

3. The Opponent’s Beast Trade Marks all have a priority date which is earlier than the Relevant Date, thus satisfying the first requirement. Trade Marks 1395195 UNLEASH THE BEAST!, 1398977 REHAB THE BEAST!, 1557701 UNLEASH THE ULTRA BEAST! and 1587884 PUMP UP THE BEAST! have claims in Class 5 which include either nutritional supplements or nutritional supplements in liquid form. These goods are similar to the Applicant’s Goods, thus satisfying the second requirement for those trade marks. Those trade marks also encompass the various signs of the remaining trade marks referred to in Mr Rebikoff’s submissions. I move, then, to consider the third requirement.

Substantially identical and/or deceptively similar?

1. I will consider firstly whether the Applicant’s Trade Mark is substantially identical to any of the remaining Opponent’s Beast Trade Marks. When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd  Windeyer J said:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[5]

   [5] [1963] HCA 66, [12].

2. Mr Rebikoff did not submit that any of the Opponent’s Beast Trade Marks are substantially identical to the Applicant’s Trade Mark. On a side by side comparison there are clear differences between each of the Opponent’s Beast Trade Marks and the Applicant’s Trade Mark. I am satisfied that none of the Opponent’s Beast Trade Marks is substantially identical to the Applicant’s Trade Mark. I shall now consider deceptive similarity.

3. Guidance for determining whether trade marks are deceptively similar is also found in 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].[6]

   [6] [1963] HCA 66, [13].

4. Mr Rebikoff drew attention to s 10 of the Act which is extracted at para 17 above. Mr Rebikoff submitted (and I accept) that:

   It is well-established that the use of the word ‘likely’ in this context does not import a requirement that it must be more probable than not the mark will have such an effect. In Registrar of Trade Marks v Woolworths … French J noted that ‘the probability of deception or confusion must be finite and non-trivial. There must be a “real tangible danger” of it occurring’.[7]

   [T]he approach to be adopted is not one of side-by-side comparison but rather one based on an allowance for ‘imperfect recollection’.[8] …

   The test for deceptive similarity is not whether consumers might think the marks are the same, but rather whether there is a real risk that the applicant’s use of its mark will cause a significant number of ordinary persons to wonder whether it might be the case that the two products or services come from the same source.[9]

   There is no limit on the nature of the confusion, and it is sufficient to ‘cause confusion’ if the minds of the public are merely perplexed or mixed up as to the relationship between the two.[10] …

   In assessing the impression created by the mark, it is also important to consider ‘the idea of the mark’, that is, ‘the idea which the mark will naturally suggest to the mind of one who sees it’.[11] In Jafferjee v Scarlett,[12] Latham J quoted with approval the following passage from the Herschell Committee in this context:

   Two marks, when placed side by side, may exhibit many and various differences, yet the idea left upon the mind by both may be the same; so that a person acquainted with a first mark registered, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted.

   Similarly, … Lord Radcliffe emphasised that:

   [I]n most persons the eye is not an accurate recorder of visual detail and marks are remembered rather by general impression or by some significant detail than by any photographic recollection of the whole.[13]

   [7] (1999) 93 FCR 365, [43].

   [8] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 61 IPR 212, [77].

   [9] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-95 (Kitto J), adopted by French J in Registrar of Trade Marks v Woolworths (1999) 93 FCR 365, [43].

   [10] Coca Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, [39], citing Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410, 423.

   [11] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 61 IPR 212, [74].

   [12] (1937) 57 CLR, 121-22.

   [13] De Cordova v Vick Chemical Co (1951) 68 RPC 103, 106,

5. Mr Rebikoff contended that the essential and distinguishing feature of each of the Opponent’s Beast Trade Marks is the word BEAST, which also comprises the whole of the Applicant’s Trade Mark. He further argued:

   Each of the phrases which makes up the [Opponent’s Beast Trade Marks] is centred around the word BEAST, which is a highly distinctive term in the context of energy drinks and nutritional supplements and which retains its essential meaning and distinguishing character in each of the [Opponent’s Beast Trade Marks].

   It is well-established that where there is a family of trade marks united by a common and distinctive element, there will usually be an expectation that any mark which incorporates that element will form part of the same family, so as to give consumers ‘cause to wonder’ whether two marks that share that element come from the same source.[14]

   [14] See for example Mc Donald’s Corporation v Macri Fruit Distributors Pty Limited [2000] ATMO 37.

