Oppositions by Monster Energy Company to registration of trade mark application numbers 2177560 (12, 35, 37) –

[2025] ATMO 124

TRADE MARKS ACT 1995

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

Re:Oppositions by Monster Energy Company to registration of trade mark application numbers 2177560 (12, 35, 37) – MONSTER GARAGE, 2189500 (12, 35, 37) – MONSTER MECHANICS, 2189501 (12, 35, 37) – MONSTER SCHOOL OF DRIVING – in the name of TM Storage Place Pty Ltd

Delegate:

Louise Tuohy

Representation:

Opponent: Stephen Rebikoff of Senior Counsel instructed by Davies Collison Cave Pty Ltd

Applicant: Peter Creighton-Selvay of Counsel instructed by Kahns Lawyers

Decision:

2025 ATMO 124

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under sections 42(b), 44 and 60 – section 44 established in relation to classes 12 and 35 - other circumstances considered – trade marks refused for classes 12 and 35

Background

1. This matter concerns oppositions by Monster Energy Company (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to the registration of the following trade mark applications (‘Applications’) in the name of TM Storage Place Pty Ltd (‘Applicant’):

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

   Trade mark number:              2177560

   Trade mark:  MONSTER GARAGE (‘560 Mark’)

   Filing date:  11 May 2021

And

Trade mark number:              2189500

Trade mark:  MONSTER MECHANICS (‘500 Mark’)

Filing date:  24 June 2021

And

Trade mark number:              2189501 (‘501 Mark’)

Trade mark:  MONSTER SCHOOL OF DRIVING

Filing date:  24 June 2021

(collectively the ‘Applicant’s Marks’)

1. The Applicant’s Marks share the following specification:           

   Class 12:  Automobile wheels; Vehicle wheels; Wheels for motor vehicles; Tyres for motor vehicle wheels; Tyres for motor vehicles; Vehicle tyres; Wheel trims; Repair materials for tyres

   Class 35: Advertising; Distribution of advertising material; Online retail services; Retail services

   Class 37: Repair of tyres; Replacement of tyres; Fitting services for tyres; Tyre fitting; Wheel alignment adjustment; Wheel balancing; Maintenance and repair of motor vehicles; Motor vehicle maintenance and repair

2. The Applications were examined as required by s 31. The 560 Mark was advertised for possible registration on 21 October 2021, and the 500 and 501 Marks were advertised for possible registration on 25 November 2021.

3. On 13 December 2021 the Opponent filed a Notice of Intention to Oppose the 560 registration followed by its Statement of Grounds and Particulars (‘SGP’) on 24 December 2021. On 21 January 2022 the Opponent filed Notices of Intention to Oppose the 500 and 501 registrations followed by its SGPs on 8 February 2022. The Applicant filed a Notice of Intention to Defend the oppositions on 21 March 2022.

4. Thereafter the parties filed evidence in accordance with the Regulations. The Opponent filed the following evidence in support:

• Declaration of Elizabeth Kate Godfrey, Principal of Davies Collison Cave Pty Ltd on behalf of the Opponent, made on 22 June 2022, with Exhibits EKG-1 to EGK-30

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

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

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

  §Affidavit of Samuel Peter Thiele dated 4 October 2018 with Exhibit SPT-1 (at EKG-30).

• Declaration of Georgia Rosemary Mae Christie, law graduate at David Collison Cave Pty Ltd for the Opponent, made on 23 June 2022, with Exhibit GRC-1, Tabs 1 to 73.

• Declaration of Emily Elizabeth Maartensz, Lawyer employed by Davies Collison Cave Law Pty Ltd, made on 27 June 2022, with Exhibit EEM-1, Tabs 1 to 139.

• Declaration of Paul J Dechary, Executive Vice President and Deputy General Counsel of the Opponent, made on 28 June 2022, with Exhibits PJD-1 to PJD-77.  

  §Declaration of Sam Anthony Pontrelli, Senior Vice President of Marketing of the Opponent, dated 7 August 2017, with Exhibits SAP-1 to SAP-38 (at PJD-2).

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

1. The Applicant filed the following evidence in answer:

• Declaration of Rodney Bruce Jane, Sole Director of the Applicant, made on 27 September 2022, with Exhibit (‘Jane’).

