Monster Energy Company v Mixi Inc  FCA 1398 (1 October 2020)
Monster Energy Company (MEC) was unsuccessful in its appeal from the Registrar’s decision rejecting its opposition to trademark registration of MONSTER STRIKE filed on 23 June 2014 (with a priority date of 27 December 2013) for a broad range of goods in class 9 and services in class 41 including electronic games and gaming.
MEC relied on grounds of opposition under s42(b) and s60 based on the reputation of its MONSTER marks.
MEC has, since April 2002 (and since July 2009 in Australia), traded in energy drinks under various marks with the word MONSTER usually in conjunction with the word ENERGY and various designs. To promote these energy drinks, MEC had also engaged in sponsorship of activities of interest to the likely target audience for Mixi’s MONSTER STRIKE goods and services including gaming, esports, certain genres of music and extreme sports.
Mixi uses the MONSTER STRIKE mark in connection with a downloadable action game for mobile devices. It was launched in Japan in October 2013 with an Australian version launched in June 2015. The Australian version was unified into an English language version directed to a worldwide English-speaking market in June 2016. There has been no English language version of the game available for download since August 2017. Only Japanese and Chinese language versions of the game are now available.
Stewart J summarised the question as being “whether as at December 2013 the use of the MONSTER STRIKE trade mark in relation to electronic games and gaming and related goods and services would have been likely to mislead or deceive consumers with regard to, or to cause consumers to wonder, whether there was any connection in the course of trade between those goods and services and the trader of goods and services that uses MEC’s relevant marks. That connection could be that the trader of each was the same, or that the notional MONSTER STRIKE-branded goods or services had the sponsorship or approval of the trader of the goods that uses MEC’s relevant marks.”
There was no dispute that MEC’s M claw logo in conjunction with the stylised word MONSTER and the word ENERGY, an example of which is shown below, had a strong reputation in Australia at the priority date.
Stewart J considered that MEC’s “evidence does not support a conclusion that the MONSTER word mark on its own had any particularly significant reputation in Australia at the relevant time. Any reputation of the word MONSTER is derived from the M claw, stylised MONSTER and the MONSTER ENERGY word mark. It is these that create the association in the minds of consumers”. Further, “[A]s to the nature of that reputation, it was clearly one linked to energy drinks. Through the promotional strategies which I discussed above, the reputation is also what is referred to as “edgy” and is particularly strong within the target demographic, i.e. amongst men and women who have an interest in gaming, eSports, extreme sports and “edgy” music”. However, His Honour noted the nature of that association and hence reputation was as a sponsor and supporter and considered that an ordinary consumer would understand the presence of MEC’s marks on athlete uniforms, equipment, event signage, apparel and the like to be for the purpose of advertising and promoting MEC’s energy drinks, and not to be functioning as a brand, or a source of trade origin, for the particular equipment, uniform, signage and apparel upon which the marks appear. To the extent that MEC’s marks were associated with video games, that was also clearly as sponsor or promoter and not as publisher. MEC’s evidence did not establish a reputation in Australia in connection with the publishing or sale of video games.
Given these findings, his Honour concluded that the s60 ground of opposition failed. Stewart J was not satisfied as to the likelihood of confusion having regard to the differences in the respective marks and MEC’s reputation being primarily for energy drinks.
MEC also relied on the s42(b) ground of opposition, namely that use of the applied for MONSTER STRIKE mark would be contrary to the Australian Consumer Law (ACL). However, misleading or deceptive conduct under the ACL is more exacting than the requirement for mere confusion under s60. MEC did not put any submissions in support of its case that it did not also put in support of the s60 ground. Given his Honour’s conclusions under the s60 ground, the s42(b) ground also necessarily failed.