6. Mr Rebikoff referred to a number of cases where trade marks have been held to be deceptively similar because of the reproduction of an essential or distinguishing feature[15] and submitted:

   In this case, the risk of deception or confusion is heightened by the inherent distinctiveness of the common element, and the wide variety of forms in which it appears in [the Opponent’s trade marks], including the fact that it frequently appears with a diverse range of additional expressions (such as UNLEASH THE, REHAB THE, and PUMP UP THE), as well as with descriptive qualifying terms (such as ULTRA BEAST).

   [15] Eau de Colongne & Parfumerie Fabrik Glockengasse Application (1990) 17 IPR 540 (MY MELODY and MY MELODY DREAMS); Powell v Glow Zone Products Pty Ltd (1997) 39 IPR 506 (GLO CAPS and CAPS THE GAME); Warnaco US Inc v Estee Lauder Cosmetics Ltd (2000) 50 IPR 143 (PRIVATE PLEASURES and PLEASURES and SECRET PLEASURES); Edwards v Liquid Engineering 2003 Pty Ltd (2008) 77 IPR 115 (LIQUIDENG FARM SUPPLIES and LIQUID ENGINEERING).

1. In his oral submissions Mr Rebikoff referred in particular to UNLEASH THE BEAST and submitted—in response to the Applicant’s submissions (discussed below) that ‘Beast’ is not a distinguishing feature of the prior marks because it is no more striking than the verbs which precede it—that:

   ‘Unleash’ is a verb that reinforces the idea conveyed by the word ‘Beast’ because you don’t unleash something unless it’s wild, untamed.

   Secondly, it’s not the law that a mark can have only one prominent or distinguishing feature. Or that there cannot be confusion if there are other parts of a registered mark that are also distinctive.

2. Mr Rebikoff referred to the case of Effem Foods Pty Ltd v Wandella Pet Foods Pty Ltd[16] to support the above proposition and drew parallels with the present case. In that case it was held that an application for the trade mark WHACKOS should be refused because it was deceptively similar to the earlier trade mark DOGS GO WACKO FOR SCHMACKOS. Mr Rebikoff submitted:

   [The earlier trade mark in that case] included a number of highly distinctive elements including ‘SCHMACKOS’, an invented word. But it was still held that ‘WACKOS’ [sic] was sufficiently prominent within the mark for it to give rise to a likelihood of confusion.

   Here the case is even stronger because in each of the prior marks the subject of the mark is the word ‘BEAST’. [I]t’s not a case like Phone Directories[17] where the additional words changes the meaning of the mark. It retains its essential meaning of a wild creature or thing, and that is the essential meaning of, the idea conveyed by, [the Applicant’s Trade Mark] ‘BEAST’.

   [16] [2006] FCA 767.

   [17] Telstra Corporation Limited v Phone Directories Company Australia Pty Ltd [2015] FCAFC 156.

3. In response Mr Larish made a number of statements regarding the law surrounding deceptive similarity, many of which were also referred to by Mr Rebikoff. As is usually the case in disputes of this nature, there was agreement as to the law, but disagreement as to the application of the law to the relevant trade marks and/or facts. Mr Larish noted additionally that in comparing trade marks, where each party’s trade mark comprises elements which separately may not be distinguishable they may nevertheless be sufficiently differentiated when considered as wholes. In such a case there will be no deceptive similarity.[18]

   [18] C Coconut Water Proprietary Ltd v Natural Raw C Pty Ltd [2014] ATMO 119, [39].

4. In comparing the trade marks Mr Larish submitted that the trade marks are visually and aurally distinct, and that the Opponent’s Beast Trade Marks are each comprised of three or four words, whereas the Applicant’s Trade Mark is one word. The Opponent’s Beast Trade Marks begin with and contain ‘action verbs’ – UNLEASH, REHAB and PUMP UP. In the Opponent’s Beast Trade Marks the word ‘Beast’ is followed by an exclamation mark which is not present in the Applicant’s Trade Mark. ‘Indeed, the only visual/aural commonality between [the Applicant’s Trade Mark] and [the Opponent’s Beast Trade Marks] is the presence of the word  BEAST’.