1. The Opponent filed the following evidence in reply:

• Declaration of Elizabeth Kate Godfrey, made on 2 December 2022 with Exhibit EKG-31.

1. Once time for filing evidence had ended both parties were given the opportunity to either request an oral hearing or a hearing by way of written submissions. Both parties requested to be heard by way of videoconference. As a delegate of the Registrar of Trade Marks I heard the matter by videoconference on 7 May 2025. Stephen Rebikoff of Senior Council instructed by Elizabeth Godfrey of David Collison Cave Pty Ltd appeared on behalf of the Opponent. Peter Creigton-Selvay of Counsel instructed by Ben Fraser of Kahns Lawyers appeared on behalf of the Applicant. The parties’ oral submissions were supported by written submissions filed prior to the hearing.

Grounds of Opposition, Relevant Date and Onus

1. In the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 60 and 62A. The Opponent did not press the ground of opposition under s 62A, and I consider this ground abandoned.

2. The date at which the rights of the parties are to be determined is the filing date of 11 May 2021 for the 560 Mark and the filing date of 24 June 2021 for the 500 and 501 Marks (collectively ‘Relevant Date(s)’). The filing dates are also the priority dates for the purposes of ss 44 and 60.

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

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

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

Preliminary Issue

1. The Opponent’s written submissions make clear that it does not challenge the registration of the Applicant’s Marks in respect of the services claimed in class 37. As such the Opponent only opposes the registration of the Applicant’s Marks in relation to the following goods and services:

   Class 12: Automobile wheels; Vehicle wheels; Wheels for motor vehicles; Tyres for motor vehicle wheels; Tyres for motor vehicles; Vehicle tyres; Wheel trims; Repair materials for tyres

   Class 35: Advertising; Distribution of advertising material; Online retail services; Retail services

   (‘Applicant’s Goods and/or Services’)

Discussion

The Opponent

1. The Opponent is a subsidiary of the American beverage company Monster Beverage Corporation and is primarily in the business of making and selling energy drinks.

The Applicant

1. The Applicant is an Australian company registered on 22 December 2017. The primary function of the Applicant is the management of certain intellectual property rights for different brands. The Applicant licences its intellectual property to different licensees. One such licensee is Bob Jane Corporation Pty Ltd, which is the franchisor of the Bob Jane T-Mart business (‘BJTM”). BJTM has been trading as a company operated and franchise system across Australia since the early 1970s. The BJTM business specialises in selling wheels and tyres.

Section 44

1. Section 44 relevantly provides:

   44  Identical etc. trade marks

   (1)   Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

   (a)    the applicant's trade mark is substantially identical with, or deceptively similar to:

   (i)      a trade mark registered by another person in respect of similar goods or closely related services; or

   (ii)     a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b)   the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   (2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

   (a) it is substantially identical with, or deceptively similar to:

   (i) a trade mark registered by another person in respect of similar services or closely related goods; or

   (ii) a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   (3) If the Registrar in either case is satisfied:

   (a) that there has been honest concurrent use of the 2 trade marks; or

   (b) that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

   (4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

   (a) beginning before the priority date for the registration of the other trade mark in respect of:

   (i) the similar goods or closely related services; or

   (ii) the similar services or closely related goods; and

   (b) ending on the priority date for the registration of the applicant’s trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

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

3. In the event that each of these requirements is satisfied it may still be possible for me to accept the Applications (or allow the Applications to proceed to registration) if I am satisfied, pursuant to ss 44(3) and/or 44(4), that there has been honest concurrent use of the Applicant’s Marks, or other circumstances which would make acceptance of the Applications for registration of the Applicant’s Marks proper, or that the Applicant has continuously used the Applicant’s Marks beginning before the priority date of the Opponent’s relied upon trade marks.

