Opposition by Monster Energy Company to registration of two trade mark applications – 1527801 (classes 9, 16, 25, 28, 30, 41) MONSTER MAN and 1527807 (classes 16, 25, 28, 41) MONSTER FRIENDZ – both in the name of...

[2021] ATMO 20

TRADE MARKS ACT 1995

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

Re:Opposition by Monster Energy Company to registration of two trade mark applications – 1527801 (classes 9, 16, 25, 28, 30, 41) MONSTER MAN and 1527807 (classes 16, 25, 28, 41) MONSTER FRIENDZ – both in the name of Home Focus Development Limited

Delegate:	Adrian Richards
Representation:	Opponent: Stephen Rebikoff of Counsel instructed by Elizabeth Godfrey of Davies Collison Cave Applicant: Did not appear
Decision:	2021 ATMO 20 Trade Marks Act 1995 (Cth) – opposition under section 52 – ground of opposition under s 44 considered – ground of opposition established with respect of some goods – overseas applicant without address for service in Australia or New Zealand – applicant not invited to amend specification of goods and services – applications refused in their entirety

Background

1. This decision with reasons concerns the oppositions to registration of two trade marks. On 26 November 2012 (‘Relevant Date’) Home Focus Development Ltd (‘Applicant’), a British Virgin Islands company, filed with this office seeking registration of the following:

   Trade mark:

   MONSTER MAN

   Application number:

   1527801

   Specification of goods and services:

   Class 9:Computer games programs downloaded via the internet (software); Games software; Animated films; Television films; DVDs; Pre-recorded video programmes

   Class 16:Articles of cardboard for stationery purposes; Stationery; Pencil sharpeners; Pencils; Pens (writing instruments); Roller ball pens; Text markers (pens); Paint brushes; Writing brushes; Writing chalk; Staplers for office use; Hole punchers for office use; Rulers for drawing; Writing apparatus; Drawing apparatus; Printed cardboard articles; Paper; Albums; Boxes made of cardboard; Boxes made of paper; Writing pads; Notebooks; Booklets; Wrapping paper; Greeting cards; Trading cards (printed matter); Labels of paper; Adhesive stickers

   Class 25:        Apparel (clothing, footwear, headgear)

   Class 28:Action figures (toys or playthings); Balloons (toys); Electronic toys; Figurines being toys; Plastic toys; Bath toys; Plush toys; Spinning tops (toys); Toys; Apparatus for ball games; Apparatus for electronic games; Apparatus for use with board games; Board games; Card games; Dice games; Electronic games (other than software); Electronic games consoles; Games; Hand held computer games; Hand held electronic games; Markers (counters) for playing games; Mechanically operated games; Parlour games; Rackets for ball games; Ring games; Skittles (games); Toy car games; Toy card games; Trading cards (card games); Toy building blocks; Toy gun holsters; Caps for pistols (toys); Toy guns; Kites; Ball games; Decorations for Christmas trees; Toy masks; Stuffed toy animals; Articles for use in playing card games; Water pistols (playthings); Accessories for dolls; Baby dolls; Dolls; Skateboards; Ice skates; Roller skates; Surfboards; Jigsaw puzzles; Swimming flutter boards; In-line skates

   Class 30:Boiled sugar confectionery; Chocolate confectionery; Confectionery; Fruit drops (confectionery); Fruit jellies (confectionery); Liquorice (confectionery); Lollipops (confectionery); Marshmallow confectionery; Pastilles (confectionery); Prepared desserts (confectionery); Boiled sweets; Chewing gum (not medicated); Marzipan; Candy (not medicated); Biscuits; Cakes; Pastries

   Class 41:Training; Entertainment; Internet games (non-downloadable); Providing digital music (not downloadable) from the Internet; Education services; Organisation of sporting activities; Cultural activities

   Trade mark:

   MONSTER FRIENDZ

   Application number:

   1527807

   Specification of goods and services:

   Class 16:Articles of cardboard for stationery purposes; Stationery; Pencil sharpeners; Pencils; Pens (writing instruments); Roller ball pens; Text markers (pens); Paint brushes; Writing chalk; Staplers for office use; Hole punchers for office use; Rulers for drawing; Writing apparatus; Drawing apparatus; Printed cardboard articles; Paper; Albums; Boxes made of cardboard; Boxes made of paper; Writing pads; Notebooks; Booklets; Wrapping paper; Greeting cards; Trading cards (printed matter); Labels of paper; Adhesive stickers; Writing brushes