5. Mr Larish submitted secondly that:

   The marks under comparison are conceptually distinct. The exclamation mark means that [the Opponent’s Beast Trade Marks] serve as a form of command. In accordance with that form of command and as a result of the ‘action verbs’, the ‘idea’ of [the Opponent’s Beast Trade Marks] involves the consumer obtaining a ‘boost’ from the goods by activating an inner consciousness, alertness or sense of adventurousness that otherwise lies dormant or unexpressed. These ideas are consistent with the ‘edgy and aggressive’ image that the Opponent wishes to portray for its brand.

   In contrast, [the Applicant’s Trade Mark] evokes one of the ordinary meanings of the word beast—a large or powerful person or thing. …

   The clear difference in the ideas suggested by the marks negates what little impact the common element—BEAST—would otherwise have.

6. Mr Larish referred to a number of cases where despite the existence of a common element, the trade marks in question were found not to be deceptively similar, being:

   ·    REBELLION and SOUL REBELLION[19]

   ·    HEALTH PLUS and INNER HEALTH PLUS[20]

   ·    BULL and BULL TRADER[21]

   [19] Kingsley v Scott (2011) 91 IPR 592, [11].

   [20] Health World Ltd v Shin-Sun Australia Pty Ltd (2008) 75 IPR 478.

   [21] Red Bull GmbH v Reschke Pty Ltd (2010) 90 IPR 558.

7. In Saville Perfumery v June Perfect Lord Green referred to the fact that traders’ customers often do not carry in their head the details of particular marks:

   In such cases the mark comes to be remembered by some feature in it which strikes the eye and fixes itself in the recollection. Such a feature is referred to sometimes as the distinguishing feature, sometimes as the essential feature, of the mark.[22]

   [22] (1941) 58 RPC 147, 162.

8. Mr Larish suggested, that ‘where no component on its own is “sufficiently prominent”, the mark may have not have any essential features’[23] and that in the Opponent’s trade marks

   the word BEAST is no more essential, striking or prominent than the ‘active verbs’ that precede it. As in REA Group … ‘it is only the composite expression that is likely to be perceived as providing the brand or trading name of the business being promoted’.[24]

   [23] REA Group Ltd v Real Estate 1 Ltd [2013] FCA 559, [232] (‘Rea Group’).

   [24] Ibid [233].

9. Mr Larish indicated that ‘BEAST is an ordinary English word’ and that ‘there are many current and pre-Priority Date registrations’ for goods similar to the Applicant’s which incorporate the word BEAST.  Mr Larish submitted:

   [T]he Opponent in effect seeks a monopoly … over the word BEAST despite not having registered (or used) that word, alone, as a trade mark. This is contrary to the Courts’ concern to prevent trade mark owners from monopolising common words.[25]

   [25] See for example Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 539.

10. The Applicant’s submissions in this case are, overall, more compelling than the Opponent’s. The Opponent’s Beast Trade Marks are likely to be interpreted and remembered as expressions which include the word BEAST, but that word is not so prominent or striking that it is likely to be seen as an essential or distinguishing feature. The various expressions which constitute the Opponent’s Beast Trade Marks convey visual, aural, and conceptual impressions which are significantly different to those conveyed by the single word BEAST. I am not satisfied that the Applicant’s Trade Mark so nearly resembles any of the Opponent’s Beast Trade Marks that it is likely to deceive or cause confusion. Consequently, the Opponent has failed to establish the ground of opposition based on s 44 of the Act.

Section 60

1. Section 60 of the Act is reproduced below:

   Section 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.

2. To establish a ground of opposition under s 60 the Opponent must demonstrate that at the Relevant Date there was another trade mark which had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of the Applicant’s Trade Mark would be likely to deceive or cause confusion. At the hearing Mr Rebikoff indicated the Opponent’s case in respect of s 60 rested upon the reputation in Australia of the tag line ‘UNLEASH THE BEAST!’—particularly in the target market of the products under consideration in this matter—and that the tag line is recognised by those consumers as being closely associated with the MONSTER brand. Mr Rebikoff submitted, in summary:

   ·because of that association consumers are likely to be caused to wonder whether the Applicant’s Trade Mark is a sub-brand of, or related brand to, the MONSTER brand;

   ·the goods in respect of which the tag line has a reputation are similar to the Applicant’s Goods; and

   ·that there is an awareness amongst consumers that the Opponent has engaged in significant product innovation and brand variation, and that this is part of the reputation of the MONSTER brand.

3. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided decided that, in s 60, reputation is ‘the recognition of the [trade mark] by the public generally’.[26] Her Honour quoted with approval the following words of Lockhart J from 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 …[27]

   [26] [2000] FCA 1335, [81].

   [27] [1992] FCA 159, [118].

4. On the subject of reputation Kenny J also referred to the Hugo Boss decision, 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 sales or turnover of goods sold under that 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 of sales, 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 sponsorships, 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 sales 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 associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[28]

   [28] Jackson International Trading Co Kurt D Bruhl GMbH & Co KGv Hugo Boss AG [1999] ATMO 23 (Thompson).

5. In his submissions Mr Larish indicated that the Applicant accepted that as at the Relevant Date the ‘UNLEASH THE BEAST!’ tag line had a reputation in Australia in respect of energy drinks. However, Mr Larish submitted that there is little or no evidence that the tag line was used in isolation from the better known MONSTER trade mark, and that as a consequence of this the impact of the tag line as a trade mark is diminished.[29] It was also submitted that the reputation of the tag line involved its use on the side of energy drink products, away from the main labelling and nutritional information and, as a consequence, the tag line does not have a reputation as a standalone trade mark. Mr Larish further submitted that the reputation did not extend beyond energy drinks to dietary and nutritional supplements as the tag line was not used in connection with dietary and nutritional supplements before the Relevant Date.

   [29] Application by Keith Harris & Co Ltd (1989) 15 IPR 273, 279; Samuel Taylor Pty Ltd v Registrar of Trade Marks (1959) 102 CLR 650.

6. Mr Rebikoff disagreed and submitted that there is a significant amount of evidence which demonstrates use of the tag line in isolation, and that the Applicant, in its submissions, has failed to take into account the close relationship between energy drinks and dietary supplements. Mr Rebikoff further stressed the importance of the Opponent’s reputation for product innovation and brand variation and noted that the Opponent has not confined itself to a single product line but is constantly innovating by releasing new formulations and combinations which are quite unusual.

7. It is not sufficient that the Opponent merely establishes that its trade marks have a significant reputation, I must also be satisfied that because of that reputation the use of the Applicant’s Trade Mark would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

   An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard.[30]

   [30] (1937) 58 CLR 641, 658.

8. The concepts of ‘deceive’ and ‘confuse’ were explained in the New Zealand case of Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd, where Richardson J said:

   ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case. ^[31]

   [31] [1979] RPC 410, 423 (citations omitted).

9. It is well established that the kind of confusion contemplated by s 60 need not lead to actual purchase of the goods or services covered by the impugned trade mark. As Heerey J put it in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd:

   A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived.[32]

   [32] (1997) 38 IPR 495, 501(citations omitted). His Honour’s remarks were made in the context of s 28 of the Trade Marks Act 1955, but are no less applicable to s 60 of the current Act. The decision itself was overturned on appeal to the Full Federal Court (Wilcox, Tamberlin and Merkel JJ) (1998) 45 IPR 393, but not on this point.

10. Mr Rebikoff clarified the Opponent’s assertion that this is not a case of product substitution—consumers thinking one brand is the other—but a case of contextual confusion brought about by the similarity between the respective trade marks, the similarity between the goods to which the trade marks are applied, and the nature of the reputation of the Opponent’s trade marks. Mr Rebikoff asserted that the Opponent’s practice of product innovation has resulted in goods such as an energy drink with ‘Nitrous Technology’ which was sold in connection with the MONSTER brand and with the tag line RELEASE THE NITRO BEAST!. Other examples of product innovation referred to were: MONSTER REHAB which was sold with the tag line REHAB THE BEAST!; and MONSTER ENERGY ZERO ULTRA which bore the tag line UNLEASH THE ULTRA BEAST! Other variations of the tag line noted were PUMP UP THE BEAST! and UNLEASH THE CAFFEINE FREE BEAST!. Mr Rebikoff submitted that the Opponent’s history of product innovation and experimentation means that there is an expectation among consumers familiar with the MONSTER brand that the brand is constantly extending to new areas such as dietary and nutritional supplements.