4. In the SGPs the Opponent particularised the ground of opposition by reference to its trade marks listed at Annexure 1 (‘Opponent’s trade marks’). For the purposes of s 44 the Opponent, in its written and oral submissions, relied on its registered trade marks 2024852 and 2024861. While the Opponent particularised this ground by reference to the Opponent’s trade marks, it is ultimately only necessary to consider whether the Opponent’s 2024852 and 2024861 trade marks are substantially identical or deceptively similar to the Applicant’s Marks.  The remaining trade marks particularised by the Opponent contain additional elements that further differentiates them from the Applicant’s Marks. If I were to find that one or more of the Applicant’s Marks are not substantially identical or deceptively similar to the Opponent’s 2024852 and 2024861 trade marks I would necessarily reach the same conclusion for the remaining Opponent’s trade marks. Details of the Opponent’s 2024852 and 2024861 trade marks follow:

   Trade mark number:              2024852

   Trade mark:  MONSTER  (‘Opponent’s 852 Mark’)

   Priority date:  23 July 2019

   Specification:  Class 12: vehicles; automotive wheels; apparatus for locomotion by land, air or water; parts and fittings for all the aforesaid goods (‘852 goods’)

And

Trade mark number:              2024861

Trade mark:  MONSTER  (‘Opponent’s 861 Mark’)

Priority date:  23 July 2019

Specification:  Class 35: Retail and wholesale services of non-alcoholic beverages, namely energy drinks; On-line retail store services in the field of non-alcoholic beverages, namely energy drinks; the bringing together, for the benefit of others, of non-alcoholic beverages, namely energy drinks, enabling customers to conveniently view and purchase non-alcoholic beverages, namely energy drinks for retail purposes; consultancy and information services relating to the foregoing (‘861 services’)

1. The Opponent’s 852 and 861 Marks are in the name of a person other than the Applicant and have priority dates that are earlier than the Relevant Dates.

2. The second consideration is whether the 852 goods and 861 services are similar to the Applicant’s Goods and Services. Section 14 (1) provides that two sets of goods are similar if they are the same or of the same description. The determination of whether goods are similar involves the consideration of a number of factors including the nature, use and trade channels of the goods.[4] Section 14(2) provides that services are similar to other services if they are the same, or of the same description. Whether two sets of services are of the same description depends on whether the services belong to the same or different trades.[5]

852 goods

[4] Re Jellinek (1946) 63 RPC 59, 64 (Romer J).

[5] Ibid; Trade Marks Office Manual of Practice and Procedure, [26.4.2].

1. The Applicant claims Automobile wheels; Vehicle wheels; Wheels for motor vehicles; Tyres for motor vehicle wheels; Tyres for motor vehicles; Vehicle tyres; Wheel trims; Repair materials for tyres in class 12, and these goods are the same or similar to the wheels and parts and fittings for wheels and vehicles covered by 852 goods.[6]

861 services

[6] Energy Beverages LLC v Cantarella Bros Pty Ltd [2023] FCAFC 44, 130 to 132 (Yates, Stewart and Rofe JJ).

1. The Applicant’s broad claims for online retail services; retail services in class 35 are similar to the retail services covered by the 861 services. However, I do not consider the Applicant’s claims for advertising and distribution of advertising material in class 35 are similar to the 861 services. The Opponent’s services do not involve direct advertising services for others.

2. I now turn to consider whether any of the Applicant’s Marks are substantially identical or deceptively similar to any of the Opponent’s 852 or 861 Marks. The test for whether trade marks are substantially identical requires that the trade marks are considered side-by-side while having regard to the essential features of the trade marks.[7] Where a total impression of resemblance emerges from the comparison, the trade marks will be considered substantially identical. I have reproduced the respective trade marks below:

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

Applicant’s Marks	Opponent’s 852 and 861 Marks
MONSTER GARAGE	MONSTER
MONSTER MECHANICS
MONSTER SCHOOL OF DRIVING

1. On a side by side comparison. I find the Applicant’s Marks are not substantially identical to the Opponent’s 852 and 861 Marks. While all the trade marks share the word MONSTER, the additional word elements in the Applicant’s Marks are unlikely to go unnoticed on a side by side comparison. The total impression emerging from a side by side comparison is not one of similarity.

2. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell:

   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].[8]

   [8] (n 7), 416.

3. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[9] (‘Self Care’) conveniently stated the relevant principles, which was summarised in The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd[10] as follows:

   [9] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

   [10] [2023] FCA 482, [55] (Jackman J).