   Class 25:Apparel (clothing, footwear, headgear)

   Class 28:Action figures (toys or playthings); Balloons (toys); Figurines being toys; Plastic toys; Bath toys; Plush toys; Spinning tops (toys); Toys; Apparatus for ball games; Apparatus for use with board games; Board games; Card games; Dice games; Markers (counters) for playing games; Mechanically operated games; Parlour games; Rackets for ball games; Ring games; Skittles (games); Toy car games; Toy card games; Toy building blocks; Toy guns; Caps for pistols (toys); Toy gun holsters; Kites; Ball games; Decorations for Christmas trees; Toy masks; Stuffed toy animals; Articles for use in playing card games; Water pistols (playthings); Accessories for dolls; Baby dolls; Dolls; Skateboards; Ice skates; Roller skates; Surfboards; Jigsaw puzzles; Swimming flutter boards; In-line skates; Trading cards (card games)

   Class 41:Training; Providing digital music (not downloadable) from the Internet; Education services; Organisation of sporting activities; Cultural activities

2. Throughout these reasons I refer to these together as the Trade Marks and I use the application number when referring to one.

3. 1527801 was advertised as accepted for possible registration on 5 June 2014, and the same advertisement for 1527807 followed on 26 June 2014. Monster Energy Company (‘Opponent’) filed notices of opposition against the Trade Marks shortly after. The Applicant then filed notices that it intended to defend the Trade Marks from opposition.

4. The law requires that the Opponent offer up its evidence first, which it promptly did.[1] Next should come the Applicant’s evidence,[2] but none was forthcoming. Since missing the Applicant’s evidence deadline ended the evidence process, these oppositions were ready to be heard in the first half of 2015.[3] The Opponent duly asked to be heard. Before any hearing date could be arranged, the parties jointly requested a cooling-off period so they might negotiate a settled outcome.[4] After reaching the maximum cooling-off period of 12 months, the oppositions to registration of the Trade Marks were set down to be heard together on 2 June 2017. The hearing date was later changed to 19 July 2017 due to a scheduling conflict with the Opponent’s representatives. In the lead up to these planned hearing dates, the attorney for the Applicant advised this office that they had no instructions as to whether it would attend the hearings scheduled around that time. As it happened, no hearing took place.

   [1] Trade Marks Regulations 1995 (Cth) reg 5.14(3). Each reference to a regulation in these reasons is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).

   [2] Ibid reg 5.14(4).

   [3] Ibid reg 5.17(3)(b)(ii).

   [4] Ibid reg 5.16.

5. On 17 July 2017 the parties jointly sought and obtained a lengthy deferral of the hearing, so they could continue their negotiations. On 25 September 2018, the attorney firm that had been the address for service for the Applicant since the Relevant Date advised this office that it was no longer acting. On 18 February 2019, the Opponent informed this office that negotiations between the parties had ended without a resolution. The oppositions to registration of the Trade Marks were set down to be heard together on 16 May 2019. This was rescheduled twice more due, again due to availability. A fifth date was set for 19 November 2019 to be heard by me in my capacity as a delegate of the Registrar of Trade Marks.

6. While reviewing the official files I noted the Applicant’s lack of an address for service in Australia or New Zealand.[5] I wrote a letter addressed to the Applicant half a world away letting it know that it had not been receiving important correspondence in relation to the Trade Marks, particularly in relation to their oppositions. I informed it that unless it provided the necessary address it would not receive future correspondence, including this decision. No response to my letter has been received. This lack of an address for service has played a significant role in how I have dealt with these oppositions.

   [5] Trade Marks Act 1995 (Cth) s 215. Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth).

7. I held the hearing on 19 November 2019. In attendance for the Opponent was Stephen Rebikoff of Counsel instructed by Elizabeth Godfrey of Davies Collison Cave. The Applicant did not attend.