11. In addressing the similarity between the trade marks, Mr Rebikoff drew on the same comparisons used in connection with the s 44 ground, including that both BEAST and UNLEASH THE BEAST! have as their central focus the word and concept BEAST. Additionally, Mr Rebikoff submitted that both MONSTER and BEAST convey the same idea in the same way: through a single one word noun that means ‘a wild creature or thing’:

    For someone who is familiar with the MONSTER brand, who knows that the tag line is UNLEASH THE BEAST!, and that uses MONSTER and BEAST synonymously, it would make perfect sense for BEAST to represent an extension of the MONSTER brand.

12. Mr Rebikoff also drew attention to Campomar Sociedad Limitada v Nike International[33] as authority for the proposition that:

    [I]t is necessary to take into account the full notional use of the mark, which could well involve [the Applicant’s Trade Mark] being presented in a stylisation, font or colour scheme the same or similar to that used by MONSTER.

I note that Campomar concerned identical trade marks and that the discussion at the paragraph referred to in Mr Rebikoff’s submissions concerned not variations in presentation of the opposed trade mark but that it was necessary to take into account use of that trade mark in connection with ‘all of the goods coming within the specification of the application’.[34]

[33] (2000) 202 CLR 45, [72] (‘Campomar’).

[34] Ibid.

1. While the registration of a word ‘in block capitals’ has been found to ‘cover use of that word in any clearly legible form of lettering and not confined to its representation in block capitals’,[35] it is not appropriate when making the comparison here to consider the Applicant’s Trade Mark as other than the plain words in the application. In discussing the s 44 ground of opposition, in a case where an opponent had made submissions similar to those of Mr Rebikoff, Jessup J stated:

   In addressing the question referred to in the authorities, I am not permitted to assume that the applicant’s mark will be used in any particular style, colour or get-up: see eg Aldi Stores Ltd Partnership v Frito-Lay Trading Co Gmbh [2001] FCA 1874; (2001) 54 IPR 344, 380 [155]. Much of the respondent’s case was concerned to demonstrate how confusing the applicant’s mark would be if used in the same lettering and font, in the same colour and against the same background colour, and in the same layout and style, including the same placement and angle with reference to the packaging being used, as the respondent’s mark commonly is. Considerations of these kinds would, of course, be central aspects of any passing off case brought by the respondent against the applicant, but they have no place in a proceeding in which the only issue is whether the applicant’s mark, a single word in upper case letters, should be registered.[36]

   [35] Re Morny Ltd’s Trade Marks (1951) 68 RPC 131, 149.

   [36] Delfi Chocolate Manufacturing SA v Mars Australia Pty Ltd [2015] FCA 1065, [11].

2. His Honour in considering s 60 in the same case stated:

   [I]n a case where the ‘other’ mark is registered, the only respect in which s 60 requires an exercise different from that arising under so much of s 44 which relates to deceptive similarity is that the reputation in Australia of the ‘other’ mark must be the reason why the use of the mark proposed to be registered is likely to deceive or cause confusion.[37]

   [37] Ibid [27].

1. With respect to the possibility of ‘contextual confusion’ Mr Larish for the Applicant submitted:

   The Opponent … invites the Delegate to find that there is a likelihood of ‘contextual confusion’ that, to borrow Hearing Officer William’s turn of phrase in Mitsubishi Jidosha Kabushiki Kaisha v Jason International Inc[38] ‘is no more than an abstract and entirely hypothetical possibility’.

   The Opponent’s argument rests upon the flimsy premise: the commonality of the word BEAST. However, that word is not ‘so unusual that [its] presence in more than one trade mark would necessarily cause consumers to wonder whether they came from the same trade source’.[39] Further, as Yates J said recently in Qantas Airways Ltd v Edwards,[40] ‘I don’t think that consumer awareness of brand evolution is a factor that has any significant role to play in the present case … The differences between the opposed mark and the [registered] marks, are too profound to be seen as an evolutionary change to a brand’. …

   In the circumstances, Burchett J’s observations in Conde Nast are apposite:

   It should be borne in mind that ‘vogue’ is neither a made-up word nor a word wholly without any direct application, in the ordinary use of language, to the goods in question. A trader is not entitled to monopolise such a word, denying its use entirely to other traders. Deceptive or confusing use is barred by the applicant’s registration, but the Court should be careful not to shut out inappropriately other traders from the fair use of the language in ways that will not in reality deceive or confuse. [41]

   [38] (2004) 64 IPR 146 (‘Mitsubishi’).