(a)the resemblance between the two marks must be the cause of the likely deception or confusion;[11]

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

(b)in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[12]

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

(c)the marks should not be compared side by side;[13]

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

(d)the effect of spoken description must be considered; if a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods (or services), then similarities both of sound and of meaning may play an important part;[14]

[14] Ibid.

(e)the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[15]

[15] Ibid.

(f)the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[16]

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

(g)the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[17]

(h)“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers; [18]

1. the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[19]

(j)it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[20]

(k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[21] and

(l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[22]

[17] Shell (n 7), 415.

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

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

[20] Woolworths (n.9), [50(ii)] restating principles from Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-595 (Kitto J) (‘Southern Cross’).

[21] Australian Woollen Mills Ltd (n 13).

[22] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc [2020] FCAFC 235; (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) (‘Hashtag Burgers’) citing Australian Woollen Mills (n 13), 657.

1. Furthermore, in the same case, the Court noted the following[23]:

   In considering the likelihood of confusion or deception, "the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit"[24]. In addition to the degree of similarity between the marks, the assessment takes account of the effect of that similarity considered in relation to the alleged infringer's actual use of the mark[25], as well as the circumstances of the goods, the character of the likely customers, and the market covered by the monopoly attached to the registered trade mark[26]. Consideration of the context of those surrounding circumstances does not "open the door" for examination of the actual use of the registered mark, or, as will be explained, any consideration of the reputation associated with the mark.[27]

   [23] Self Care (n 9) [33].

   [24] New South Wales Dairy Corporation v Murray-Goulburn Co‑operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549, 589 (emphasis added) (Gummow J) (‘New South Wales Dairy’), approved in Henschke (n 16), 62 [44], Hashtag Burgers, (n 22) [64], Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] FCAFC 8, [27], PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 285 FCR 598, [97] (see also 626 [111]) and Swancom (n 11), [73].

   [25] Act, s 68.

   [26] New South Wales Dairy (n 26), 589.

   [27] Swancom (n 11), 59 [89]. See also Henschke (n 16), 62 [44].

2. The Opponent contends that each of the Applicant’s Marks is deceptively similar to the Opponent’s 852 and 861 Marks. The Opponent submits that the word MONSTER is the essential and distinguishing feature of each of the Applicant’s Marks. It appears at the start of each of the trade marks and is an inherently and highly distinctive term when used in relation to the goods and services at issue. Furthermore, in each of the Applicant’s Marks the word MONSTER is qualified by a less distinctive word or phrase, that does not serve to alter the essential character or meaning of the word MONSTER within the trade marks, and would plainly be understood as having a descriptive or evocative function in the context of the relevant goods and services. In these circumstances the Opponent submits that each of the Applicant’s Marks would be understood by the notional consumer as indicating vehicle wheels and parts and associated services, coming from a source known as MONSTER.

3. In response the Applicant submits the word MONSTER has a clear primary meaning to consumers of something which is powerful, wild or startling. In respect of class 12, it also carries the evocative reference to monster trucks. Consumers should be credited with a general knowledge that there are several applications of the word MONSTER. The Applicant argues that in those circumstances, contrary to the Opponent’s submissions it cannot be said that the word MONSTER is the essential and distinguishing feature of each of the Applicant’s Marks. The Applicant’s Marks, when considered as a whole are conceptually different to the single word MONSTER when used in respect of automobile wheels and rims and other goods in class 12 and services in class 35. The Applicant submits that the word MONSTER solus evokes images of large, chunky or powerful vehicle wheels. Conversely, MONSTER GARAGE and MONSTER MECHANICS evoke images of a large or powerful mechanics garage from which wheels are sold. MONSTER SCHOOL OF DRIVING evokes images of a school to teach the driving of monster trucks or high-powered cars.