Grounds and onus

1. The Opponent has alleged grounds of opposition exist under ss 42(b), 44 and 60. The onus is on the Opponent[6] to show that any one of those grounds are established. Having found in favour of the Opponent under s 44, it has not been necessary for me to consider the other two nominated grounds. All findings of fact are on the balance of probabilities[7] and the rights of the parties are assessed as they were at 26 November 2012, being the Relevant Date.[8]

   [6] Pfizer Products Inc v Karam (2006) 219 FCR 585, 591-4 [16]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [7] Ibid.

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

Evidence

1. The Opponent’s evidence consists of the following declarations:

   Danielle Jade Roberts, solicitor at the Opponent’s attorney, made 9 July 2012 with exhibits

   Rebecca Lee Dunbar, librarian at the Opponent’s attorney, made 8 August 2012 with exhibits

   Adrian Heath Hunter, Australasian Manager for the Opponent’s Australian subsidiary, made 11 October 2012 with exhibits

   Elizabeth Kate Godfrey, Senior Associate of the Opponent’s attorney, made 16 December 2014 with exhibits

   Rodney Cyril Sacks, Chairman and Chief executive of the Opponent, made 12 December 2014 with exhibits

   Rodney Cyril Sacks, Chairman and Chief executive of the Opponent, made 9 February 2015 with exhibits

2. Much of this evidence goes to reputation in various trade marks owned by the Opponent. Given my conclusions under s 44 there is no need to outline that content here.

Section 44

1. This ground of opposition requires an earlier-filed trade mark by someone other than the Applicant. The Opponent has put forward a suite of 51 of its registered or applied for trade marks for consideration under this ground. In the hearing, the following four marks were emphasised:

   Trade mark:  MONSTER
   Number:  1237259

   Specification of goods:          Class 16:        Printed matter and publications none being puzzles, puzzle books, crossword puzzle books and none of the goods having MONSTERS as their theme or subject matter; posters; stickers; transfers; cards; stationery; signboards in this class

   Class 18: Bags; backpacks; wallets; cases; key cases; leather and imitations of leather, and goods made of these materials and not included in other classes

   Trade mark:  MONSTER
   Number:  1360527

   Specification of goods:          Class 9: Protective clothing; protective footwear; protective headwear; protective eyewear

   Class 25: Clothing, footwear and headgear

   Trade mark:  MONSTER ENERGY

   Number:  1237261

   Specification of goods:          Class 16: Printed matter and publications; posters; stickers; transfers; cards; stationery; signboards in this class

   Class 18: Bags; backpacks; wallets; cases; key cases; leather and imitations of leather, and goods made of these materials and not included in other classes

   Trade mark:  MONSTER ENERGY
   Number:  1360299

   Specification of goods:          Class 9: Protective clothing; protective footwear; protective headwear; protective eyewear

   Class 25: Clothing, footwear and headgear

2. Nine of the Opponent’s 51 marks have a priority date later than the Relevant Date, and so cannot be considered under this ground of opposition. Certainly each of the four marks above enjoy a priority from before the Relevant Date, and it has not been necessary to refer any more of the Opponent’s marks than these.

3. Another element of this ground of opposition is that the Trade Marks must claim similar goods, or services of the same description, as the earlier mark(s). The Trade Marks’ claims to goods in class 25 are made in respect of goods identical to those claimed in the Opponent’s registration numbers 1360527 and 1360299. Next, the class 16 claims in respect of the Trade Marks are largely the same as the class 16 goods claimed in the Opponent’s registration numbers 1237259 and 1237261. Where they most appear to differ at first blush are the claims made by the Trade Marks to paint brushes, boxes made of cardboard and boxes made of paper. The question for those goods relates to whether they might properly be termed ‘stationery’. I see a good argument following the established test that the respective nature, use, and trade channels of these goods means they would be of the same description.[9] But it has not been necessary in all the circumstances to come to a firm view on the remainder of those goods in class 16, nor the goods and services in the other classes claimed by the Trade Marks—it is enough that a large part of the claims are identical.

   [9] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592, 606 (Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ).