   [39] OneSteel Wire Pty Ltd v Austral Wire Products Pty [2015] ATMO 52, [44].

   [40] [2016] FCA 729, [176].

   [41] Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505, [511]-[512].

2. Comparisons of trade marks and the assessment of the likelihood of deception or confusion must be assessed on a case by case basis and the result of those enquiries depend heavily on the trade marks in question and the surrounding facts. Consequently, findings in other cases are of limited assistance without a clear explanation as to why those findings are relevant to the question at hand.

3. In the present case, there is no doubt that the Opponent is an extraordinarily successful company and that the UNLEASH THE BEAST! tag line is a trade mark which has acquired a significant reputation in connection with the MONSTER brand. However, I, again, find Mr Larish’s submissions more compelling and I am not satisfied that on the basis of that reputation the use of the Applicant’s Trade Mark would be likely to deceive or cause confusion. Further, it is not necessary for me to decide whether the UNLEASH THE BEAST! tag line has been used in isolation or whether it has acquired a reputation as a stand-alone trade mark. Nor is it necessary for me to decide whether energy drinks are closely related goods to dietary supplements. Were I to assume that UNLEASH THE BEAST! had acquired a significant reputation in its own right—rather than solely as a tag line of MONSTER—and that this reputation extended to dietary supplements, I would not be satisfied that because of that reputation the use of the Applicant’s Trade Mark would be likely to deceive or cause confusion. The differences between the trade marks discussed in respect of the s 44 ground are not overcome by any reputation acquired by the Opponent’s UNLEASH THE BEAST! trade mark. If anything, this is a case where acquired reputation serves only to militate against deception or confusion. Consequently, the Opponent has failed to establish the s 60 ground of opposition.

Section 42(b)

1. Section 42 of the Act is reproduced below:

   42 Trade mark scandalous or its use contrary to law

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

   (a) …

   (b) its use would be contrary to law.

2. The particulars for this ground provided in the SGP include the following:

   Based on the Opponent's reputation in Australia in relation to energy drinks, nutritional supplements and related goods consumers are likely to be misled or deceived into believing that the goods sold under the "BEAST" 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). Selling and offering for sale the goods specified in class 5 of the opposed mark under the "BEAST" mark also suggests that the trade mark Applicant and its goods/services are associated or affiliated with the Opponent or that the Applicant has obtained the Opponent's sponsorship or approval to use the "BEAST" trade mark, when that is not the case. This conduct is in breach of section 29 of the Australian Consumer Law 2010 (Cth).

3. The onus is on the Opponent to establish that use of the Applicant’s trade mark would, rather than could, be contrary to law on the balance of probabilities.[42] Mr Rebikoff made no oral submissions at the hearing in connection with this ground but referred me to his written submissions. Those submissions addressed similar issues to those addressed with respect to the s 60 ground.

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

4. In the present matter the Opponent has failed to establish a ground of opposition under s 60 of the Act. As the test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘the ACL’) is a more stringent test than that for deception or confusion under s 60,[43] I am satisfied that the Opponent has also failed to establish that the use of the Applicant’s Trade Mark would be contrary to s 18 of the ACL.

   [43] See, eg: Ownit Homes Pty Ltd v Ownit Conveyyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).

5. Where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL, nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[44] Section 53(d) of the TPA is the equivalent provision to s 29(1)(h) of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

   The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[45]

   [44] [2003] FCA 104, [107].

   [45] [1989] FCA 506, [40] (citations omitted).

6. If the Applicant were to use its trade mark with the same stylisation, font and colour scheme used by MONSTER it may be contrary, for example, to the law of passing off. However, this manner of use by the Applicant is a mere possibility which means only that the use of the Applicant’s Trade Mark

7. For these reasons I am not satisfied that use of the Applicant’s Trade Mark would be contrary to law. Therefore, the Opponent has failed to establish this ground of opposition.

Decision

1. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Application 1639191 may proceed to registration after one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or a court so orders.

Costs

1. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995.

Robert Wilson

Hearing Officer

Trade Mark and Designs Hearings

17 March 2017