560 Mark

1. The 560 Mark and the Opponent’s 852 and 861 Marks share visual and aural similarities. The 560 Mark is represented as MONSTER GARAGE. The word MONSTER is identical in substance to the Opponent’s 852 and 861 Marks and while I acknowledge that the word MONSTER means different things to different people, Australian consumers would not recognise MONSTER as having any ordinary signification. What is important here is the impression recalled by the average buyer of the Applicant’s Goods and Services and not owners of monster trucks who would be few in number. These consumers are far more likely to notice and remember the common element MONSTER because it is unusual and highly distinctive for the Applicant’s Goods and Services. I consider Australian consumers would recognise the second word GARAGE in the 560 Mark is less distinctive than the word MONSTER in that it is a generic description of a shelter or repair shop for automotive vehicles, and a place where the Applicant’s Goods in class 12 may be stocked and its Services in class 35 provided. In my view, the word MONSTER when incorporated within the 560 Mark largely retains its identity as an essential feature. Because consumers are more likely to recollect and focus on the common essential element MONSTER they are likely to be deceived or confused as to the trade source.

500 Mark

1. The 500 Mark and the Opponent’s 852 and 861 Marks share visual and aural similarities. The 500 Mark is represented as MONSTER MECHANICS. The word MONSTER is identical in substance to the Opponent’s 852 and 861 Marks and I consider consumers would recognise the second word MECHANICS in the 500 Mark as a description referring to an automotive repair business. As such consumers are far more likely to notice and remember the common element MONSTER because it is highly distinctive for the Applicant’s Goods and Services. They are less likely to notice and remember the word MECHANICS because is a generic description which is common to the trade. Because consumers are more likely to recollect and focus on the common essential element MONSTER they are likely to be deceived or confused as to the trade source.

501 Mark

1. The 501 Mark and the Opponent’s 852 and 861 Marks share visual and aural similarities.  The 501 Mark is represented as MONSTER SCHOOL OF DRIVING. The word MONSTER is identical in substance to the Opponent’s 852 and 861 Marks and the additional word term SCHOOL OF DRIVING in the 501 Mark describes a business that provides lessons to teach individuals how to operate a motor vehicle and obtain a driver’s license. In my view, the word MONSTER when incorporated within the 501 Mark largely retains its identity as an essential feature, and when the respective trade marks are used on the same goods and services, there is a real tangible danger that a consumer would be deceived or confused as to the trade source.

2. For these reasons, I consider that there would be a real and tangible danger of confusion between the Applicant’s Marks and the Opponent’s 852 and 861 Marks. Therefore, the trade marks are deceptively similar and the ground of opposition under s 44 is established.

3. The Applicant submits that the Applicant’s Marks should otherwise be accepted under the provisions of s 44(3)(b) as it considers the present case is a prime example of the ‘special circumstances which justify taking the case out of the ordinary rules so that justice may be done to the applicant’.[28]

   [28] Bali Trade Mark (No. 2) [1978] FSR 193 (Fox J).

4. Section 44(3)(b) allows the acceptance of a trade mark based on other circumstances. As regards to other circumstances which would make registration proper, s 44(3)(b) is broad in scope. The “other circumstances” may include the absence of confusion, and the length and extent of the use of the trade marks. The discretion is to be exercised with regard to the circumstances as at the time the discretion is exercised, rather than at the priority date of the Applications.[29]

   [29] Trident Seafoods Corporation v Trident Foods Pty Ltd (2019) 369 ALR 367, [83] (Reeves, Jagot and Rangiah JJ).

5. The Applicant submits that on 21 June 2019, O’Bryan J handed down his judgement in Rodney Jane Racing Pty Ltd v Monster Energy Company[30] and directed the Applicant’s 1670840 , 1670841 and 1670842 trade marks in class 12 (collectively the ‘Applicant’s Logo Marks’) be entered onto the Register of Trade Marks. The Applicant avers on 16 July 2019, the Opponent filed an application for leave to appeal the judgement, and on 19 July 2019 that application was withdrawn. Then on 23 July 2019 the Opponent filed applications for defensive registrations for the word MONSTER in class 12 for amongst other goods, automobile wheels. Those applications remain pending over four years later, due, at least in part, to the Applicant’s Logo Marks which were raised as citations during examination. Moreover, the Applicant argues that the Applicant’s Logo Marks have a filing date of 27 January 2015 which is prior to the filing date of all of the Opponent’s trade marks except for trade mark registration 1670320 which was filed on 27 January 2015.

   [30] [2019] FCA 923.

6. The Applicant submits that it would cause substantial prejudice to the Applicant if it were unable to secure registration of the Applicant’s Marks which it considers are brand extensions of its existing trade mark registrations in class 12.