4. The final question that goes to establishing this ground of opposition is deceptive similarity. The test is one of impression and imperfect recollection.[10] Would a consumer who is familiar with the Opponent’s earlier mark MONSTER be caused to wonder whether it might not be the case that, say, apparel or stationery sold under the Trade Marks comes from the Opponent? When clothing alone is considered for 1527801, the chance that confusion will occur approaches absolute certainty. In that case the word MAN will be read as the intended consumer of the goods, since it is commonplace for clothing manufacturers to refer to their ranges in terms of MAN, WOMAN, BOY, GIRL, KIDS or BABY. As for 1527807, it is often the case that the first word of a trade mark provides the greater impression.[11] Indeed, the first word in each of the marks in comparison, MONSTER, is plainly distinctive of the goods and services in contemplation (with some possible exceptions such as certain class 28 claims to action figures and the like). The second word 1527807, FRIENDZ, is less distinctive in that it is suggestive of a subcategory or qualifier to the concept conveyed by the word MONSTER. That is, the impression is of or a group of monsters who are friends with each other. Given the Opponent’s registered trade marks 1237259 and 1360527 consist of the word MONSTER, there is a real, tangible danger that a consumer would experience this sort of confusion when confronted with either of the Trade Marks when used, for example, in relation to stationery or clothing.

   [10] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 415-6 (Windeyer J).

   [11] CA Henschke & Co v Rosemount Estates Pty Ltd (1999) 47 IPR 63, 74 [35] (Finn J).

5. To sum up at this point, each of the Trade Marks are deceptively similar to the Opponent’s earlier marks, at least in respect of their entire claims to goods in class 25 and much, likely all, of the goods in class 16.

6. Along the path to finding that a ground of opposition is established it is often necessary for the decision-maker to consider whether an exception to the ground of opposition might apply for the applied-for mark. In the case of s 44, this falls into the legislated categories of prior continuous use, honest concurrent use or other circumstances.[12] With the Applicant having filed no evidence or argument, I am afforded no basis to consider any of the exceptions. Another option for an applicant is to refine down their claims to goods and services to avoid the ground of opposition being established. Whilst it is likely that I have the power to pare back these specifications without the Applicant’s input,[13] it is my assessment that in this case to do so would be arbitrary.[14] There is an expectation that the parties, particularly the Applicant, at a minimum identify some principled basis by which I might undertake that task.[15]

   [12] Trade Marks Act 1995 (Cth) ss 44(3)-(4).

   [13] See Phone Directories Co Australia Pty Ltd v Telstra Corp Ltd (2014) 106 IPR 281, 325 [231] (Murphy J); Trade Marks Act 1995 (Cth) ss 63(2)(c), 65(7).

   [14] Bayerische Motoren Werke AG v Home Focus Development Limited (2016) 125 IPR 485, 493 [37]-[38] (Hearing Officer Heath Wilson).

   [15] Phone Directories Co Australia Pty Ltd v Telstra Corp Ltd (2014) 106 IPR 281, 325 [231] (Murphy J)

7. When I wrote to the Applicant pointing out that it would not receive important correspondence from this office due to its lack of an effective address for service, I had no notion that it might have needed to attend to the breadth of its specification. I have written above that I do not consider it necessary to make precise findings as to just which of the goods and services claimed in respect of the Trade Marks are not similar or closely related to those specified in respect of the Opponent’s earlier marks. This is because the Applicant’s failure to reply to my earlier warning tells me that writing again would be in vain. Rather than add further delay to the resolution of these matters, the Trade Marks having failed in respect of some goods must now fail entirely.[16]

   [16] Apple Inc v Registrar of Trade Marks (2014) 322 ALR 1, 41 [232] (Yates J).

Decision and costs

1. The Opponent has established on the balance of probabilities that a ground of opposition under s 44 exists. Accordingly, I refuse to register each of the Trade Marks. These refusals should be recorded one month from the date of this decision. If the Registrar of Trade Marks is served with a notice of appeal to this decision before that time, the refusal shall not be recorded until the appeal has been withdrawn or discontinued. Otherwise the disposition of these oppositions should be in accordance with the Court’s order or direction.

2. The Opponent has sought an award of costs. It is usual for costs to follow the event, and no reason presents as to why this matter should be any different. For 1527801 I award costs against the Applicant and for 1527807 I award reduced costs against the Applicant in the same manner as Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd.[17]

   [17] [2001] ATMO 78 (Hearing Officer Williams).

Adrian Richards
Hearing Officer
Delegate of the Registrar of Trade Marks
12 March 2021