7. In support of the Applicant’s submissions Jane declares that from time to time BJTM has offered a product range of tyres or wheels which are sold exclusively through BJTM, alongside various other makes of wheels and tyres that it purchases from companies such as Bridgestone and Michelin. The Monster wheel brand is one such product range. Exhibit 1 to Jane comprises samples of advertising copies from the Applicant’s business catalogues for the years 2013 and 2014. The copies show use of the Applicant’s Logo Marks on and/or in relation to vehicle wheels. The exhibit also includes Google search results on the term ‘bob jane monster trucks’ dated 19 September 2022 which displays offers and availability of Monster branded wheels at BJTM.

8. The Applicant’s Logo Marks are all composite trade marks which consist of the word MONSTER and additional word and/or device elements. In comparison, the Applicant’s Marks are all plain word trade marks which feature the word MONSTER and additional word elements and I consider consumers notional recollection of the Applicant’s Marks would not include the device elements present in the Applicant’s Logo Marks.

9. The Applicant’s Logo Marks only cover alloy wheels in class 12, and the evidence shows limited promotion of the Applicant’s Logo Marks in relation to wheels. However, the goods and services claimed by the Applicant’s Marks expand into new product areas and there is no evidence that the Applicant has used any of its Marks on or in relation to any of these products.

10. The earlier existing rights owned by the Applicant are not sufficient evidence to persuade me that the risk and inconvenience to the Applicant would outweigh the risk and inconvenience to the Opponent were the Applicant’s Marks accepted for registration.

11. I am not satisfied that there are ‘other circumstances’ that would make it proper to accept the Applications pursuant to s 44(3)(b).

12. Section 44 is successful in relation to all the Goods in Class 12 and for online retail services; retail services in class 35 but not in respect of advertising; distribution of advertising material services in class 35 (‘Remaining Services’). In Apple Inc v Registrar of Trade Marks Yates J stated that:

    My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[31]

    [31] [2014] FCA 1304, [232].

13. In circumstances where an opposition has been established in respect of some, but not all of an applicant’s goods or services the Registrar may proceed to reject the application in its entirety, under the principles outlined above, but also has a discretion to offer an amendment to an applicant, allowing it to amend the application to remove goods and services for which a ground of opposition has been established.

14. In the present case, there is no evidence of use of the Applicant’s Marks for the Remaining Services. In these circumstances where the opposition has been established for a significant proportion of the Applicant’s Goods and Services and what would remain in the Application is de minius at best, I find there is nothing to compel me to offer the Applicant the opportunity to amend the Applicant’s Services to the Remaining Services. As such, I do not consider it appropriate to exercise my discretion and offer an amendment in respect of the Applicant’s Marks.

15. Therefore, I find the s 44 ground has been established for the of all Applicant’s Goods and Services. Given that I have found the ground of opposition under s 44 established, I do not need to consider the other grounds of opposition.

Decision

1. Section 55 provides:

   55  Decision

   (1)  Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a)  to refuse to register the trade mark; or

   (b)  to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

2. The Opponent has established the s 44 ground of opposition in relation to all of the Applicant’s Goods and Services. The following amendments are to be made to the specification of trade mark application numbers 2177560, 2189500 and 2189501 (strikethrough indicating deletion):

   Class 12:  Automobile wheels; Vehicle wheels; Wheels for motor vehicles; Tyres for motor vehicle wheels; Tyres for motor vehicles; Vehicle tyres; Wheel trims; Repair materials for tyres

   Class 35: Advertising; Distribution of advertising material; Online retail services; Retail services

   Class 37: Repair of tyres; Replacement of tyres; Fitting services for tyres; Tyre fitting; Wheel alignment adjustment; Wheel balancing; Maintenance and repair of motor vehicles; Motor vehicle maintenance and repair

3. Therefore, trade mark application numbers 2177560, 2189500 and 2189501 may proceed to registration one month from the date of this decision in respect of class 37.  If the Registrar is served with a notice of appeal, I direct that the disposition of the Applications should be in accordance with the Court’s order or direction.

Costs

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

Louise Tuohy

Hearing Officer

Delegate of the Registrar of Trade Marks

26 June 2025

Annexure 1